Ex Parte Svehaug

Patent Trial and Appeal Board

Dec 15, 2017

13820060 (P.T.A.B. Dec. 15, 2017)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/820,060 02/28/2013 TimSvehaug
95300 7590 12/19/2017
Leyendecker & Lemire, LLC
Suite 330
5460 S Quebec St
Greenwood Village, CO 80111
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.
TS-0.007 7909
EXAMINER
TRIEU, TIMOTHY K
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
12/19/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentdocket@coloradoiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIM SVEHAUG
Appeal 2017-011816
Application 13/820,060
Technology Center 3700
Before LINDA E. HORNER, THOMAS F. SMEGAL, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 appeals under 35 U.S.C. § 134 from a rejection of claims
1, 5-20, 23-29, 31-33, 38, and 41--47. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 We are informed that the real party in interest is Tim Svehaug. Appeal
Brief 2 (February 20, 2017, hereinafter "Appeal Br.").
Appeal2017-011816
Application 13/820,060
CLAIMED SUBJECT MATTER
The claims are directed to a soft helmet incorporating rigid panels.
Claims 1, 14, 31, and 41--4 3 are independent. Claim 1 is reproduced below
to illustrate the claimed subject matter:
1. A soft helmet for wear under a hat, said soft helmet
compnsmg:
a fabric shell having an interior layer and an exterior
layer, wherein said interior layer is defined by (i) a middle
section extending from a front of the interior layer to a back of
the interior layer, (ii) a left side, and (iii) a right side;
at least fifteen individual, separate, and distinct pockets
segmented in said interior layer of said fabric shell; and
a plurality of individual inserts configured to fit in said at
least fifteen pockets, said plurality of inserts having a first layer
and a second layer, said first layer being a compressible
material and said second layer being a rigid material;
wherein nine of the at least fifteen pockets are configured
to receive an arcuate rectangular insert and six of the at least
fifteen pockets are configured to receive an arcuate triangular
insert;
wherein three of the six pockets configured to receive an
arcuate triangular insert are located on the right side of the
interior layer and three of the six pockets configured to receive
an arcuate triangular insert are located on the left side of the
interior layer;
wherein seven of the nine pockets configured to receive
an arcuate rectangular insert are located along the middle
section of the interior layer, one of the nine pockets configured
to receive an arcuate rectangular insert is located on the right
side of the interior layer, and one of the nine pockets configured
to receive an arcuate rectangular insert is located on the left side
of the interior layer.
Appeal Br. 34 (Claims App.).
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REJECTIONS
1. Claims 1, 5, 8, 12-17, 20, 23-25, 27, and 28 are rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Lampe et al.
(US 5,930,841, Aug. 3, 1999; hereinafter "Lampe") in view of Norton
(US 7,937,778 Bl, May 10, 2011) and Picotte (US 2004/0107482 Al, June
10, 2004).
2. Claims 6, 9-11, 18, and 19 are rejected underpre-AIA
35 U.S.C. § 103(a) as being unpatentable over Lampe in view of Norton and
Picotte as applied to claims 1 or 14 above, and further in view of Ferrara
(US 2006/0059606 Al, Mar. 23, 2006).
3. Claim 7 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Lampe in view of Norton and Picotte as applied in claims
1or14 above, and further in view of Rinaldi (US 5,481,759, Jan. 9, 1996).
4. Claim 26 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Lampe in view of Norton and Picotte as applied in claims
1or14 above, and further in view of Shifrin (Re. 35,193, Apr. 2, 1996).
5. Claim 29 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Lampe in view of Norton and Picotte as applied in claims
1 or 14 above, and further in view of Duncan (US 8,201,273 B2, June 19,
2012).
6. Claims 31-33 are rejected underpre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Ferguson (US 2013/0219594) in view of Norton
and Rotzin (US 5,023,958, June 18, 1991).
7. Claim 38 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ferguson in view of Norton and Rotzin as applied in
claim 31 above, and further in view of Ferrara.
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8. Claim 41 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Lampe in view of Picotte and Alexander et al.
(US 6,073,271, June 13, 2000; hereinafter "Alexander").
9. Claim 42 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Lampe in view of Picotte and Norton.
10. Claim 43 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Lampe in view of Picotte.
11. Claim 44 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Lampe in view of Picotte as applied to claim 43 above,
and further in view ofNorton and Wang (US 2004/0006807 Al, Jan. 15,
2004).
12. Claims 45 and 47 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Lampe in view of Picotte as applied to
claim 43 above, and further in view of Norton.
13. Claim 46 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Lampe in view of Picotte and Norton as applied to claim
45 above, and further in view of Ferrara.
OPINION
Rejection 1. Claims 1, 5, 8, 12-17, 20, 23-25, 27, and 28
unpatentable over Lampe, Norton, and Picotte
Claim 1.
The Examiner finds that Lampe teaches all the features of claim 1
except that it does not disclose "a first layer and a second layer of the
plurality [of] inserts, said first layer being a compressible material and said
second layer being a rigid material." Non-Final Action mailed December
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27, 2016 (hereinafter "Non-Final Act."), 7. The Examiner finds that Norton
teaches similar headgear with inserts formed by at least an inner layer of an
energy absorbing closed cell foam and an outer rigid plastic layer. Id. (citing
Norton, item 30, Figs. 3---6, 3:6-11). The Examiner further finds that "the
modified Lampe does not discloses [sic] at least fifteen individual, separate,
and distinct pockets segmented in said interior layer of said fabric shell." Id
at 8. The Examiner turns to Picotte, finding "Picotte teaches a similar
headgear having at least fifteen pockets [F]ig. 3." Id. The Examiner goes on
to find that the soft helmet of Picotte "can have more than one pockets ... ,
and the one or more pads comprise any shape and sizes [sic]." Id. (citing
Picotte i-fi-159, 35, 60). Picotte discloses that the pads "may comprise any
shape, including but not limited to, squares, triangles, or rectangles ....
Further, the one or more pads of the present invention may be disposed in
cloth fabric. . . . The cloth may be hemmed on at least one edge, or up to
four edges." Picotte i135. Finally, the Examiner finds that Picotte discloses
that the pads may be any size or shape and that it would be an obvious
matter of design choice to make the claimed inserts in the sizes, shapes, and
numbers claimed. Non-Final Act. 9.
Appellant argues first that the Examiner wrongly finds that the pads 7
of Picotte correspond both to the claimed pockets and the claimed inserts.
Appeal Br. 8. Appellant continues, asserting that Picotte teaches away from
the pads 7 being pockets or at least is silent on this point. Id. at 9. A
dictionary definition of "pocket" as being open at one end is cited to support
Appellant's position. Id. Next, Appellant argues that Picotte "is utterly
silent regarding 'at least fifteen individual, separate and distinct pockets."'
Appeal Br. 10 (quoting Appeal Br. 34 (Clams App.)).
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Appellant's argument based on Picotte alone is not persuasive. First,
in the Non-Final Action Lampe, not Picotte, was relied on for teaching
pockets. Non-Final Act. 7 (citing Lampe, pockets 136); see also Ans. 3.
Lampe describes the pockets: "pockets ... hold pads;" "pockets ...
configured to define gaps;" "stretchable inner and outer layers allows [sic]
the pockets 136 to accommodate different sized pads." Lampe 4:10-55.
Thus, Lampe discloses plural pockets with removable pads, as the Examiner
found, and Appellant does not address this finding. Second, Picotte
specifically discloses that the pads 7 can be surrounded by fabric and
hemmed on one or more sides. Picotte i-f 35. Hemming on three sides the
fabric in which a rectangular pad is disposed would clearly form a pocket by
most definitions. That the pads themselves may be totally enclosed in fabric
forming a closed pocket is not relevant given Picotte' s disclosure that the
fabric may be hemmed on one or more edges.
Appellant next argues that the rejection of claim 1 based on design
choice (Non-Final Act. 8-9) fails to identify a motivation to select the
locations and types of inserts claimed in claim 1 and fails to identify a
known result effective variable for optimization (citing MPEP
§ 2144.04(VI)(C) and MPEP § 2144.05(II)(A)). Appeal Br. 11-13.
In appropriate circumstances, a modification of prior art teachings
may be a matter of design choice. E.g., ACCO Brands Corp. v. Fellowes,
Inc., 813 F.3d 1361, 1367 (Fed. Cir. 2016) (where the prior art consistently
located two sensors in shredder's feed, skilled artisan faced two design
choices of placing the thickness sensor above or below the presence sensor
and each design choice was an obvious combination of prior art elements);
Rexnord Indus., LLC v. Kappas, 705 F.3d 1347, 1356 (Fed. Cir. 2013)
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(where the prior art taught that conveyor belt elements are spaced to avoid
pinching fingers, the claimed 10 mm dimension was a design choice that
takes into account the size of fingers and small objects); Sciele Pharma Inc.
v. Lupin Ltd., 684 F.3d 1253, 1263 (Fed. Cir. 2012) ("it would have been a
routine and obvious design choice to make an extended release dosage form
with a lower T max" in view of teachings in the prior art to lower T max and
evidence that such change was predictable and within the level of skill in the
art); PlaSmart, Inc. v. Kappas, 482 Fed. App'x 568, 574 (Fed. Cir. 2012)
(unpublished) (attaching safety wheel directly to twister member of scooter
instead of body would have been a common sense alternative design choice
as a safety feature to prevent tipping of the scooter); In re Conte, 36 Fed.
App'x 446, 451 (Fed. Cir. 2002) (unpublished) (whether keyhole slot used to
retain rubber band to front of gun barrel faced upwardly or downwardly was
a fairly insignificant design choice as both slots retained rubber band); In re
Aslanian, 590 F.2d 911, 915 (CCPA 1979) (making front and rear bottom
side portions co-planar was a design choice); In re Kuhle, 526 F.2d 553, 555
(CCPA 1975) (a spring-loaded electrical contact was an obvious matter of
design choice within the skill in the art where placement of electrical contact
provides no novel or unexpected result).
However, a claimed change that results in a different structure and
function may not be a design choice. E.g., Fluor Tee, Corp. v. Kappas, 499
Fed. App'x 35, 41--42 (Fed. Cir. 2012) (unpublished) (adding an expander to
a low pressure feed to accommodate a high pressure feed was not a design
choice when a separate high-pressure feed already was used); In re Gal, 980
F.2d 717, 719-20 (Fed. Cir. 1992) (custom logic cells that had a different
structure and purpose than prior art logic cells were not a design choice), cf
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Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984) (claim was
obvious because structure that functioned differently from the prior art was
not claimed).
The Examiner identified a motivation to modify the teachings of the
prior art to arrive at the claimed arrangement of pads. Non-Final Act. 9.
The Examiner's obviousness rejection must be based on
"some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness" . . . . [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441F.3d977, 988 (Fed. Cir. 2006)). Here, the Examiner found that Picotte
provided the motivation "to provide fifteen individual, separate and distinct
pockets segmented for the headgear of Lampe as taught by Picotte in order
to provide evenly distributed of pads around a wear's [sic] head to prevent
head injury." Non-Final Act. 9. The Non-Final Action specifically
identifies paragraphs 35, 59, and 60 of Picotte. Id. ("[T]he one or more pads
may comprise any shape, including but not limited to, squares, triangles, or
rectangles. The pads may also be spherical, cylindrical, conic, or disc-like,
among other shapes and sizes. In one alternative embodiment the pads may
be one or more difference [sic] shapes or sizes" (Picotte i-f 35); "[T]he
protective hat may comprise one or more pads ... [and] one or more pads
may be entirely separate, that is, not in communication with other pads"
(Picotte i-f 59); "The liner may also comprise a plurality of pads. . . . The
pads may be round, annular shape, or triangular shape." (Picotte i-f 60)).
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As for the particular number and arrangement of pads of various
shapes, the Examiner finds that the claimed arrangement was a matter of
design choice. Non-Final Act. 9. The Examiner notes that there is no
asserted criticality for having different shapes of the inserts. Id. The Appeal
Brief asserts that the
selected locations and types of inserts provide a unique design
where a wearer of the soft helmet would appear to be wearing a
normally [sic] beanie or hat. An observer seeing the wearer of
the soft helmet would not know the wearer was wearing a
protective helmet. As such, the location and insert type for
each location has a purpose.
Appeal Br. 13. This argument is entitled to little weight. It is well settled
that arguments of counsel cannot take the place of factually supported
objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139--40 (Fed. Cir.
1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Although the
Specification states that "the soft helmet 402 may appear to be a normal
beanie cap" (Spec. 12), there is no discussion of how the form or placement
of the panels carried by the cap serve to disguise its protective nature.
Moreover, as pointed out by the Examiner, claim 1 "doesn't provide
criticality for having different shapes of the insert." Non-Final Act. 9.
Picotte teaches a wide variety of shapes for inserted pads, and the pad
thickness and spacing between the pads would seem to have as much to do
with disguising the presence of a protective helmet as the claimed
arrangement of the inserts. Picotte states that "any number, size or assembly
[of pads] may be utilized in the construction of the present invention, so long
as the pads adequately protect the wearer's head from injuries due to falls or
bumps against hard objects, for example." Picotte i-f 45. We see no
significant difference in function between the soft helmet of Picotte (Fig. 3B,
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implying at least 21 pads) and the claimed arrangement of at least 15 pads,
nor do we see any result that is new or unexpected. See Application of
Hanlon, 285 F.2d 829, 831(CCPA1961). Accordingly, we agree that it
would have been "a mere design choice to have more than one individual,
separate and distinct pockets [sic] segmented to receive different shapes of
inserts and arrange[d] at different position[s] in the helmet." Non-Final Act.
9. In this case the claimed arrangement of inserts does not render claim 1
patentable over the art of record.
In view of the foregoing, we affirm the rejection of claim 1.
Claim 14.
Independent claim 14 requires, inter alia, the limitations of "wherein
six of the at least twelve pockets are configured to receive an arcuate
rectangular insert and six of the at least twelve pockets are configured to
receive an arcuate triangular insert" and "wherein the six pockets configured
to receive an arcuate triangular insert are located around a crown of the
interior layer and the six pockets configured to receive an arcuate
rectangular insert are located around a middle of the interior layer." Appeal
Br. 35-36 (Claims App.). The Examiner relies on the same combination of
prior art references as used to reject claim 1.
Appellant relies on the same design-choice arguments made in
connection with claim 1. For the reasons stated above, we find these
arguments unpersuasive.
Appellant makes no separate argument in connection with claims 5, 8,
12, 13, 15-17, 20, 23-25, 27, and 28 (see Appeal Br. 8-33), all of which
depend directly or indirectly from claims 1 or 14, and for the reasons stated
above, and we affirm the rejection of these claims. To the extent that
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Appellant's arguments made in connection with claims 1 and 14 are
intended to apply to claims 31 and 41--43 (see id. at 8), we find them
unpersuasive for the reasons stated above.
Rejection 2. Claims 6, 9-11, 18, and 19 unpatentable over Lampe,
Norton, Picotte and Ferrara.
Claims 6, 9-11, 18, and 19 depend directly or indirectly from claims 1
or 14. Appellant makes no separate argument in connection with these
claims (see Appeal Br. 8-33), and for the same reasons we affirm the
rejection of claims 1 and 14, we affirm the rejection of these claims.
Rejection 3. Claim 7 unpatentable over Lampe, Norton, Picotte, and
Rinaldi.
Claim 7 depends from claim 1. Appellant makes no separate
argument in connection with this claim (see Appeal Br. 8-33), and for the
same reasons we affirm the rejection of claim 1, we affirm the rejection of
claim 7.
Rejection 4. Claim 26 unpatentable over Lampe, Norton, Picotte, and
Shifrin (RE35193).
Claim 26 depends from claims 14 and 23. Appellant makes no
separate argument in connection with claim 26 (see Appeal Br. 8-33), and
we affirm the rejection of claim 26 for the same reasons we affirm the
rejection of the claims from which it depends.
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Rejection 5. Claim 29 unpatentable over Lampe, Norton, Picotte, and
Duncan.
Claim 29 depends from claim 14. Appellant makes no separate
argument in connection with claim 29 (see Appeal Br. 8-33), and we affirm
the rejection of claim 29 for the same reasons we affirm the rejection of
claim 14.
Rejection 6. Claims 31-33 unpatentable over Ferguson, Norton, and
Rotzin.
Appellant argues that the failure to include in the Examiner's Answer
a response to Appellant's argument for claim 31 amounts to an admission
that the rejection is flawed and must be reversed. Reply Br. 2. The Answer
incorporates all the grounds of rejection stated in the Non-Final Action dated
December 27, 2017, and no grounds of rejection are withdrawn. Ans. 2; see
also 37 C.F.R. § 41.39(a)(l). Obviousness is determined on the basis of the
evidence as a whole and the relative persuasiveness of the arguments. See In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Therefore, we will
consider the Non-Final Action and the Appeal Brief in determining the
appeal of the rejection of claim 31.
Claim 31 includes, inter alia, "[a] combination comprising: a hat; and
a soft helmet configured to be worn under the hat. ... " Appeal Br. 37
(Claims App.). The Examiner finds that Ferguson teaches all of claim 31
but "does not disclose wherein each of the pads/inserts having an exterior
layer and an interior layer, said exterior layer and said interior layer having
different hardnesses." Non-Final Act. 19. The Examiner relies on Norton,
as above, for inserts including an energy absorbing layer and a rigid plastic
layer. Id. The Examiner finds that the particular claimed thicknesses of the
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inner and exterior layers of the padding are obvious optimizations of
Norton's pads. Id. at 19-20. Finally, the Examiner relies on Rotzin and for
showing similar headgear with a nylon chinstrap directly attached to the
inner layer lining of the helmet. Non-Final Act. 20 (citing Rotzin 3:5-26;
3:45-57, Fig. 5b).
Appellant makes four arguments to support its assertion that claim 3 1
is rejected erroneously. Appeal Br. 18-23. First, Appellant argues that "one
of ordinary skill in the art would not search football helmets when creating a
soft shell helmet including a hat" (id. at 19) and, therefore, the Ferguson
reference is not pertinent. In light of the Specification, this argument is not
persuasive. The Specification states by way of Background that "[h ]elmets .
. . provide a wearer with impact protection ... when participating in certain
recreational sports." Spec. 1. Ferguson "relates generally to protective,
impact-absorbing headgear/helmet liner" that may be used inside a football
helmet. Ferguson i-fi-12, 20. We find football helmets to be in the same field
of endeavor as Appellant's soft shell helmet, namely protecting a wearer's
head from potential injury, and certainly football helmets and shock
absorbing liners for them are reasonably related to the problems Appellant
confronted. See Kahn, 441 F.3d at 986-87.
Second, Appellant contends that the Ferguson skullcap 10 is designed
only to be used in conjunction with a helmet, and so cannot teach the
claimed hat and soft helmet combination. Appeal Br. 20. Specifically,
Appellant argues, "[t]he skull cap (10) is designed to 'provide a separate,
impact-absorbing helmet liner to be worn beneath various types of helmets.'
In contrast, the claimed soft helmet is designed to be implemented both with
the hat and independently of the hat." Id. This argument is not persuasive
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because it is not directed to the claimed subject matter. The claims are
directed to a hat and soft helmet in combination; the claims are not directed
to a kit or smorgasbord of hat components but to a hat in combination with a
soft helmet. Arguments based on limitations not appearing in the claims fail
from the outset. In re Self, 671F.2d1344, 1348 (CCPA 1982).
Third, Appellant argues that removing the helmet of Ferguson would
frustrate the purpose of the skullcap shown in Ferguson and, therefore,
modifying the Ferguson skullcap by using Norton's inserts is improper.
Appeal Br. 20. Ferguson discloses "a separate, impact-absorbing helmet
liner to be worn beneath various types of helmets." Ferguson i-f 10. To this
end, Ferguson discloses that its pads may be made of "foam or similar
material." Id. i-f 28. Norton discloses protective inserts that fit in pockets in
a hat and that include a plastic panel 31 and a foam layer 32. Norton 3:3-17.
The Examiner finds that it would have been obvious "to have modified the
pad/insert of Ferguson by employing the teaching of the insert/segment
formed by a rigid outer layer and an energy absorbing material inner layer as
taught by Norton in order to provide comfort and protection for the head of
[the] user from injury." Non-Final Act. 19 (citing Norton 4:14--18, 1:31-
42).
Appellant asserts that "the addition of gel pads in the skull cap (10) is
the core of the invention in Ferguson." Appeal Br. 20-21. Appellant further
argues "ifthe gel pads [of Ferguson] were replaced by inserts ofNorton, the
skull cap (10) would not work as disclosed." Id. at 21. While the gel pads
may be preferred by Ferguson, Ferguson clearly states that the pads may be
made of "foam or similar material," the same material used by Norton.
Compare Norton 3:3-17 ("high density closed cell foam") with Ferguson
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i-f 27 ("foam rubber or other resilient material"). Appellant further argues
that in order to make the combination of Norton and Ferguson work, "one
would likely need to remove the hard plastic panel (31) of the insert of
Norton to work with the football helmet, or another helmet, of the reference
Ferguson." Appeal Br. 22. This is a speculative argument that is not
supported by any factual reasoning, and we see no frustration in Ferguson's
purpose by substituting one foam material for another, even if Ferguson
prefers a gel to foam, which Ferguson also discloses.
Finally, for its fourth argument, Appellant argues that the claimed
thickness of the layers making up the claimed pads are not disclosed and
have not been shown to be obvious in view of the prior art. Appeal Br. 22-
23. Claim 31 requires that the inserts have an "exterior layer [that] is an
eighth of an inch thick and [an] interior layer [that] is [3/ 16] of an inch
thick." Id. at 37 (Claims App.). The Examiner finds that discovering the
optimum or workable ranges involves only routine skill in the art where the
general conditions of a claim are disclosed in the prior art. Non-Final Act.
19-20.
Appellant argues that before optimization can be used as a rationale
supporting an obviousness finding, the particular parameter must be
recognized as a result-effective variable (citing MPEP § 2144.05(II)(B) ).
Appeal Br. 22-23. This argument is not persuasive because the prior art
recognizes that the various layers of protective helmets may be of varying
thicknesses to improve user safety. See, e.g., Ferrara i-fi-148-51 ("[t]he
thickness and type of foam material [of internal liner 32] can be varied
without departing from the principles of the invention."); Ferguson i-fi-112,
29 ("The pads may be of varying thickness, depending on their placement
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and type of activity with which they are to be used," and "[t]he gel pads of
this material may be cut formed or otherwise shaped from stock having a
variety of thicknesses including 2 mm, 8 mm 12 mm and 14 mm exemplary
thicknesses."); Picotte i-fi-129, 32 ("[T]he foam layer may have a thickness of
about 1/8 to about 4 inches, or about 1/4 to about 3/8 inches," and "[t]he
thickness of such pads may range from 0.20 inches to 6.0 inches. However,
it should be understood that the thickness of the pads may vary in
accordance with the desired yeildability [sic] or stretchability of the pad.");
Norton 3:3-17 (A two-layer protection segment has an outer hard layer
approximately 1/8 inch thick and an inner layer of high density, closed cell
foam approximately 1/8 inch thick, or thicker.); Lampe 3:36-43 ("The
thickness of the padding may be suitably selected in consideration ... of the
particular environment in which the headguard 100 is worn.") Because the
prior art, including that cited in rejecting claim 31, recognizes that the
thickness of the padding is a result-effective variable, we are not persuaded
that the Examiner's rejection of claim 31 was in error for failing to make a
specific determination of this well-known fact.
Appellant makes no separate argument for dependent claims 3 2 and
33 (see Appeal Br. 8-33), and we summarily affirm the rejection of those
claims.
Rejection 7. Claim 38 unpatentable over Ferguson, Norton, Rotzin,
and Ferrara.
Claim 38 depends from claim 31 adding that "said second layer [is]
molded over said first layer." Appeal Br. 38 (Claims App.). Appellant
argues that the Examiner's failure to submit a response to Appellant's Brief
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on this claim amounts to an admission that the rejection is flawed and must
be reversed. Reply Br. 2. The Examiner's Answer included all of the
rejections in the Non-Final Action. Ans. 2. We find no substantive
argument directed to claim 38 in Appellant's Appeal Brief (see Appeal Br.
8-33), and so summarily affirm the rejection of claim 38. 37 C.F.R.
§ 41.37(c)(l)(iv).
Rejection 8. Claim 41 unpatentable over Lampe, Picotte, and
Alexander.
Appellant relies on the arguments made in connection with claims 1
and 31 to support its contention that claim 41 patentably defines over the
cited references. Appeal Br. 23. For the reasons discussed above in
connection with claims 1 and 31, we are not persuaded of error in the
rejection of claim 41.
Rejection 9. Claim 42 unpatentable over Lampe, Picotte, and Norton.
Appellant relies on the arguments made in connection with claims 1
and 14 to support its contention that claim 42 defines over the cited
references. Appeal Br. 24. For the reasons discussed above in connection
with claims 1 and 14, we are not persuaded of error in the rejection of claim
42.
Rejection 10. Claim 43 unpatentable over Lampe and Picotte.
Claim 43 is a method claim including, in pertinent part, "providing a
first set of inserts including at least one arcuate rectangular insert and one
arcuate triangular insert based on a first activity." Appeal Br. 39 (Claims
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App.). Appellant argues that the Examiner "did not show how the reference
Picotte teaches or suggests having both an arcuate rectangular insert and an
arcuate triangular insert." Id. at 25. Picotte, Figure 3B, shows inserts of
various shapes including at least two that are triangular and seven that are
rectangular. Not only does Picotte specifically mention these shapes, but
Picotte also suggests that the pads need not be flat but may be spherical,
cylindrical, conic, or disc-like. Picotte i-f 35 (cited by the Examiner in Non-
Final Act. 27). Because Picotte discloses what Appellant argues is missing
from the rejection, we are not persuaded that the Examiner erred in rejecting
claim 43 for failure to disclose the claimed insert shapes.
Appellant also argues that Picotte does not disclose selecting an insert
based on a first activity. Appeal Br. 25-26. We are not persuaded by this
argument for two reasons. First, the Non-Final Action relied on Lampe for
the selection of inserts based on an activity (citing Lampe, Fig. 1). Non-
Final Act. 27. Lampe states its headguard is "for athletes and in particular
soccer players." Lampe, Abstract. Soccer is an "activity," and Appellant
does not address the sufficiency of the Examiner's finding that Lampe
discloses an insert selected based on an activity. Because the Examiner did
not rely in Picotte to teach the limitation "based on a first activity," the
argued failure of Picotte to teach such a step cannot persuade us of Examiner
error. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
Even had the Examiner relied on Picotte to teach the "based on an
activity" limitation, we would not be persuaded of error. Appeal Br. 25-26.
Picotte discusses a variety of different activities that might require headgear
including "walking, playing, crawling, or learning to walk[,] ... non-sport
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activities such as playing in a playground ... [and] outdoor athletic or sport
activities, such as soccer, baseball and other contact sports." Picotte i-f 4.
Picotte' s headgear comes in different sizes, being suitable for "an infant,
child or adult." Id. i-f 5. Picotte specifically mentions using different inserts
depending on the "likely impact." Id. i-f 30.
We take the claim phrase "based on an activity" to mean based on the
risk of head injury associated with the particular activity. In support of this
conclusion we note that Appellant's Specification states that "because the
panels are removable, variations of the shell 102 are contemplated wherein
the type of panel may be switched out depending on the type of activity
being undertaken and/ or the amount of head protection desired." Spec. 7.
Thus, both the claimed invention and Picotte are concerned with protecting
users from accidental head injury. Selecting a pad and its placement based
on "likely impact," as does Picotte, is the same risk assessment Appellant
engages in when recommending that its helmet be used "by skiers, rock
climbers, snow boarders, bicyclists or any other activity where protection of
the head from impact is important." Id. at 3. Therefore, we find that Picotte
discloses providing an insert based on an activity.
In view of the foregoing, we have not been persuaded of error in the
rejection of claim 43.
Rejection 11. Claim 44 unpatentable over Lampe, Picotte, Norton,
and Wang.
Claim 44 depends from claim 43, requiring in addition that "the first
set of inserts each include [sic] an exterior layer being aluminum and an
interior layer being closed cell foam." Appeal Br. 39 (Claims App.). The
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Non-Final Action relied in part on Wang (Non-Final Act. 28-29) which
Appellant argues is non-analogous art. Appeal Br. 26. Wang discloses a
cap with peak 1 comprising a see-through layer and a lining made,
optionally, of plastics or metals including aluminum. Wang i-f 16.
Appellant asserts Wang is not in the same field of endeavor as the
claimed invention because the disclosure in "Wang is directed toward
aesthetic improvements. In direct contrast, the claimed soft helmet is a
protective headwear." Appeal Br. 27. This argument is not persuasive
because Appellant asserts that one of the purposes of the claimed invention
is aesthetic. Id. at 13 ("The selected locations and types of inserts provide a
unique design where a wearer of the soft helmet would appear to be wearing
a normally beanie or hat. An observer seeing the wearer of the soft helmet
would not know the wearer was wearing a protective helmet. As such, the
location and insert type for each location has a purpose.")
Appellant also asserts that Wang is not reasonably pertinent to the
problem addressed by Appellant's soft shell helmet. Appeal Br. 27.
Whether a reference is reasonably pertinent may be decided by looking at
the limitation at issue rather than at Appellant's overall problem to be
solved. In re ICON Health and Fitness, Inc., 496 F 3d 1374, 1380 (Fed. Cir.
2007). The limitation at issue relates to inserts for head wear that include a
hard layer and a second layer. The Examiner finds, and Appellant does not
dispute, that Norton teaches an insert for protective headgear where the
insert is formed with an inner layer 32 having an energy absorbing high
density closed cell foam (citing Norton 3: 8-11) and an outer rigid plastic
layer 31 (citing Norton 3:6-11). Non-Final Act. 7. We agree with the
Examiner that Wang is reasonably pertinent to inserts with an outer layer of
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aluminum and an inner layer of closed cell foam. Wang uses two materials,
one of which may be aluminum, among other possible materials, to form a
component of a hat.
Appellant argues that because Wang teaches aluminum film, that it
does not teach anything which would protect the wearer's head. Appeal Br.
27-28. This argument is not persuasive because it does not address the
rejection made by the Examiner. The Examiner suggested only taking the
material (aluminum) as taught by Wang and using it to make the rigid outer
layer of Norton. The Examiner did not suggest that the material taken from
Wang be in the form of a film, only that it be aluminum. Non-Final Act. 28-
29 ("obvious ... to have modified the material of [the] ... exterior layer in
the insert [of Norton] to be aluminum as taught by Wang.").
Appellant also argues that "there would be no motivation to combine
the lining (12) of Wang with the insert (30) of the reference Norton."
Appeal Br. 28. Appellant says that such a combination "would result in a
bizarre situation where the rigid plastic protective panel (31) [of Norton]
would be replaced by the lining (12) of Wang." Id. This argument is not
persuasive because, as noted above, the Examiner does not suggest using the
lining of Wang, but only Wang's suggestion to use aluminum. Thus, the
Examiner finds Wang suggests making the rigid protective panel out of
aluminum instead of plastic. An argument, such as Appellant's, which does
not address the combination proposed in rejecting a claim is not persuasive.
See Keller, 642 F .2d at 426; Merck & Co., 800 F .2d at 1097.
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Rejection 12. Claims 45 and 47 unpatentable over Lampe, Picotte,
and Norton.
Claim 45 depends from claim 43 and includes limitations of removing
the first set of inserts (which are based on a first activity) from the soft
helmet and providing a second set of inserts including at least one arcuate
rectangular insert and one arcuate triangular insert based on a second
activity. Appeal Br. 39 (Claims App.). Appellant argues that the
Specification describes different inserts for different activities, including one
with a thick puncture resistant outer layers for use during rock-climbing and
another with thick impact energy absorbing layers for motorcycle riding. Id.
at 30-31.
The Examiner finds that "Norton's [Figure] 3 teaches each insert can
be remov[ ed] and then insert a second insert [sic] during a second
activ[ity]." Non-Final Act. 29. The Examiner's Answer states, "Norton
references, in Fig.3 and Col. I, Lines 35-36, Col.3, Lines 35-38, states that
each segment/insert can be replaced and then insert another
segment/insert/set or user can be worn [sic] the garment without any of
segments/inserts." Ans. 7. Responding, "Appellant submits that the
reference Norton is utterly silent regarding using a soft helmet with a first set
of inserts based on a first activity and then replacing the first set of inserts
with a second set of inserts based on a second activity." Reply Br. 5.
We view the "based on a first activity" and "based on a second
activity" limitations as akin to "intended use" limitations which require a
difference in structure to lend patentability. See In re Schreiber, 128 F.3d
14 73 (Fed. Cir. 1997). The claim steps of providing a first set of inserts and
providing a second set of inserts are indistinguishable from each other
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except to the extent the inserts of the first and second sets might differ from
one another, being "based on" different activities. However, the claim
limitations define no structural differences between the inserts for the
respective activities, and we are instructed not to import limitations from the
specification into the claims. See SuperGuide Corp. v. DirecTV Enterprises,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) ("Though understanding the claim
language may be aided by the explanations contained in the written
description, it is important not to import into a claim limitations that are not
a part of the claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim language is
broader than the embodiment."). Therefore, while we recognize that
different activities might call for the design and construction of different
inserts, differences between inserts and their associated activities are not
claimed. Even were we to extrapolate from "based on," we would have no
basis to arrive at a structural distinction between inserts based on one
activity and inserts based on another activity.
As discussed above, Lampe discloses providing an insert based on an
activity. Lampe, Abstract. Norton discloses that protective headwear is
known for a variety of different sports, identifying, for example, baseball,
football and hockey. Norton 1:14--17. Norton also discloses removable
inserts (id. at 1 :35-36) and wearing his cap without any inserts at all. Id. at
3:35-38. Thus, both Lampe and Norton disclose protective headwear with
removable inserts each configured for different activities. Inasmuch as the
first activity and second activity are indistinguishable from each other as
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claimed2 and, likewise, the claimed first and second providing steps are
indistinguishable from each other because there is no claimed distinction
between the first set of inserts and the second set of inserts, we find no error
in the rejection of claim 45 based on Norton's disclosure of providing an
insert based on an activity and which may be removed and/or replaced.
Claim 47 depends from claim 43. Appellant makes no separate
argument in connection with claim 47 (see Appeal Br. 8-33), and we affirm
the rejection of claim 47 for the same reasons we affirm the rejection of
claim 43.
Rejection 13. Claim 46 unpatentable over Lampe, Picotte, Norton,
and Ferrara.
Claim 46 depends from claims 43 and 45. Appellant makes no
separate argument in connection with claim 46 (see Appeal Br. 8-33), and
we affirm the rejection of claim 46 for the same reason we affirm the
rejections of claims 43 and 45.
DECISION
The Examiner's rejections of claims 1, 5-20, 23-29, 31-33, 38, and
41--4 7 are affirmed.
2 For example, the first activity and the second activity could be the first and
second halves of a football game.
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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)(l )(iv).
AFFIRMED
25