Ex Parte SpinelliDownload PDFPatent Trial and Appeal BoardMay 9, 201612970922 (P.T.A.B. May. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/970,922 79998 7590 Thomas Spinelli, Esq, 14 Mystic Lane Northprot, NY 11768 12/16/2010 05/10/2016 FIRST NAMED INVENTOR Thomas Spinelli 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. 10027A 6999 EXAMINER HOEY, ALISSA L ART UNIT PAPER NUMBER 3765 MAILDATE DELIVERY MODE 05/10/2016 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 THOMAS SPINELLI Appeal2014-003134 Application 12/970,922 Technology Center 3700 Before JENNIFER D. BAHR, JAMES P. CALVE, and ARTHUR M. PESLAK, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Thomas Spinelli (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1 and 2. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. Appeal2014-003134 Application 12/970,922 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A method for one or more of protecting and decorating a sports helmet, the method comprising[:] positioning an opening in a band of heat shrink material around an external outer surface of the sports helmet, the opening being larger than a corresponding size of the external outer surface of the sports helmet; and applying heat to the heat shrink material to shrink the heat shrink material to a size of the external outer surface of the helmet. REJECTION Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Carpenter (US 5,525,290, iss. June 11, 1996) and Spiegel (US 3,829,348, iss. Aug. 13, 1974). DISCUSSION The Examiner finds that Carpenter's plastic sheet 30 is a heat shrink material. Non-Final Act. 31 The Examiner cites Carpenter's disclosure of "polypropylene," which, according to the Examiner, "is a known heat shrink material." Id.; see Carpenter, col. 3, 11. 33-38. Appellant contends, "(1) [ n ]one of the cited references teach or suggest applying a heat shrink material to a sports helmet; and (2) [t]hose 1 In the Final Action (issued Jan. 30, 2013), from which the present appeal is taken, the Examiner does not restate the rejections, but, instead, refers to "a prior Office Action." Final Act. 2. Thus, we refer herein to the rejection set forth in the Non-Final Action (hereinafter "Non-Final Act.") issued September 12, 2012. 2 Appeal2014-003134 Application 12/970,922 skilled in the art would not look to the vacuum formed material application of Carpenter to combine the same with the heat shrink material application of Spiegel." Appeal Br. 4. According to Appellant, "Carpenter does not disclose or suggest that such plastic sheet (30) is a heat shrink material." Id. at 5. Appellant adds that "[i]n fact, Carpenter stresses that such plastic sheet is stretched at least 200 percent (certainly not shrunk)." Id. at 5 (emphasis omitted). Carpenter discloses as follows: A vacuum is applied from base 24 through a passageway 3 8 in the base providing communication between apertures (not shown) at the top of the vacuum machine to a suitable source of vacuum (not shown). This serves to draw the heated plastic sheet 30 tightly about the helmet shell 18 so that the shape of the plastic sheet 30 conforms to the shape of the smoothly curved outer surface of the helmet shell. At the same time, the plastic sheet is stretched at least 200 percent. In other words, the heated plastic sheet 30 is molded directly and tightly about the helmet shell. Carpenter; col. 4; 11. 5-14 (boldface omitted). Carpenter's plastic sheet 30 does not act (shrink) in the above- described process as a heat shrink material as described in Appellant's Specification and as that terminology is understood by those skilled in the art. See Spec. 7-8; Appeal Br. 5 (asserting that "'heat shrink material' has a well defined meaning in the art"). Further, Carpenter does not explicitly describe plastic sheet 30 as a heat shrink material. The Examiner states that polypropylene, which is disclosed by Carpenter as an example of a suitable material for plastic sheet 30, "is a known heat shrink material," but does not proffer any evidence to support this finding. Non-Final Act. 3. Appellant's Specification lists "polypropylene" as one of "four major types of heat shrink materials." Spec. 7. However, Appellant's Specification does not 3 Appeal2014-003134 Application 12/970,922 suggest that all polypropylene materials necessarily are heat shrink materials. In fact, Appellant's Specification indicates that shrink properties of a material are "set at the point of manufacturing," thereby suggesting that shrink properties are not an inherent property of all polypropylenes, but, rather, are influenced by the particular processing of the material. Id. at 7-8. Accordingly, the Examiner's finding that Carpenter's plastic material is heat shrink material is not supported by a preponderance of the evidence. The Examiner's unsupported finding that Carpenter's plastic sheet 30 is a heat shrink material does not show error in the rejection because the Examiner's proposed modification of Carpenter in view of Spiegel cures, or makes up for, this deficiency. The Examiner correctly finds that Spiegel discloses a method of protecting and decorating an object comprising, in pertinent part, positioning a heat shrink material having an opening therein such that the opening is around an external outer surface of the object and "applying heat to the heat shrink material to shrink the heat shrink material to the size of the external surface of the object." Non-Final Act. 4; see Spiegel, col. 1, 11. 12-16; col. 2, 11. 50-69; col. 4, 11. 46-49. The Examiner determines that it would have been obvious to modif[y] the heat shrink material of Carpenter, to be a band of heat shrink material comprising an opening, as disclosed by Spiegel, [position the opening around the outer surface of Carpenter's sports helmet], and [apply] heat to the heat shrink material to shrink the heat shrink material to a size of the external outer surface of the helmet, in the manner disclosed by Spiegel, to provide a method of decorating the sports helmet "very quickly and easily." Non-Final Act. 4 (citing Spiegel, col. 2, 1. 71) (emphasis omitted). 4 Appeal2014-003134 Application 12/970,922 Appellant argues that one of ordinary skill in the art would not have looked to the teachings of Spiegel to form a decorative covering on a helmet as taught by Carpenter because (1) according to Appellant, "Spiegel only discloses applying a heat shrink material to a fragile item, such as glass Christmas balls" and (2) Spiegel's "band would only apply a partial design to the helmet." Appeal Br. 5---6. For the reasons that follow, neither of these arguments is persuasive. Spiegel's teachings are not limited to applying a heat shrink material to a fragile item as Appellant contends. Spiegel states "[h ]eat is applied to the band causing it to shrink and conform to the shape of the object being decorated." Spiegel, col. 1, 11. 14--16. Furthermore, Spiegel teaches that "[t]his invention relates generally to methods of ornamenting and more particularly to a method for ornamenting spherical, cylindrical and irregularly shaped three-dimensional objects." Id., col. 1, 11. 18-21. A person having ordinary skill in the art would have readily appreciated from these teachings that Spiegel's method would be applicable to decorating a generally spherical, but irregularly-shaped object such as Carpenter's helmet. The fact that Spiegel additionally recognizes that the disclosed invention would also "provide a new and improved method of ornamenting toys, electric bulbs, glassware, arts and crafts models and other holiday decorations" (id., col. 1, 11. 42--45) would not have dissuaded a person of ordinary skill in the art from looking to the teachings of Spiegel in decorating Carpenter's helmet. Appellant's argument that Spiegel's technique would only apply a partial design to the helmet overlooks Spiegel's disclosure of the embodiment illustrated in Figure 10. See Spiegel, Fig. 10; col. 3, 11. 39-55; 5 Appeal2014-003134 Application 12/970,922 col. 4, 11. 46-49; Ans. 4 (pointing to this disclosure in Spiegel); Non-Final Act. 4 (citing Spiegel's Fig. 10). Spiegel's Figure 10 and its accompanying description evidence that Spiegel's heat shrink technique can be used to decorate the entire external outer surface of a three-dimensional object, such as a helmet. For the above reasons, Appellants fail to apprise us of error in the rejection of claim 1. Appellant does not present any separate arguments for patentability of claim 2, apart from its dependence from claim 1. See Appeal Br. 6-7. Accordingly, we sustain the rejection of claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over Carpenter and Spiegel. DECISION The Examiner's decision rejecting claims 1 and 2 is AFFIRMED. 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)(l )(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation