Ex Parte Shen

Patent Trial and Appeal Board

Jun 17, 2013

10948057 (P.T.A.B. Jun. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/948,057 09/23/2004 Charles Shen MCCAP.69598 2984
27629 7590 06/17/2013
FULWIDER PATTON LLP
6060 CENTER DRIVE
10TH FLOOR
LOS ANGELES, CA 90045
EXAMINER
TOMPKINS, ALISSA JILL
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
06/17/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte CHARLES SHEN
________________

Appeal 2011-000924
Application 10/948,057
Technology Center 3700
________________

Before BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and
JAMES A. TARTAL, Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000924
Application 10/948,057

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STATEMENT OF THE CASE1
Charles Shen (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s final decision rejecting claims 1-9. We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).
Appellant’s claimed invention relates to protective headgear devices,
and more particularly to a shield for a ball cap to protect the wearer’s head.
Spec. para. [0002].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A ball cap shield comprising a curved
protective overlay adapted to conform with a
frontal surface of a ball cap, further comprising
rearwardly extending peripheral flaps integrally
appended to said curved protective overlay.

The Examiner relies upon the following evidence:
Moore US 6,154,889 Dec. 5, 2000
Briand US 6,230,327 B1 May 15, 2001
Lee US 6,854,133 B2 Feb. 15, 2005

Claim 4 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctively claim
the subject matter regarded as the invention.
Claims 1, 2, 4, and 9 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Moore.
Claims 1 and 8 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Briand.

1 Our decision will make reference to Appellant’s Appeal Brief (“App. Br.,”
filed May 26, 2010) and the Examiner’s Answer (“Ans.,” mailed July 7,
2010).
Appeal 2011-000924
Application 10/948,057

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Claims 1-4, 5, and 9 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Lee.
Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee.

FINDINGS OF FACT
We find that the findings of fact which appear in the Analysis below
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

ANALYSIS
Definiteness
Claim 4
We find that in rejecting claim 4 under 35 U.S.C. § 112, second
paragraph, the Examiner has not established a prima facie showing that the
limitation “wherein said peripheral flaps are resiliently biased inward”
causes claim 4 to be indefinite. We disagree with the Examiner’s contention
that the rejection should stand because the “appellant has still not clarified in
the claim language how the limitation ‘resiliently biased inward’ brings
structure to the invention.” See Ans. 7. The Examiner has not demonstrated
that one of ordinary skill in the art would be unable to determine the scope
of the invention in light of Appellant’s citation to disclosures in paragraphs
10, 11, and 16 and to figure 7 of the Specification regarding the limitation at
issue. Thus, we reverse the decision of the Examiner to reject claim 4 under
35 U.S.C. § 112, second paragraph.

Appeal 2011-000924
Application 10/948,057

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Anticipation based on Moore
Claim 1
We find not persuasive Appellant’s contention that Moore fails to
disclose a “ball cap shield … adapted to conform with a frontal surface of a
ball cap,” as claimed. See App. Br. 4. Appellant offers no explanation as to
why the structure relied upon by the Examiner, Moore’s ball cap shield 10,
does not meet the limitation. Merely asserting that “Moore is not a ball cap
shield but rather a protective helmet,” fails to identify any basis for
differentiating the structure claimed from the structure disclosed by Moore.
See id.
Nor can Appellant overcome the Examiner’s rejection by merely
stating that Moore does not explicitly or inherently disclose that it is adapted
to conform with a frontal surface of a ball cap when Appellant has not
shown any structural difference between the claimed invention and Moore.
It is well established that “[a]n intended use or purpose usually will not limit
the scope of the claim because such statements usually do no more than
define a context in which the invention operates.” Boehringer Ingelheim
Vetmedica v. Schering-Plough Corp., 320 F.3d 1339, 1345, (Fed. Cir. 2003).
Thus, an apparatus capable of performing an intended use will anticipate an
apparatus claim, even if the prior art does not disclose that the apparatus was
actually put to the intended use recited in the claim. See In re Schreiber, 128
F.3d 1473, 1477(Fed. Cir. 1997). Accordingly, we agree with the Examiner
that the structure disclosed by Moore is capable of conforming with a frontal
surface of a ball cap as claimed.
We also find not persuasive Appellant’s assertion that Moore fails to
disclose “rearwardly extending peripheral flaps integrally appended to said
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curved protective overlay.” See App. Br. 4. Appellant argues that Moore’s
harness 65 does not connect the ends of peripheral flaps as claimed, yet the
Examiner does not rely upon Moore’s harness 65 as disclosing the claimed
element, nor does claim 1 require that the ends of peripheral flaps be
connected. We agree with the Examiner that Moore figure 1 discloses
peripheral flaps around area 30 that are rearwardly extending and integrally
appended to a curved protective layer, as claimed.
Claim 2
Claim 2, which depends upon claim 1, further requires “a first strap
extending rearwardly and connecting respective ends of said peripheral
flaps.” Appellant’s sole contention is that in Moore “there is not one strap
that connects the structures proposed by the Office Action to satisfy the
flaps.” To the contrary, the Examiner specifically identifies Moore strap 65
as extending rearwardly and connecting the respective ends of the peripheral
flaps. See Ans. 10. Appellant offers no explanation as to why strap 65 fails
to satisfy the claimed limitation. Accordingly, Appellant has not overcome
the Examiner’s determination that claim 2 is anticipated by Moore.
Claim 4
Claim 4, which depends upon claim 1, further requires that “said
peripheral flaps are resiliently biased inward to bear against the user’s head
when worn by a user.” As discussed above, the limitation “resiliently biased
inward” is not indefinite. Accordingly, having failed to make the
determination that Moore discloses peripheral flaps resiliently biased
inward, as claimed, the Examiner has not made a prima facie showing that
Moore anticipates claim 4.
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Claim 9
Appellant offers no additional argument to overcome the Examiner’s
rejection of claim 9 beyond the arguments raised with respect to claim 1.
Accordingly, we affirm the Examiner’s determination under
35 U.S.C. § 102(b) that claim 9 is anticipated by Moore for the same reasons
discussed above with respect to claim 1.

Anticipation based on Briand
Claim 1
We find not persuasive Appellant’s contention that one of ordinary
skill in the art “would recognize it as impossible to wear a ball cap under
Briand’s welding mask and the contour of Briand’s device clearly does not
suggest that it would conform with a frontal surface of a ball cap. See App.
Br. 4. As noted by the Examiner, Appellant has not provided any structure
for the “ball cap,” and has not identified any evidence to support the
assertions either that it would be impossible to wear a “ball cap” under
Briand’s protective mask or that the mask cannot conform with a frontal
surface of a ball cap. For the same reasons discussed above with regard to
the anticipation rejection based on Moore, we likewise agree with the
Examiner that Briand discloses the claimed features.
Claim 8
Claim 8, which depends upon claim 1, further requires that “the shield
is transparent to reveal an insignia on said ball cap therethrough.” We find
not persuasive Appellant’s unsupported assertion that the Examiner’s
determination that the transparent window 2 of the protective mask disclosed
by Briand would not permit an insignia on a cap worn under the mask to be
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revealed. Merely stating, as Appellant does, that “this is clearly not
supported by the Briand reference,” fails to provide a reasoned explanation
as to why Briand does not describe the claimed matter. A party that offers
only “a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the proper art” waives any
argument with respect to those claim elements. In re Lovin 652 F.3d 1349,
1356–57 (Fed. Cir. 2011).

Anticipation based on Lee
Claim 1
Appellant contends that claim 1 is not anticipated by Lee for the same
reasons Appellant argued claim 1 was not anticipated by Moore. We find
this argument not persuasive for the same reasons discussed above with
respect to the anticipation rejection of claim 1 based on Moore. We further
find not persuasive Appellant’s argument that Lee Figure 1 fails to disclose
peripheral flaps as claimed. See App. Br. 5. We agree with the Examiner
that Lee shell 16 includes rearwardly extending peripheral flaps as depicted
in Lee figure 1 in the area under labeled number 36. See Ans. 9.
Appellant’s remaining arguments are not persuasive to the extent that they
take issue with elements of Lee, such as liner 18, not relied upon by the
Examiner, or argue limitations, such as ‘resiliently biased inward,’ not
present in claim 1.
Claim 2
Claim 2, which depends upon claim 1, further requires “a first strap
extending rearwardly and connecting respective ends of said peripheral
flaps.” We find not persuasive Appellant’s contention that there is no
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connection of Lee strap 20 to any peripheral flaps. See App. Br. 6. Lee
(Figures 1 and 2 and Col. 3, ll. 39-54) discloses protective headgear with a
retention system that includes a nape strap portion 20 connected to a forward
chin strap portion 22. Lee nape strap portion 20 extends rearwardly, as
claimed. Moreover, nape strap portion 20 and forward chin strap portion 22
are connected to peripheral flaps of the shell by a loop of strapping 34
fixedly connected to the shell by fastener 36. Accordingly, we conclude
Appellant has not overcome the Examiner’s determination that claim 2 is
anticipated by Lee.
Claim 4
Appellant argues that Lee fails to disclose peripheral flaps that are
resiliently biased inward to bear against the user’s head when worn by a
user, as claimed, because the protective headgear disclosed by Lee is dome
shaped and evidences no predisposition toward inward biasing. See App.
Br. 5-6. The Examiner does not dispute this assertion, but instead argues
that “the straps of Lee are considered to be biased inward.” Ans. 9. The
Examiner, however, did not rely on the straps of Lee as constituting the
claimed peripheral flaps, and therefore has not made a prima facie showing
that Lee anticipates peripheral flaps that are resiliently biased inward.
Accordingly, we cannot sustain the Examiner’s rejection of claim 4 as
anticipated by Lee.
Claims 5 and 9
Appellant offers no additional argument to overcome the Examiner’s
rejection of claims 5 and 9 beyond the arguments raised with respect to
claim 1. Accordingly, we affirm the Examiner’s determination under
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35 U.S.C. § 102(b) that claims 5 and 9 are anticipated by Lee for the same
reasons discussed above with respect to claim 1.
Obviousness based on Lee
Claim 6
Claim 6, which depends upon claim 1, further requires
“complimentary hook and loop fastener material disposed on the outer
surface of said ball cap shield.” We agree with the Examiner that Lee
discloses fasteners 36 and 32 located on the outer surface of the shield, and
that it would have been obvious to replace one type of fastener for another
type of fastener (e.g., hook and loop fastener material, as claimed.)
Accordingly, we conclude Appellant has not overcome the Examiner’s
determination under 35 U.S.C. § 103(a) that claim 6 is unpatentable over
Lee.
Claim 7
Appellant offers no argument to overcome the Examiner’s rejection of
claim 7. Accordingly, we affirm the Examiner’s determination under
35 U.S.C. § 103(a) that claim 7 is unpatentable over Lee.

CONCLUSIONS OF LAW
We conclude that Appellant has overcome the Examiner’s rejection of
claim 4 under 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctively claim the subject matter
regarded as the invention.
We further conclude that Appellant has not overcome the Examiner’s
rejection of claims 1, 2, and 9 under 35 U.S.C. § 102(b) as being anticipated
by Moore.
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Application 10/948,057

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We further conclude that Appellant has overcome the Examiner’s
rejection of claim 4 under 35 U.S.C. § 102(b) as being anticipated by Moore.
We further conclude that Appellant has not overcome the Examiner’s
rejection of claims 1 and 8 under 35 U.S.C. § 102(b) as being anticipated by
Briand.
We further conclude that Appellant has not overcome the Examiner’s
rejection of claims 1-3, 5, and 9 under 35 U.S.C. § 102(e) as being
anticipated by Lee.
We further conclude that Appellant has overcome the Examiner’s
rejection of claim 4 under 35 U.S.C. § 102(e) as being anticipated by Lee.
We further conclude that Appellant has overcome the Examiner’s
rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as being unpatentable
over Lee.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-3 and 5-
9.
We REVERSE the decision of the Examiner to reject claim 4.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED-IN-PART

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