Ex Parte Tai et al

Patent Trial and Appeal Board

Feb 27, 2017

12634535 (P.T.A.B. Feb. 27, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/634,535 12/09/2009 Jung-Chi Tai 73570.0002 (830002.US0) 7709
26582 7590 03/01/2017
HOLLAND & HART, LLP
222 South Main Street, Suite 2200
P.O. Box 11583
SALT LAKE CITY, UT 84147
EXAMINER
YOUNG, RACHEL T
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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 @ hollandhart. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNG-CHI TAI, HO-HSI YANG,
CHIEN-HSIANG LIN, and CHIEN-CHUNG SU
Appeal 2015-001402
Application 12/634,535
Technology Center 3700
Before: SUSAN L. C. MITCHELL, GEORGE R. HOSKINS, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 11—15. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
Appeal 2015-001402
Application 12/634,535
CLAIMED SUBJECT MATTER
The claims are directed to a face mask and method for making the
same. Claims 1—15 are pending, but Appellants present arguments only for
claims 11—15.1 See Br. 2 (stating “The rejection of claims 11—15 is being
appealed.”). Claim 11, reproduced below, is illustrative of the claimed
subject matter:
11. A method for making face masks, comprising:
advancing continuously a longitudinal sheet stock that
includes a plurality of mask sheets displaced from each other in
a longitudinal direction and connected by a plurality of
predetermined cutting lines, each of the mask sheets having two
opposite lateral regions, a leading marginal region that has two
opposite attachment areas disposed respectively at the lateral
regions, and a trailing marginal region that has two opposite
attachment areas disposed respectively at the lateral regions, and
that is connected to the leading marginal region of a next one of
the mask sheets through a corresponding one of the
predetermined cutting lines;
providing a plurality of strips each of which has two
attachment ends and each of which is folded in a lengthwise
direction;
superposing each of the folded strips on a corresponding
one of the leading and trailing marginal regions;
bonding the two attachment ends of each of the folded
strips respectively to the two opposite attachment areas of the
corresponding one of the leading and trailing marginal regions;
and
cutting the sheet stock along the predetermined cutting
lines.
1 Although Appellants state that claims 1—10 were cancelled during
prosecution (Br. 2), the Advisory Action dated December 11, 2013, indicates
that the Amendment (filed on December 4, 2013) canceling these claims was
not entered. See Adv. Act. 1—2. Accordingly, the pending claims are those
presented in the Amendment filed on March 20, 2013 (herein “Entered
Amendment”), which are claims 1—15. Thus, claims 1—10 are still pending.
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Appeal 2015-001402
Application 12/634,535
Appeal Br. 10 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Zobel
Dickert
Hubbard
Lin
Rummery
US 4,014,047
US 4,498,620
US 4,606,341
US 2008/0035153 A1
US 2010/0307502 A1
Mar. 29, 1977
Feb. 12, 1985
Aug. 19, 1986
Feb. 14, 2008
Dec. 9, 2010
Tai (Appellants’ Admitted Prior Art, Figures 1 and 2 of Appellants’
Application).2
REJECTIONS
(I) Claims 1—3, 8, 9, 11, and 12 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Tai and Dickert.
(II) Claims 4 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tai, Dickert, and Zobel.
(III) Claims 5, 10, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tai, Dickert, and Lin.
(IV) Claims 6 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tai, Dickert, and Hubbard.
(V) Claim 7 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Tai, Dickert, and Rummery.
OPINION
Rejection (I)
2 Appellants and the Examiner refer to this prior art as “Tai,” and we
maintain this terminology for clarity.
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Appeal 2015-001402
Application 12/634,535
Claims 1—3, 8, and 9
Claims 1 and 9 are independent, and claims 2, 3, and 8 depend from
claim 1. Entered Amendment 4—5. As Appellants present no arguments for
the patentability of claims 1—3, 8, and 9, the rejection of these claims as
unpatentable over Tai and Dickert is affirmed. See Br. 2 (stating “the
rejection of claims 11—15 is being appealed”).
Claims 11 and 12
The Examiner finds that Tai discloses most of the features recited in
claim 11, including providing a plurality of strips, but does not disclose that
each of the strips “is folded in a lengthwise direction and bonding the two
attachment ends of each of the folded strips respectively to the two opposite
attachment areas of the corresponding one of the leading and trailing
marginal regions.” Final Act. 4—5. However, the Examiner finds that
Dickert discloses a handle strip that is pleated and that has two ends
adhesively bonded to a flat surface. Final Act. 5 (citing Dickert, 2:8—15,
Fig. 3). The Examiner reasons that it would have been obvious to modify
the strips taught by Tai to include “a pleat and tape” as disclosed by Dickert
to create “a lower overall mask profile providing an alternative strip having
a predictable result.” Final Act. 5.
Appellants assert that the rationale relied upon by the Examiner for
the proposed combination of Tai and Dickert is inadequate. See, e.g., Br. 6.
Specifically, Appellants contend that “a person having ordinary skill in the
art at the time of invention would not have found it obvious to pleat [Tai’s]
easily deformed elastic band or ear loop (92).” Br. 6. Additionally,
Appellants argue that as the elastic bands disclosed by Tai are easily
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Appeal 2015-001402
Application 12/634,535
deformed, it is unclear how a pleat such as the one taught by Dickert would
be added to the band in Tai. Br. 7.
In response, the Examiner finds that (i) Appellants have provided no
evidence that the elastic band taught by Tai could not be pleated, and (ii) the
band disclosed by Tai could be pleated with various techniques, including
via the use of heat. Ans. 12.
We agree with Appellants that the Examiner’s reasoning for the
proposed modification is not supported by rational underpinnings. Figure 1
of Tai depicts ear loops 92, which are “usually made of an elastic band for
fitting over one of the user’s ears.” Spec. 1:20—21. The Examiner does not
provide sufficient explanation as to why ear loops 92 of Tai, which appear to
lay flat on mask sheet 91, would benefit from receiving the pleat taught by
Dickert. Rather, as Appellants point out (see, e.g., Br. 6; Tai 2:7—10), ear
loops 92 are disclosed as being easily deformable. There is no evidence that
ear loops 92 create anything other than a low profile as they are disclosed by
Tai. Thus, the Examiner’s reasoning for the proposed modification, “for the
purpose of creating a lower overall mask profile,” relies on duplicating an
effect already provided by Tai’s existing structure. Accordingly, we reverse
the Examiner’s rejection of claims 11 and 12 as unpatentable over Tai and
Dickert.
Rejections (II V)
Claims 4—7 depend from claim 1, claim 10 depends from claim 9, and
claims 13—15 depend from claim 11. Appellants make no arguments for the
patentability of claims 4—7 and 10. See Br. 2. Accordingly, we affirm the
Examiner’s rejections of these claims.
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Appeal 2015-001402
Application 12/634,535
As to Rejections (II)—(IV) as applied to claims 13, 14, and 15,
respectively, the Examiner does not rely on any of Zobel, Lin, and Hubbard
to remedy the deficiency in Tai discussed above. See, e.g., Final Act. 6—10.
Accordingly, for the reasons discussed above regarding the rejection of
claim 11, we reverse the Examiner’s rejections of claims 13—15.
DECISION
(I) The rejection of claims 1—3, 8, 9, 11, and 12 as unpatentable
over Tai and Dickert is affirmed as to claims 1—3, 8, and 9 and reversed as to
claims 11 and 12.
(II) The rejection of claims 4 and 13 as unpatentable over Tai,
Dickert, and Zobel is affirmed as to claim 4 and reversed as to claim 13.
(III) The rejection of claims 5, 10, and 14 as unpatentable over Tai,
Dickert, and Lin is affirmed as to claims 5 and 10 and reversed as to
claim 14.
(IV) The rejection of claims 6 and 15 as unpatentable over Tai,
Dickert, and Hubbard is affirmed as to claim 6 and reversed as to claim 15.
(V) The rejection of claim 7 as unpatentable over Tai, Dickert, and
Rummery 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-IN-PART
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