Ex Parte Udelhofen et al

Patent Trial and Appeal Board

Aug 21, 2013

11010256 (P.T.A.B. Aug. 21, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/010,256 12/13/2004 Patrick Udelhofen WT0130 5237
7590 08/21/2013
Wilson Sporting Goods Co.
8750 W. Bryn Mawr Ave.
Chicago, IL 60631
EXAMINER
SUTTON, ANDREWW
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
08/21/2013 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 PATRICK UDELHOFEN and DOUGLAS G. GUENTHER
____________

Appeal 2011-008876
Application 11/010,256
Technology Center 3700
____________

Before ANNETTE R. REIMERS, MITCHELL G. WEATHERLY and
CARL M. DeFRANCO, Administrative Patent Judges.

DeFRANCO, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants, Patrick Udelhofen and Douglas G. Guenther, appeal under
35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-10, 12-22
and 24-26. App. Br. 3. Claims 11, 23, 27 and 28 have been cancelled. Id.
at 23 and 26. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
THE CLAIMED INVENTION
The claimed invention relates to “a sports helmet having a slotted
padding assembly for receiving the user’s ears thereby facilitating placement
and removal of the helmet onto, and from, the user’s head.” Spec. [0001].
Claims 1 and 15 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A batting helmet configured for protecting a
batter’s head, the helmet comprising:

a one-piece, integral shell including a dome-like crown,
a continuous side wall and a bill outwardly projecting from and
non-removably fixed to the front of the shell, the continuous
side wall including a rear region and at least one side panel
sized and configured to substantially cover at least one of the
batter’s ears, the shell and the side panel having an inner
surface; and

a pad assembly coupled to the inner surface, and
including at least one pad sub-assembly extending over at least
a portion of the inner surface of the side panel, the pad sub
assembly including a slot upwardly extending from a lower
edge of the pad subassembly, the pad sub-assembly defining at
least part of an ear receiving space, the slot sized to receive the
batter’s ear and to facilitate the placement and removal of the
helmet onto, and from, the batter’s head, the slot having a first
width measured from front to back of the helmet and the ear
receiving space having a second width measured from front to
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back of the helmet, the second width being greater than the first
width.

App. Br. 22, Claims App’x (emphasis added).
THE REJECTIONS ON APPEAL
Appellants seek review of the following rejections by the Examiner:
1) the final rejection of claims 1-8, 10, 12-21 and 24-26 under 35
U.S.C. § 103(a) as being unpatentable over Mattson (US 4,477,929, iss. Oct.
23, 1984) and Hall (US 5,571,220, iss. Nov. 5, 1996); and
2) the final rejection of claims 9 and 22 under 35 U.S.C. § 103(a) as
being unpatentable over Mattson and Hall.
ANALYSIS
Appellants argue independent claims 1 and 15 together, relying on the
same arguments for both claims. App. Br. 9-19; Reply Br. passim. We
select claim 1 for review with claim 15 standing or falling with claim 1.
Appellants do not separately argue dependent claims 2-8, 10, 12-14, 16-21
and 24-26 (see App. Br. 19), so they will stand or fall with their respective
parent claims 1 and 15. For dependent claims 9 and 22, Appellants rely on
the “same reasons” for patentability as argued for parent claims 1 and 15.
See App. Br. 19. As such, claims 9 and 22 will stand or fall with their
respective parent claim.
The Examiner found that Mattson teaches all the limitations of claim
1, except for “the use of a[n] outwardly fixed bill that is non-removable.”
Ans. 5. For that limitation, the Examiner relied on the common knowledge
in the art, finding that Hall evinces “a helmet including a shell 11 with an
outwardly projecting bill 13.” Id. The Examiner concluded that a skilled
artisan would have deemed it obvious to modify Mattson’s protective sports
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helmet with an outwardly projecting bill “to provide sun protection to the
wearer” as evidenced by Hall. Id.
Appellants argue several points in disputing the Examiner’s
determination of obviousness. App. Br. 10-19; Reply Br. 4-7. First,
Appellants argue that Mattson does not teach ear slots that receive the user’s
ears and facilitate the helmet being placed on and removed from the user’s
head. App. Br. 10; Reply Br. 4-6. According to Appellants, Mattson shows
that one of the pads 6 extends along the lower edge of the helmet’s ear
receiving portion and thus “the opening formed by the space between the
two pads 6 is positioned [directly] in front of the user’s ear” when the helmet
is worn by the user. App. Br. 11; see also id. at 12-14 and Reply Br. 5.
Appellants go on to state that Mattson’s ear slot is “actually horizontal and
not upward.” App. Br. 14; Reply Br. 4.
The Examiner responded that the opening formed by the space
between the two pads 6 on either side of Mattson’s vent openings 3 satisfies
the limitation of the “upwardly extending” ear slot called for by the claims.
Ans. 4, 7-8. Appellants, however, accuse the Examiner of using an incorrect
“vantage point . . . to improperly orientate the direction” of the slot shown
between the pads 6 of Mattson’s drawings. App. Br. 14; see also id. at 11.
We disagree.
Appellants misapprehend the Examiner’s finding as to the opening (or
slot) of Mattson that meets the language of the claim. While Appellants are
correct that a portion of the slot between the two pads 6 of Mattson extends
in front of the user’s ear, the Examiner did not rely solely on that portion to
satisfy the “slot” limitation of the claims; rather, the Examiner also relied on
the portion of the slot between the two pads 6 that extends vertically upward
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and over the ear vent 3. Ans. 4, 7-8. As Mattson’s figures 2 and 4 clearly
depict, the slot between the pads extends not only “forwardly” as Appellants
repeatedly note, but also upwardly from the lower edge of the pad assembly
(i.e., the v-shape) along the vent openings 3 as the Examiner expressly
found. A preponderance of the evidence, namely, figures 2 and 4 of
Mattson, supports the Examiner’s position. While the slot may extend
forwardly, it also extends upwardly. A reasonable interpretation of the
claimed “slot” does not exclude a slot that extends both forwardly and
upwardly. As such, we are not persuaded by Appellants’ arguments
regarding the orientation of Mattson’s slot, as it clearly extends “upwardly”
from a lower edge of the pad assembly and thus meets the claim language.
Appellants’ mention in passing (i.e., without any substantive analysis)
that Mattson’s slot is “not positioned beneath the user’s ear when the helmet
is placed on the user’s head.” App. Br. 15. We note that this argument is
only pertinent to claim 15, as claim 1 does not define the slot’s position
relative to the ear. But Appellants do not argue that limitation separately
from the limitations of claim 1, and thus, Appellants’ reference to that
limitation without any further analysis is inapposite. In any event, the term
“beneath the user’s ear” is a relative term that describes a location on the
head that will vary from user to user based on the size of the user’s head and
the size of the user’s ear. In other words, the extent to which Mattson’s slot
is positioned beneath the user’s ear depends not only on the size of the user’s
ear, but on the size of the user’s head and whether the helmet sits high or
low on the user’s head. Thus, Mattson’s helmet does not exclude the slot
from being positioned beneath the ear where the helmet sits lower rather
than higher on the user’s head. As such, we are not persuaded by
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Appellant’s conclusory statements to the contrary. See App. Br. 15; Reply
Br. 5.
Appellants also contend that Mattson’s slot does not facilitate placing
the helmet on and removing the helmet from the batter’s head as called for
by the claims. App. Br. 14-15: Reply Br. 5-6. The Examiner, however,
found that Mattson’s slot is “sized to receive the user’s ear” and that nothing
within the structure of Mattson’s pads precludes the slot from facilitating
placement and removal of the helmet. Ans. 4. Indeed, the Examiner
explained that Mattson’s helmet is “capable of being rotated and adjusted
when being placed onto a user’s head so as to permit the wearer’s ears to
pass through and into the ear receiving cavity.” Id. at 8. We are not
convinced of error in this finding. Sports players routinely rotate helmets
about their forehead when putting them on and taking them off. A
reasonable view of Mattson’s slot, as shown in Figures 2 and 4 and found by
the Examiner, is that at least a portion of the ear would pass through the
opening as the player rotates the helmet about the forehead when putting it
on or taking it off. As such, a preponderance of the evidence supports the
Examiner’s position that Mattson’s ear slot facilitates placement and
removal of the helmet.
Appellants next argue that Mattson does not teach a helmet
constructed of a one-piece, integral shell as called for by claim 1 and 15.
App. Br. 16; Reply Br. 6-7. Rather, according to Appellants, “Mattson
discloses a hockey helmet having two separate and distinct piece parts that
are hinged together.” App. Br. 16. We disagree. As the Examiner correctly
found, Mattson’s helmet is “constructed from a one-piece shell.” Ans. 4
(citing col. 2, ll. 35-36). Mattson buttresses the Examiner’s finding by
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disclosing that “[t]he helmet is suitably formed in one piece, with the hinge
means between the front and back parts of the helmet being formed in the
outer plastics layer.” See Mattson, col. 2, ll. 35-38; see also Fig. 7 and col.
2, ll. 58-60 (“The hinge means 14 has the form of a weakening in the outer
plastics layer of the helmet.”).
Appellants proffer no persuasive reason or reliable evidence that
Mattson’s helmet is not formed as a single, integral shell as claimed.
Instead, Appellants annotate Mattson’s Figure 7 with an unsupported
characterization that the figure depicts an “[o]pen space” between the
forward and back parts 1, 2. See App. Br. 16-17. Mattson, however,
discloses no such open space; to the contrary, it clearly describes the
helmet’s construction as “one-piece” with “front and back integral parts”
joined together by “a substantially horizontal integral hinge means.”
Mattson, col. 4, ll. 55-66 (emphasis added). As such, the preponderance of
the evidence clearly supports the Examiner’s determination that Mattson
satisfies the “one-piece, integral shell” limitation of claims 1 and 15.
Lastly, Appellants argue that Mattson does not teach “a shell having a
bill” that projects outwardly and is non-removable as called for by claim 1.
App. Br. 17-19. The Examiner, however, did not rely on Mattson for the
teaching of a bill, but on the common knowledge of the skilled artisan, as
evidenced by Hall, that it would be obvious to modify the front of Mattson’s
helmet to include an outwardly extending bill for protecting against sun
glare. Ans. 8 (“it is commonly known in the art to place a bill on a
protective helmet as clearly taught by Hall”); see also id. at 5 (“to provide
sun protection to the wearer”).
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Appellants respond that Mattson as modified by Hall “would create a
safety hazard for the hockey player and his opponents” and conjecture about
the risks of putting a bill on a hockey helmet. App. Br. 18; see also Reply
Br. 7. Appellants’ argument fails for two reasons, first, it amounts to
unsupported attorney argument, but more importantly, it does not address
the Examiner’s articulated rationale. The Examiner expressly found that
“the protective helmet [of Mattson] may be worn by a hockey or lacrosse
player but is fully capable of being worn by a baseball player.” Ans. 4
(emphasis added). Appellants never contest this finding.1 Thus, Appellants
contention as it relates to the use of Mattson’s helmet in the context of
playing hockey is inapplicable to the Examiner’s uncontested finding that
Mattson’s helmet could be used for playing baseball. Because Appellants
neither address the Examiner’s actual findings and conclusions with respect
to the use of Mattson’s helmet for playing baseball nor otherwise apprise us
of error in the Examiner’s prima facie case, we are not persuaded by
Appellants’ argument that the modified Mattson helmet does not meet the
limitation of an outwardly extending “bill” as recited by claim 1.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1 and 15 as being unpatentable over Mattson and the common
knowledge in the art as evidenced by Hall. Also, because Appellants do not
dispute the Examiner’s explicit findings, or provide separate arguments for
patentability, with respect to dependent claims 2-10, 12-14, 16-22 and 24-26

1 Indeed, Appellants’ own Specification recognizes the adaptability of
protective helmets for different sports, including hockey, lacrosse and
baseball. Spec. [0016]
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(see App. Br. 19), we sustain the Examiner’s rejection of those claims as
well.
DECISION
We affirm the Examiner’s decision rejecting claims 1-10, 12-22 and
24-26.
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).
AFFIRMED

rvb