Ex Parte Smith

Patent Trial and Appeal Board

May 24, 2018

14730406 (P.T.A.B. May. 24, 2018)

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
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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."
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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
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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:
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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
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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
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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
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