Ex Parte Welchel et al

Patent Trial and Appeal Board

Feb 25, 2016

12075110 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/075,110 03/07/2008
45736 7590 02/29/2016
Christopher M. Goff (27839)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
FIRST NAMED INVENTOR
DebraN. Welchel
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.
27839-3727
(64382689US01)
CONFIRMATION NO.
1637
EXAMINER
LOUIS,LATOYAM
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
02/29/2016 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):
uspatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEBRA N. WELCHEL, ERIC C. STEINDORF,
SHAWN R. FEASTER and THERESA MICHELLE MCCOY
Appeal2014--003557
Application 12/075, 110 1
Technology Center 3700
Before MICHELLE R. OSINSKI, THOMAS F. SMEGAL, and
LEE L. STEPINA, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Debra N. Welchel et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner's Final Rejection under 35 U.S.C. § 103(a) of claims
1, 17, and 21 as unpatentable over Klinger (US 3,154,073, iss. Oct. 27,
1964) and (JP 53-153700, pub. Dec. 2, 1978) (hereinafter "JP '700"); of
claims 2, 7, 8, 22, and 23 as unpatentable over Klinger, JP '700, and Bryant
(US 6,070,579, iss. June 6, 2000); of claims 3, 4, and 26 over Klinger, JP
'700, and Eaton (US 2006/0225740 Al, pub. Oct. 12, 2006); of claims 5 and
6 as unpatentable over Klinger, JP '700, Eaton, and Stenzler (US
1 According to Appellants, the real party in interest is Kimberly-Clark
Worldwide, Inc. Br. 1.
Appeal2014--003557
Application 12/075, 110
2004/0084048 Al, pub. May 6, 2004); of claims 9, 18, and 19 over Klinger,
JP '700, and Amarasinghe (US 2004/0065328 Al, pub. Apr. 8, 2004); of
claim 20 as unpatentable over Klinger, JP '700, Amarasinghe, and Bryant;
of claim 25 as unpatentable over Klinger, JP '700, and Tirotta (US
5,431,158, iss. July 11, 1995); claims 28 and 29 as unpatentable over
Klinger, JP '700, Eaton, and Bryant, and of claim 1 as provisionally rejected
on the ground of nonstatutory obviousness-type double patenting over
claims 1 and 26 of copending Application No. 11/840,031. 2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1, 1 7, and 26 are independent claims. Claim 1 is reproduced
below and illustrates the claimed subject matter, with disputed limitations
emphasized.
1. A respirator adapted to be placed on the head of a user,
the respirator comprising:
a main body adapted to cover the mouth and nose of a
user of the respirator, the main body having a first side of the
main body and a second opposing side of the main body;
a first pull-strap fastening component and a second pull-
strap fastening component, the first pull-strap fastening
component being attached with the first side of the main body
and the second pull-strap fastening component being attached
with the second side of the main body;
the first pull-strap and the second pull-strap fastening
components independently comprise a first slot and a second
slot, the second slot being located laterally closer to the user's
ear than the first slot; and
a strap connected to the first pull-strap fastening
component and the second pull-strap fastening component,
2 Claims 10-16, 24, and 27 have been canceled. Br. 3.
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wherein the second pull-strap fastening component comprises
an adjustment means that can be adjusted to fit the respirator to
the user's head and the strap is adapted to encircle the user's
head by being adjustably looped through the first pull-strap
fastening component between ends of the strap and configured
to extend back around the user's head to the second pull-strap
fastening component where both ends of the strap are
adjustably threaded through the second pull-strap fastening
component.
ANALYSIS
First Ground of Rejection: Obviousness of Claims 1, 17, and 21 over
Klinger and JP '700
Appellants argue claims 1, 17, and 21 as a group. See Br. 5-18. We
select independent claim 1 as the representative claim for this group such
that the remaining claims stand or fall with claim 1. See 3 7 C.F .R.
§ 41.3 7 ( c )( 1 )(iv). We have considered Appellants' arguments raised in the
i\.ppeal Brief, but do not find them persuasive.
The Examiner finds that Klinger, inter alia, discloses a respirator with
a main body to which is attached first and second pull-strap fastening
components both having first and second slots. Final Act. 2-3. Klinger also
discloses a strap adjustably threaded through the first pull-strap fastening
component so that the ends of the strap extend around the users head to the
second fastening component, "but [Klinger] does not specifically disclose
that both ends are adjustably threaded through the first and second slots of
the second pull [ -] strap fastening component." Id. at 3.
The Examiner then looks to JP '700 for teaching that
strap (3) is adapted to encircle a user's head by being looped
through a first pull strap fastening component ( 1) between ends
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Application 12/075, 110
Id.
Id.
of the strap and configured to extend back around the head to
the second pull strap fastening component ( 6) where both ends
(4, 5) are adjustable threaded through both slots of the second
pull strap fastening component ( 6).
Based on the foregoing, the Examiner reasons that
[i]t would have been obvious ... to modify the strap
arrangement of Klinger with different strap arrangements
including allowing the strap to extend back around a user's
head and threading both ends through both slots of the second
pull strap fastening component as taught by JP '700 since such
an arrangement is well within an artisan's skill and would allow
for more sophisticated strap arrangements less likely to become
accidently disengaged.
Appellants first contend that "the respirator of Klinger does not have a
strap wherein both ends of the strap are adjustably threaded through [a]
second pull-strap fastening component as recited in claim I." Br. 12.
Ho\~1ever, as pointed out sitpra, the Examiner looks to JP '700 for teaching a
fastening component ( 6) having both ends of the strap adjustably threaded
through it. See Final Act. 3.
Appellants next contend that "adjustment ring 6, which is the only
element of JP '700 that both ends 4, 5 extend through and selectively
slidably engage, is not part of either the first or second fastening component
[of JP '700]." Br. 13. Appellants conclude that
[s]ince Klinger and JP '700 fail individually to teach or suggest
a respirator having a strap connected to first and second pull-
strap fastening components wherein both ends of the strap are
adjustably threaded through the second pull-strap fastening
component as recited in claim 1, a combination of these
references likewise fails to teach or suggest this feature.
Br. 13-14
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Regarding feeding both strap ends through a single fastening
component, we agree with the Examiner that "since Klinger teaches in figs.
1 and 2 that the fastening component 9 is located on one side of the
respirator and JP '700 teaches feeding both ends of the strap through a
fastening component 6," that "upon seeing the strap arrangement of JP '700
one of ordinary skill in the art would be able to modify the strap
arrangement of Klinger by extending both ends of the strap 3 through a
single fastening component of Klinger as taught by JP '700 with the
advantage of enhanced friction and more efficient strap adjustment." Ans.
12. "[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
Appellants also contend that since "[ n ]either Klinger nor JP '700
teach or even suggest feeding both ends of the strap through an opening in a
fastening component attached to one side of the respirator/goggles," that
"the Office is using impermissible hindsight in its current rejection of claim
1." Br. 14--15. Furthermore, Appellants assert that "[a]t best, one of
ordinary skill in the art would use both the strap and the adjustment ring of
JP '700 with the respirator of Klinger and such an embodiment would not
render claim 1 of the present application obvious." Id. at 15.
We do not agree that the Examiner's rejection is improper or based on
impermissible hindsight as it does not include knowledge gleaned only from
the Appellants' disclosure, but rather takes into account the teachings of
Klinger and JP '700, i.e., knowledge which was within the level of ordinary
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skill at the time the claimed invention was made. See In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971). See also Radix Corp. v. Samuels, 13
USPQ2d 1689, 1693 (DDC 1989) (Any obviousness inquiry necessarily
involves some hindsight.). Again see Ans. 12-13.
Accordingly, Appellants have not apprised us of any error in the
Examiner's findings or conclusions, and we find none. The Examiner has
articulated a reason having rational underpinnings for making the proposed
combination of prior art teachings, and we are not persuaded that the
combination is based on impermissible hindsight, rather than the Examiner's
articulated reason.
For the foregoing reasons, we sustain the Examiner's rejection of
claims 1, 17, and 21 over Klinger and JP '700.
Second Ground of Rejection: Obviousness of Claims 2, 7, 8, 22, and
23 over Klinger, JP '700, and Bryant
Claims 2, 7, and 8
Appellants assert that "[ c ]laims 2, 7, and 8 are patentable for at least
the same reasons as claim 1 based on their dependency therefrom" and that
"Bryant fails to cure the deficiencies of Klinger and JP '700 with respect to
claim 1, nor is Bryant relied on by the Office to do so." Br. 18.
We are not persuaded of any deficiencies in the combination of
Klinger and JP '700 with respect to independent claim 1. Thus, we sustain
the Examiner's rejection of dependent claims 2, 7, and 8 as being
unpatentable for the same reasons stated above in sustaining the rejection of
independent claim 1 over Klinger and JP '700.
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Claims 22 and 23
Appellants assert that "[ c ]laims 22 and 23 are patentable for at least
the same reasons as claim 1 7 based on their dependency therefrom" and that
"Bryant fails to cure the deficiencies of Klinger and JP '700 with respect to
claim 1 7, nor is Bryant relied on by the Office to do so." Br. 18-19.
We are not persuaded of any deficiencies in the combination of
Klinger and JP '700 with respect to independent claim 17. Thus, we sustain
the Examiner's rejection of dependent claims 22 and 23 as being
unpatentable for the same reasons stated above in sustaining the rejection of
independent claim 17 over Klinger and JP '700.
Third Ground of Rejection: Obviousness of Claims 3, 4, and 26 over
Klinger, JP '700, and Eaton
Claims 3 and 4
Appellants assert that "[ c ]laims 3 and 4 are patentable for at least the
same reasons as claim 1 based on their dependency therefrom" and that
"Eaton fails to cure the deficiencies of Klinger and JP '700 with respect to
claim 1, nor is Eaton relied on by the Office to do so." Br. 19.
We are not persuaded of any deficiencies in the combination of
Klinger and JP '700 with respect to independent claim 1. Thus, we sustain
the Examiner's rejection of dependent claims 3 and 4 as being unpatentable
for the same reasons stated above in sustaining the rejection of independent
claim 1 over Klinger and JP '700.
Claim 26
As with claim 1, the Examiner finds that Klinger discloses all the
limitations of claim 26, but that Klinger "does not specifically disclose that
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Application 12/075, 110
both ends [of strap (7)] are adjustably threaded through the first and second
slots of the second pull-strap fastening component." Final Act. 9-10.
However the Examiner again looks to JP '700 for teaching that
strap (3) is adapted to encircle a user's head by being looped
through a first pull strap fastening component ( 1) between ends
of the strap and configured to extend back around the head to
the second pull strap fastening component ( 6) where both ends
( 4, 5) are adjustable threaded through both slots of the second
pull strap fastening component ( 6).
Id. at 10.
Id.
As with claim 1, the Examiner also reasons that
[i]t would have been obvious ... to modify the strap
arrangement of Klinger with different strap arrangements
including allowing the strap to extend back around a user's
head and threading both ends through both slots of the second
pull strap fastening component as taught by JP '700 since such
an arrangement is well within an artisan's skill and would allow
for more sophisticated strap arrangements less likely to become
accidently disengaged.
While presenting no arguments that we have not already considered in
sustaining the rejection of claim 1, Appellants assert that "Eaton fails to cure
these deficiencies of Klinger and JP '700 nor is Eaton relied on by the Office
to do so." Br. 23.
We are not persuaded of any deficiencies in the combination of
Klinger and JP '700 with respect to independent claim 1. Thus, we sustain
the Examiner's rejection of independent claim 26 as being unpatentable for
the same reasons stated above in sustaining the rejection of independent
claim 1 over Klinger and JP '700.
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Fourth Ground of Rejection: Obviousness of Claims 5 and 6 over
Klinger, JP '700, Eaton and Stenzler
Appellants assert that "[ c ]laims 5 and 6 are patentable for at least the
same reasons as claim 1 based on their dependency therefrom" and that
"Stenzler fails to cure the deficiencies of Klinger[, Eaton,]and JP '700 with
respect to claim 1, nor is Stenzler relied on by the Office to do so." Br. 19.
We are not persuaded of any deficiencies in the combination of
"Klinger[, Eaton,] and JP '700" with respect to independent claim 1. Thus,
we sustain the Examiner's rejection of dependent claims 5 and 6 as being
unpatentable for the same reasons stated above in sustaining the rejection of
independent claim 1 over Klinger and JP '700.
Fifth Ground of Rejection: Obviousness of Claims 9, 18, and 19 over
Klinger, JP '700, and Amarasinghe
Claim 9
Appellants assert that "[ c ]laim 9 is patentable for at least the same
reasons as claim 1 based on their dependency therefrom" and that
"Amarasinghe fails to cure the deficiencies of Klinger and JP '700 with
respect to claim 1, nor is Amarasinghe relied on by the Office to do so." Br.
20.
We are not persuaded of any deficiencies in the combination of
Klinger and JP '700 with respect to independent claim 1. Thus, we sustain
the Examiner's rejection of dependent claim 9 as being unpatentable for the
same reasons stated above in sustaining the rejection of independent claim 1
over Klinger and JP '700.
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Claims 18 and 19
Appellants assert that "[ c ]laims 18 and 19 are patentable for at least
the same reasons as claim 1 7 based on their dependency therefrom" and that
"Amarasinghe fails to cure the deficiencies of Klinger and JP '700 with
respect to claim 17, nor is Amarasinghe relied on by the Office to do so."
Br. 20.
We are not persuaded of any deficiencies in the combination of
Klinger and JP '700 with respect to independent claim 1. Thus, we sustain
the Examiner's rejection of dependent claim 9 as being unpatentable for the
same reasons stated above in sustaining the rejection of independent claim 1
over Klinger and JP '700.
Sixth Ground of Rejection: Obviousness of Claim 20 over Klinger, JP
'700, Amarasinghe, and Bryant
Appellants assert that "[ c ]laim 20 is patentable for at least the same
reasons as claim 1 7 based on their dependency therefrom" and that
"Amarasinghe and Bryant fail to cure the deficiencies of Klinger and JP
'700 with respect to claim 17, nor are Amarasinghe and Bryant relied on by
the Office to do so." Br. 21.
We are not persuaded of any deficiencies in the combination of
Klinger and JP '700 with respect to independent claim 17. Thus, we sustain
the Examiner's rejection of dependent claim 20 as being unpatentable for the
same reasons stated above in sustaining the rejection of independent claim
17 over Klinger and JP '700.
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Seventh Ground of Rejection: Obviousness of Claim 25 over Klinger,
JP '700, and Tirotta
Appellants assert that "[ c ]laim 25 is patentable for at least the same
reasons as claim 17 based on their dependency therefrom" and that "Tirotta
fails to cure the deficiencies of Klinger and JP '700 with respect to claim 17,
nor is Tirotta relied on by the Office to do so." Br. 21.
We are not persuaded of any deficiencies in the combination of
Klinger and JP '700 with respect to independent claim 17. Thus, we sustain
the Examiner's rejection of dependent claim 25 as being unpatentable for the
same reasons stated above in sustaining the rejection of independent claim
17 over Klinger and JP '700.
Eighth Ground of Rejection: Obviousness of Claims 28 and 29 over
Klinger, JP '700, Eaton, and Bryant
Appellants assert that "[ c ]laims 28 and 29 are patentable for at least
the same reasons as claim 26 based on their dependency therefrom" and that
"Bryant fails to cure the deficiencies of Klinger, JP '700 and [Eaton] with
respect to claim 26, nor is Bryant relied on by the Office to do so." Br. 23.
We are not persuaded of any deficiencies in the combination of
Klinger and JP '700 with respect to independent claim 26. Thus, we sustain
the Examiner's rejection of dependent claims 28 and 29 as being
unpatentable for the same reasons stated above in sustaining the rejection of
independent claim 26 over Klinger, JP '700, and Eaton.
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Ninth Ground of Rejection: Nonstatutory double patenting rejection of
claim 1
Appellants do not present arguments directed to the Examiner's
nonstatutory double patenting rejection of claim 1 as unpatentable over
claims 1 and 26 of copending Application No. 11/840,031. See generally
Br. 11-23. However, we do not reach the merits of the Examiner's
provisional double patenting rejection because it would be premature to do
so at this time, consistent with the holding of Ex Parte Moncla, 95 USPQ2d
1884, 1885 (BPAI 2010) (precedential).
DECISION
We SUSTAIN the Examiner's rejections under 35 U.S.C. § 103(a).
We do not reach the Examiner's provisional rejection based on non-
statutory double patenting over U.S. Patent Application No. 11/180,031.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv) (2012).
AFFIRMED
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