Ex Parte SmithDownload PDFPatent Trial and Appeal BoardMay 24, 201814730406 (P.T.A.B. May. 24, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/730,406 06/04/2015 Kelly Bryant Smith 24112 7590 05/25/2018 COATS & BENNETT, PLLC 1400 Crescent Green, Suite 300 Cary, NC 27518 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 7176-003 1330 EXAMINER MANGINE, HEATHER N ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 05/25/2018 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 KELLY BRYANT SMITH Appeal2017-006122 Application 14/730,406 Technology Center 3700 Before EDWARD A. BROWN, GEORGE R. HOSKINS, and SEAN P. O'HANLON, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Kelly Bryant Smith ("Appellant") 1'2 seeks review under 35 U.S.C. § 134(a) of the Examiner's decision, as set forth in the Final Office Action dated February 3, 2016 ("Final Act."), rejecting claims 1, 2, 4, and 5, which are the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We refer to the Replacement Appeal Brief filed on September 7, 2016, as "Appeal Brief' or "Appeal Br." 2 Appellant identifies Dermavisor, LLC, as the real party in interest. Appeal Br. 2. Appeal2017-006122 Application 14/730,406 CLAIMED SUBJECT MATTER Claim 1 is representative, and is reproduced below: 1. A disposable visor to be worn on a user's head comprising: a substantially flat body made of a flexible sheet material including a bill section that projects forwardly from the user's head when the visor is worn by the user to shield the user's face from the sun and a headband section that connects to the bill section and forms a continuous uninterrupted band that encircles the user's head; a head opening formed in the flat body configured to receive the user's head, [and] a plurality of flexible fingers surrounding the head opening to engage the user's head when the visor is worn by the user, wherein a length of the flexible fingers is approximately .2 to .4 times a diameter of the head opening, and wherein the fingers are configured to normally lie in a plane of the flat body and to bend upwardly when the visor is placed on the user's head to adjust to the size of the user's head. Appeal Br. 10 (Claims App.). REJECTIONS 1. Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. § 101 and section 33(a) of the America Invents Act as being directed to, or encompassing, a human organism. 2. Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. § 103 as unpatentable over Claussen (US 1,250,968, issued Dec. 25, 1917). ANALYSIS Rejection 1 Claim 1 recites "a headband section that ... forms a continuous uninterrupted band that encircles the user's head." Appeal Br. 10 (Claims 2 Appeal2017-006122 Application 14/730,406 App. (emphasis added)). The Examiner determines that this italicized language claims a human body part as part of the invention. Final Act. 3. Appellant contends that the Examiner improperly construes claim 1 as claiming the user's head as part of the disposable visor. Appeal Br. 3--4. Appellant notes that the claim preamble recites "[a] disposable visor to be worn on a user's head" ( emphasis added), which, Appellant contends, makes clear that the user's head is not a part of the disposable visor. Id. at 4. Appellant contends that the body of claim 1 also supports its position, and a reasonable interpretation of the claim language is that the headband structure encircles the user's head when the disposable visor is worn. Id. The Examiner responds that the claim language, "and forms a continuous uninterrupted band that encircles the user's head," "is referring specifically to a band which has not previously been recited." Ans. 5. 3 According to the Examiner, "[i]n this first appearance of a band, it appears that that the band must be continuous and uninterrupted and must encircle a user's head," and, as such, "as no functional language referring to the band or the headband is recited, a user's head is now part of the invention because as recited, a user's head must be present in the structure so that a band may encircle it." Id. Appellant's contentions are persuasive. We agree with Appellant that, in claim 1, the preamble recites an intended use of the disposable visor, and the recitations "the user's head" in the body further define the structure and function of the recited elements of the disposable visor with reference to when the disposable visor is worn on the user's head. Appeal Br. 3. Claim 3 We refer to the Examiner's Answer dated January 17, 2017, as "Examiner's Answer" or "Ans." 3 Appeal2017-006122 Application 14/730,406 1 does not recite the user's head as an element of the disposable visor, or claim a combination of the disposable visor and the user's head. Accordingly, the Examiner's construction of claim 1 as claiming a human body part as part of the invention is improper. Thus, we do not sustain the rejection of claim 1, or its dependent claims 2, 4, and 5, under 35 U.S.C. § 101 and section 33(a) of the America Invents Act as being directed to, or encompassing, a human organism. Rejection 2 As to claim 1, the Examiner finds that Claussen discloses a disposable visor to be worn on a user's head, comprising a substantially flat body including a bill section and a headband section, a head opening ( central opening 4), and flexible fingers (tabs or ears 7). Final Act. 4; see also id. at 6 (showing annotated version of Fig. 3 of Claussen). The Examiner determines "there is no structural difference between Claussen's Fig. 3 and the claimed invention." Ans. 6-7; see also id. at 7 (showing side-by-side comparison between Appellant's Fig. 1 and Claussen's Fig. 3). The Examiner determines that the claim limitation "to adjust to the size of the user's head" is an intended use. Final Act. 4. The Examiner submits that, because Claussen meets all of the structural limitations of claim 1, Claussen would be capable of performing this function. Id. Additionally, the Examiner determines that the claim language "wherein the fingers are configured to normally lie in a plane of the flat body and to bend upwardly when the visor is placed on the user's head" recites functional limitations, which requires only the ability to meet the recited function. Id. at 4--5. The Examiner submits that there would be a reasonable expectation 4 Appeal2017-006122 Application 14/730,406 that the plurality of fingers (tabs 7) of Claussen perform such function. Id. at 5. The Examiner also finds that Claussen does not expressly disclose that a length of the flexible fingers is approximately .2 to .4 times the diameter of the head opening, as claimed. Final Act. 5. The Examiner determines, however, that the length of the fingers as compared to the head opening is a result-effective variable, where the result depends on the size of the wearer's head and the flexible material that is used. Id. The Examiner reasons that it would have been obvious to modify the length of the fingers in Claussen to accommodate for head size and the chosen material, because it has been held that discovering an optimum value of a result-effective variable involves only routine skill in the art. Id. (citing In re Boesch, 617 F.2d 272 (CCPA 1980)). Appellant contends that Claussen does not disclose a plurality of flexible fingers "configured to normally lie in a plane of the flat body and to bend upwardly when the visor is placed on the user's head to adjust to the size of the user's head," as claimed. Appeal Br. 6. The Examiner's position that Claussen discloses this limitation is based on Figure 3, which shows only brim 2 of the hat. In contrast, Appellant's position is based on Figure 5 of Claussen, which shows brim 2 attached to crown 3 in the finished hat. As to this latter structure, Claussen describes, "[ t ]he crown and the brim are united in some desirable manner, for instance one of them may be provided with several tabs or ears adapted for suitable connection as by some convenient adhesive, to the other." Claussen, p. 1, 11. 59--63. Claussen describes this connection, as follows: 5 Appeal2017-006122 Application 14/730,406 To assemble the crown 3 and brim 2 the following procedure may be adopted: A suitable adhesive will be applied to the upper surfaces of the several tabs 7, following which the crown will be placed on the upper surface of the brim with the opening of the crown in register with the brim opening 4, the bottom of the crown being of such dimensions as to overlie slightly the brim around the opening therein to bring the inner bottom surface of the crown practically flush with the wall of said opening 4. After this is done, the several tabs 7 will be upset at practically right angles to the brim and will be fastened by the adhesive already applied thereto to the inner surface of the crown. When the adhesive is set the two members will be firmly united together. Id. at p. 2, 11. 1-18 (emphasis added). Figure 5 of Claussen depicts tabs 7 being upstanding with respect to brim 2 in the finished hat. Appellant also contests the Examiner's position that Claussen's tabs would reasonably be expected to "bend upwardly when the visor is placed on the user's head," as claimed. Appeal Br. 7. Rather, Appellant contends, once Claussen's hat is assembled, the tabs are fixed to the sidewall of the crown, and thus, the tabs would not bend upwardly when placed on the user's head (id.) and would be incapable of providing the claimed adjustment function when placed on a user's head (id. at 8). Even if tabs 7 "normally lie in a plane of the flat body" in brim 2 shown in Figure 3 of Claussen, the Examiner's position appears to overlook the fact Claussen does not disclose or suggest that brim 2 is worn on a user's head without crown 3. Tabs 7 are included in the hat for the specific purpose of attaching brim 2 to crown 3. Consequently, without crown 3, there would be no apparent purpose for brim 2 to have tabs 7. According to the Examiner, "[t]he term 'approximately' is considered a broad term and as such, the finger's [sic] as shown in Fig. 3 of Claussen 6 Appeal2017-006122 Application 14/730,406 appear to be roughly .2 to .4 times the diameter." Ans. 7 (emphasis added). However, "[a]bsent any written description in the specification of quantitative values, arguments based on measurements of a drawing are of little value." In re Wright, 569 F.2d 1124, 1127 (CCPA 1977). Hence, the Examiner's finding premised on the appearance of Figure 3 is of little value. Additionally, we agree with Appellant that the Examiner has not provided a sufficient reason why one skilled in the art would make tabs 7 to have the claimed approximate length relative to a diameter of the head opening. Appeal Br. 8. Even assuming brim 2 depicted in Figure 3 could be worn, by itself, on a user's head, and further assuming central opening 4 corresponds to the claimed head opening, Claussen fails to disclose or suggest that the length of tabs 7 has any size relationship to the diameter of central opening 4. Regarding the Examiner's position that the claimed approximate length of the fingers relative to a diameter of the head opening is a result- effective variable, the applicable legal principles are as follows: "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." [In re] Aller, 220 F .2d [ 454,] 45 6 [ ( CCP A 195 5)]. This rule is limited to cases in which the optimized variable is a "result-effective variable." In re Antonie, 559 F.2d 618,620 (CCPA 1977); see [In re] Boesch, 617 F.2d [272,] 276 [(CCPA 1980)] ("[D]iscovery of an optimum value of a result effective variable ... is ordinarily within the skill of the art."). In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012). In Claussen, tabs 7 are adhesively fastened to crown 3 in the finished hat shown in Figure 5. In the finished hat, the head opening would not correspond to central opening 4 shown in Figure 3, but would be an opening 7 Appeal2017-006122 Application 14/730,406 having a diameter larger than central opening 4 because tabs 7 would be bent upwardly as shown in Figure 5 and not extend inwardly toward central opening 4 as in Figure 3. Although the length of tabs 7 could be varied to affect the available adhesive bonding area of each tab 7 to crown 3, there is no indication in Claussen that the length of tabs 7 has any relationship to the diameter of the head opening in the finished hat. As submitted by Appellant, the Examiner needs to establish that the parameter associated with the claimed range limitation is a result-effective variable in order to invoke "routine optimization" reasoning. Reply Br. 3 (citing Applied Materials, 692 F.3d at 1295). The Examiner has not, however, identified sufficient evidence that the claimed length of the flexible fingers relative to the diameter of the head opening was recognized in the prior art as a result-effective variable. See Antonie, 559 F.2d at 620 (finding no disclosure of the relationship between the recited variable and the result in the prior art). Accordingly, we agree with Appellant that the Examiner did not provide an adequate reason why one skilled in the art would have optimized this particular size relationship in Claussen to the specific numerical range claimed. See Reply Br. 3--4. For these reasons, we do not sustain the rejection of claim 1, or of claims 2, 4, and 5 depending therefrom, as unpatentable over Claussen DECISION The rejection of claims 1, 2, 4, and 5 is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation