Ex Parte Spinelli

Board of Patent Appeals and Interferences

Mar 26, 2009

11004254 (B.P.A.I. Mar. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte THOMAS SPINELLI
____________________

Appeal 2009-0615
Application 11/004,254
Technology Center 3700
____________________

Decided:1 March 26, 2009
____________________

Before: WILLIAM F. PATE, III, LINDA E. HORNER and
STEVEN D.A. MCCARTHY, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-4, 7, 10-14, 17 and 20-30. We have jurisdiction under 35 U.S.C. § 6(b).
The claims are directed to a helmet and covering therefor.
Claim 1 is illustrative of the claimed subject matter and is reproduced
below:

1. A covering for a sports helmet, the covering comprising a
band having at least a portion composed of a first heat shrink
material, the band being sized to cover the sports helmet after
an application of heat to the first heat shrink material.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Adams US 2,850,740 Sep. 9, 1958
Marchello US 3,245,087 Apr. 12, 1966
Carpenter US 5,525,290 Jun. 11, 1996
Monica US 5,732,414 May 31, 1998
Rekow2 US 2001/0013347 A1 Aug. 16, 2001
Bloch DE 3619282 A1 Dec. 10, 1987
Iwai JP 6-158412 Jun. 7, 1994

2 This reference was first made of record contemporaneously with the
Examiner’s Answer of January 9, 2007. It is not referred to by the Examiner
in the Answer or by the Appellant in the Briefs.
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Claims 21-23 and 30 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Carpenter. Claims 23-25 and 28 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Marchello. Claims 23, 24, 26 and 27
stand rejected under 35 U.S.C. § 102(b) as being anticipated by Monica.
Claims 1-4 and 11-14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Carpenter in view of Bloch. Claims 7, 10, 17 and 20 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Carpenter and
Bloch and further in view of Iwai. Claim 29 stands rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Marchello in view of Adams. Claims 5,
6, 8, 9, 15, 16, 18 and 19 stand objected to as depending from a rejected base
claim.

ISSUES
1. Has Appellant established that the Examiner erred by rejecting claims 21-
23 as being anticipated by Carpenter; claims 1-4 and 11-14 as
unpatentable over Carpenter in view of Bloch; and claims 7, 10, 17 and
20 under 35 U.S.C. § 103(a) as being unpatentable over Carpenter and
Bloch and further in view of Iwai; because Carpenter does not disclose or
suggest the heat-shrink material recited in claims 1, 11, 21, 22, and 23?
2. Has Appellant established that the Examiner erred by rejecting claims 23-
25 and 28 as being anticipated by Marchello because Marchello fails to
disclose the heat-shrink material recited in claim 23?
3. Has Appellant established that the Examiner erred by rejecting claims 23,
24, 26 and 27 as being anticipated by Monica because Monica fails to
disclose the heat-shrink material recited in claim 23?

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4. Has Appellant established that the Examiner erred by rejecting claims 26
and 27 as being anticipated by Monica because Monica fails to disclose
the claimed grooves?
5. Has Appellant established that the Examiner erred by rejecting claim 30
as anticipated by Carpenter because Carpenter fails to disclose a marker,
peripheral groove, cutting groove, or removable button snap?

FINDINGS OF FACT
1. Carpenter discloses a covering 30, 32 for a sports helmet 10, 12, 14 the
covering sized to surround at least a portion of the helmet 18 composed
of a vacuum-formable plastic material such as polymethyl-methacrylate,
polythene, polypropylene, polystyrene, ABS, polyvinyl, cellulose nitrate,
aceto-butyrate, polycarbonate, and polyester. Carpenter heats (via 34) the
coating 30, 32 (col. 3, ll. 56-58; Fig. 6), applies vacuum pressure (col. 4,
ll. 5-11), stretches the coating at least 200% (col. 4, l. 12) and then allows
it to cool (col. 4, l. 24), causing the coating 30, 32 to be adhered to the
helmet 18 without adhesive bonding (col. 4, ll. 26-27). Excess plastic
sheet material forming the coating 30, 32 is then removed by trimming
(col. 4, ll. 34-35).
2. Appellant’s Specification discloses that heat shrink materials are well
known in the art and four major types of heat shrink materials are PVC,
polyolefin, polypropylene, and polyethylene. Spec. 7.
3. The heat shrink material disclosed in Appellant's Specification is a
material that will shrink in size, for example, by 10% to 40%, when heat
is applied to the material from a heat source such as a heat gun or
hairdryer. Specification pp. 7-8.
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4. Polypropylene is one of the most widely used thermoplastics. Many
automobiles, textiles, appliances, and other everyday items contain
substantial amounts of polypropylene polymers. The ability to
manufacture a broad variety of polypropylenes having properties tailored
for specific applications is the primary factor in its widespread use.
ENCYCLOPEDIA OF POLYMER SCIENCE AND TECHNOLOGY (2004). Forming
a sheet out of polypropylene does not necessarily mean that sheet is
formed of a heat shrinkable material. See id.
5. Bloch teaches a cover applied to a helmet by adhesion. English language
abstract of Bloch. A covering secured by adhesion does not necessarily
include a heat-shrink material.
6. Iwai teaches a helmet 1 having a covering 11 attached with a rivet.
English language abstract of Iwai. A covering that is attached with a rivet
does not necessarily include a heat-shrink material.
7. As required by claim 23, Carpenter discloses a helmet 10, 12, 14
comprising a shell 18 and a means (the edge of the helmet) for
facilitating aligning a heat shrink covering on the outer surface (“the
cover is coextensive with the outer surface of the helmet shell”; col. 4, l.
37).
8. As required by claim 23, Marchello discloses a helmet 10 comprising a
shell 11 and a means for facilitating aligning a heat shrink covering on
the outer surface (“snap fastener halves”) 14.
9. As required by claim 23, Monica discloses a helmet 10 comprising a
shell 14 and a means for facilitating aligning a heat shrink covering on
the outer surface (“elongated raised portion”) 38.
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10. The ordinary meaning of the term, “groove” is ‘a long narrow furrow or
channel’ which implies depth below a surface and sidewalls. THE
AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE:
FOURTH EDITION (2000).

PRINCIPLES OF LAW
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
631 (Fed. Cir.1987).
The express, implicit, and inherent disclosures of a prior art reference
may be relied upon in the rejection of claims under 35 U.S.C. §§ 102 or 103.
“The inherent teaching of a prior art reference, a question of fact, arises both
in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610,
613 (Fed. Cir. 1995).
The fact that a certain result or characteristic may occur or be present
in the prior art is not sufficient to establish the inherency of that result or
characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (reversed
rejection because inherency was based on what would result due to
optimization of conditions, not what was necessarily present in the prior art);
In re Oelrich, 666 F.2d 578, 581-82 (CCPA 1981). “To establish inherency,
the extrinsic evidence must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill. ‘Inherency, however, may not
be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.’ ” In re
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Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). In relying upon the theory of
inherency, the examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.
Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990).
The examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550
U.S. 398, ___, 127 S. Ct. 1727, 1731 (2007) noted that the analysis
supporting a rejection under 35 U.S.C. § 103 should be made explicit. The
Federal Circuit has stated that “rejections on obviousness grounds cannot be
sustained with mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR, 550 U.S. at ___, 127 S. Ct. at 1741.
Where no explicit definition for a term is given in the specification,
the term should be given its ordinary meaning and broadest reasonable
interpretation. E-Pass Technologies, Inc. v. 3Com Corporation, 343 F.3d
1364, 1368 (Fed. Cir. 2003). The ordinary and customary meaning of a
claim term is the meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention. Phillips v. AWH
Corp., 415 F.3d 1303, 1319 (Fed. Cir. 2005) (en banc). An applicant is
entitled to be his or her own lexicographer and may rebut the presumption
that claim terms are to be given their ordinary and customary meaning by
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clearly setting forth a definition of the term that is different from its ordinary
and customary meaning(s). See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994).
In order for a prior art element to meet a section 112, paragraph 6
means-plus-function limitation, the prior art element must either be the same
as the disclosed structure or be a section 112, paragraph 6 equivalent. In re
Donaldson Co. 16 F.3d 1189, 1195 (Fed. Cir. 1994). Two structures may be
“equivalent” for purposes of section 112, paragraph 6 if they perform the
identical function, in substantially the same way, with substantially the same
result. Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed.
Cir. 2000). Evidence that one of ordinary skill in the art would have
recognized the interchangeability of the prior art structure for performing the
function in question should be considered in a section 112, paragraph 6
equivalence determination. Caterpillar Inc. v. Deere & Co. 224 F.3d 1374,
1380 (Fed. Cir. 2000). However, “two structures that are equivalent in one
environment may not be equivalent in another.” IMS Technology, Inc. v.
Haas Automation, Inc. 206 F.3d 1422, 1436 (Fed. Cir. 2000). “The statute
requires two structures to be equivalent, but it does not require them to be
‘structurally equivalent,’ i.e., it does not mandate an equivalency comparison
that necessarily focuses heavily or exclusively on physical structure.” Id.

ANALYSIS
The fact that Carpenter discloses the covering 30, 32 may be made
from polypropylene (Fact 1) does not necessarily mean that the covering is
made from a heat shrink material (Fact 4) as required by claims 1, 11, 21,
and 22. The covering 30, 32 of Carpenter is stretched over 200% when
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heated (Fact 1) not shrunk like a heat shrink material (See Fact 3).
Carpenter, therefore does not disclose each and every element of claims 21
and 22 and does not anticipate claims 21 and 22. Br. p. 10.
Since Bloch does not cure the deficiency of Carpenter in this respect
(Fact 5), the rejection of claims 1 and 11 as unpatentable over Carpenter in
view of Bloch also cannot be sustained. Br. p. 15. Appellant’s remaining
arguments pertaining to independent claims 1 and 11 (see Br. p. 16) are
therefore moot and not addressed herein. Since the rejection of independent
claims 1 and 11 cannot be sustained, the rejection of dependent claims 2-4
and 12-14 as unpatentable over Carpenter in view of Bloch also cannot be
sustained. Br. p. 16-17. Since the rejection of claims 2-4 and 12-14 as
unpatentable over Carpenter in view of Bloch is not sustained, Appellant’s
additional arguments relating specifically to claims 2-4 and 12-14 (see Br. p.
16-17) are moot and are not addressed herein.
Iwai also does not cure the noted deficiencies of Carpenter (Fact 6).
Therefore the rejection of claims 7, 10, 17 and 20 under 35 U.S.C. § 103(a)
as being unpatentable over Carpenter and Bloch and further in view of Iwai
cannot be sustained. Since the rejection of claims 7, 10, 17 and 20 as
unpatentable over Carpenter in view of Bloch and further in view of Iwai is
not sustained, Appellant’s additional arguments relating specifically to
claims 7, 10, 17 and 20 (see Br. p. 17) are moot and are not addressed
herein.
With respect to the rejection of claim 23 as anticipated by Carpenter, a
heat shrink covering is not actually required by the claim, merely a means
for facilitating aligning or removing such a covering. The disclosure of the
covering of Carpenter being “coextensive” with the helmet (Fact 7) is
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indicative that the edges of the helmet align with the edges of the cover. The
fact that this alignment occurs after trimming does not affect the capability
of the edge to function as the claimed “means facilitating alignment.” The
edge performs the function specified in the claim and is not excluded by any
explicit definition provided in the specification. The edge performs the
identical function as the groove, hole, button, and marker mentioned in the
Specification in substantially the same way to produce substantially the
same result. The edge would be recognized by one of ordinary skill in the art
as means for facilitating alignment of a covering on the helmet that is
interchangeable with those disclosed in the Specification. All that is required
to facilitate alignment is a point, or series of points, such as an edge, that can
be repeatedly located. It is reasonable, therefore, to construe the edge of
Carpenter as the claimed means facilitating alignment. Appellant has
therefore not established that the Examiner erred by rejecting claim 23 as
being anticipated by Carpenter.
With respect to the rejection of claim 23 as anticipated by Marchello,
Appellant argues that Marchello fails to disclose or suggest a heat shrink
covering. Br. p. 12-13. As noted above, a heat shrink covering is not actually
required by the claim, merely a means for facilitating aligning or removing
such a covering. Appellant does not contest that Marchello discloses such a
means. Snap fastener 14 is structurally equivalent to a projecting dimple
(Spec. p. 11) and can function for aligning the covering when openings are
formed in the covering to overlie and receive them (Col. 2, ll. 12-14).
Appellant has therefore not established that the Examiner erred by rejecting
claim 23 as anticipated by Marchello. Since Appellant’s arguments
regarding the rejections of claims 24, 25, and 28 as being anticipated by
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Marchello, and of claim 29 as being unpatentable over Marchello in view of
Adams, are based solely upon the dependence of these claims from claim 23
(Br. p. 13, 18), Appellant has also not established that the Examiner erred by
rejecting claims 24, 25, and 28 as being anticipated by Marchello or claim
29 as being unpatentable over Marchello in view of Adams.
With respect to the rejection of claim 23 as anticipated by Monica,
Appellant argues that Monica fails to disclose or suggest a heat shrink
covering. Br. p. 13-14. Again, a heat shrink covering is not actually required
by the claim, merely a means for facilitating aligning or removing such a
covering. Appellant does not contest that Monica discloses such a means.
Raised portion 38 performs the function specified in the claim and is not
excluded by any explicit definition provided in the Specification. The raised
portion is structural equivalent to the raised groove provided in the
Specification (Spec. p. 12) and can function as a means facilitating
alignment (See col. 6, ll. 47-52 and col. 7, ll. 26-30). Appellant has therefore
not established that the Examiner erred by rejecting claim 23 as being
anticipated by Monica. Since Appellant’s arguments regarding the rejection
of claim 24 as anticipated by Monica is based solely upon the dependence of
claim 24 from claim 23 (Br. p. 14), Appellant has also not established that
the Examiner erred by rejecting claim 24 as being anticipated by Monica.
With respect to the rejection of claims 26 and 27 as anticipated by
Monica, Appellant argues that Monica fails to disclose or suggest the means
is a groove. The Examiner cites to the raised portion 38 of Monica to meet
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the limitation requiring the facilitating means to be a peripheral groove
(claim 26) and a cutting groove (claim 27). Ans. p. 4 and 73.
Where no explicit definition for a term is given in the specification,
the term should be given its ordinary meaning and broadest reasonable
interpretation. The ordinary and customary meaning of the term groove is a
furrow or channel which implies that a groove is recessed a depth below a
surface and has sidewalls (Fact 10). The Specification, however, provides,
“The peripheral groove 610 can be an indentation formed in the outer
surface 604 of the sports helmet 600. The peripheral groove 610 can also be
raised above the surface of the outer surface 604 of the helmet 600.” (Spec.
p. 12) While this portion of the Specification indicates that the indented
peripheral groove may be replaced by a raised feature, it doesn’t explicitly
state whether the raised feature should also be included in the definition of
the term “groove” as it is used by Appellant. Other than being “raised” there
is no guidance regarding what other characteristics would be necessary to
form, for example, a “raised groove.” The Specification therefore does not
clearly and explicitly set forth a definition of the term, “groove,” contrary to
the ordinary and customary meaning, to include a raised feature such as the
projection 38 of Monica.
In any case, even if “groove” were defined inconsistently with its
ordinary and customary meaning, claim 26, although not specifically
reciting, for example, a “recessed groove”, requires a groove having at least
some depth since an edge of the covering is disposed in it. The edge of the

3 The Examiner’s reference to Marchello on page 7 of the Answer appears to
be in error since the rejection is based upon Monica not Marchello, and the
cited reference numeral 38 pertains to a raised portion on Monica.
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covering could not be disposed in a raised groove. The Specification does
not provide a similar alternative for the “cutting groove” of claim 27. The
“cutting groove” is intended to receive a razor or other cutting tool therein
(Spec. p. 13) and therefore would not work in a raised configuration. Calling
the raised projecting portion 38 of Monica the claimed cutting groove would
therefore be inconsistent with the Specification. The Specification does not
indicate that a corner should be included within the definition of a “cutting
groove.” Both grooves of claims 26 and claims 27 are construed to require a
long narrow channel-like or furrow-like structure, i.e., having depth and
sidewalls. Since neither the projection 38 of Monica nor the interface corner
between 38 and 14 is a long narrow channel-like or furrow-like structure that
has a depth and sidewalls, neither structure can reasonably be interpreted to
be the “groove” claimed in claim 26 or claim 27. Since Monica does not
disclose each and every feature of claims 26 and 27, the rejection of claims
26 and 27 as anticipated by Monica cannot be sustained.
With respect to claim 30, Appellant argues that Carpenter does not
disclose removable button snaps. Br. p. 11. The Examiner cites to the
unlabelled and unmentioned circular elements that appear to be added to the
helmet between the steps depicted in Figures 10 and 11 to meet the
limitation of removable button snaps. These element are not necessarily
removable button snaps–they could, for example, be rivets. Absent any
discussion in Carpenter defining these features as removable button snaps,
Carpenter cannot reasonably be construed to disclose removable button
snaps. The Examiner does not cite any additional features of Carpenter in
lieu of button snaps to meet any other one of the elements recited in the
alternative in claim 30. Carpenter does not disclose grooves or a marker
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either. Since Carpenter does not disclose each and every element of claim 30
the rejection of claim 30 as being anticipated by Carpenter cannot be
sustained.
CONCLUSION OF LAW
On the record before us, Appellant has established that the Examiner
erred in rejecting Claims 21, 22 and 30 under 35 U.S.C. § 102(b) as being
anticipated by Carpenter. Appellant has also established that the Examiner
erred in rejecting claims 1-4 and 11-14 under 35 U.S.C. § 103(a) as being
unpatentable over Carpenter in view of Bloch. Appellant has also established
that the Examiner erred in rejecting claims 7, 10, 17 and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Carpenter and Bloch and further in view
of Iwai. Appellant has also established that the Examiner erred in rejecting
claims 26 and 27 under 35 U.S.C. § 102(b) as being anticipated by Monica.
Appellant has not established that the Examiner erred in rejecting claim 23
under 35 U.S.C. § 102(b) as being anticipated by Carpenter.
Appellant has not established that the Examiner erred in rejecting
claims 23-25 and 28 under 35 U.S.C. § 102(b) as being anticipated by
Marchello. Appellant has not established that the Examiner erred in rejecting
claims 23 and 24 under 35 U.S.C. § 102(b) as being anticipated by Monica.
Appellant has not established that the Examiner erred in rejecting claim 29
under 35 U.S.C. § 103(a) as being unpatentable over Marchello in view of
Adams.
DECISION
For the above reasons, the Examiner's rejections of claims 1-4, 7, 10-
14, 17, 20-22, 26, 27 and 30 are reversed. The Examiner's rejections of
claims 23-25, 28 and 29 are affirmed.
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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) (2007).

AFFIRMED-IN-PART

vsh

THOMAS SPINELLI
2 SIPALA COURT
EAST NORTHPORT, NY 11731