Ex Parte Westgarth

Patent Trials and Appeals Board

Jun 5, 2019

14830176 - (D) (P.T.A.B. Jun. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/830,176 08/19/2015
96056 7590
Florek & Endres PLLC
1156 A venue of the Americas
Suite 600
New York, NY 10036
06/06/2019
FIRST NAMED INVENTOR
John W estgarth
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.
2098-002A 2099
EXAMINER
LYNCH, MEGAN E
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
06/06/2019 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 JOHN WESTGARTH1
Appeal2019-000442
Application 14/830,176
Technology Center 3700
Before JAMES P. CAL VE, MICHAEL L. WOODS, and
FREDERICK C. LANEY, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John Westgarth ("Appellant") appeals under 35 U.S.C. § 134 from the
Examiner's decision rejecting claims 1, 2, and 4-20. Appeal Br. 6.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM-IN-PART.
1 According to Appellant, the real party in interest is John Westgarth.
Appeal Br. 3.
Appeal2019-000442
Application 13/830,176
CLAIMED SUBJECT MATTER
Appellant's invention relates to sports goggles. Spec. 1 (Field of the
Invention). Claim 1 is the sole independent claim (Appeal Br. 13 (Claims
Appendix)) and is reproduced below, with emphases added to limitations
discussed in this Decision.
1. A sport goggle strap for holding sport goggles on the
face of a user, the sport goggle strap comprising a unitary piece
of an elastomeric material having an inside surface, an outside
surface, a first end portion, a second end portion, and an
intermediate portion between the first and second end portions,
said intermediate portion comprising an elongated opening
disposed substantially in line between the first and second end
portions, each of the first and second end portions comprising a
connection member for attaching the first and second end
portions to opposite sides of sport goggles, the connection
members comprising first and second cooperating elements that
attach to one another, wherein the connection members are on
the same surface of the inside surface or the outside surface of
the unitary piece of elastomeric material.
Id. ( emphases added).
THE REJECTIONS
The Examiner rejected:
(a) Claims 1, 2, 12, 13, 18, and 20 under 35 U.S.C. § 102(a) as
anticipated by Ambrose (US 5,813,056 issued Sept. 29, 1998).
Final Act. 2.
(b) Claims 1, 2, 4-12, and 14-17 under 35 U.S.C. § 103(a) as
unpatentable over Hahn (US 2013/0019386 Al, published Jan. 24,
2013) and Rao (US 2013/0139305 Al, published June 6, 2013).
Final Act. 5.
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Application 13/830,176
(c) Claim 19 under 35 U.S.C. § 103(a) as unpatentable over Ambrose.
FinalAct. 10.
ANALYSIS
I. Claims l, 2, 12, 13, 18, and 20 Reiected as Anticipated by Ambrose
A. Examiner's Rejection
In rejecting the claims as anticipated by Ambrose, the Examiner cites
to Ambrose's Figure 1 (see Final Act. 2-3), which we reproduce, below:
According to the Examiner, and as shown above in Figure 1, Ambrose
discloses sport goggles 22 held by sport goggle strap 20, which comprises a
unitary piece of an elastomeric material. Id. at 2 ( citing Ambrose col. 7, 11.
31-34). The Examiner further finds that the strap comprises first end
portion 38, 26 and second end portion 40, 28 with intermediate portion 34,
36 between the first and second end portions. Id. at 3.
To address the claimed "connection members comprising first and
second cooperating elements that attach to one another," the Examiner finds
that Ambrose discloses "a rivet & strap hole rivet passes through." Id. at 3
( citing Ambrose, col. 6, 11. 4-10).
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Application 13/830,176
B. Appellant's Argument
Appellant argues that the claims require each end portion to have a
connection member, and each connection member has cooperating elements
that attach to one another. See Appeal Br. 6-7. Appellant contends that
"[r]ather than attaching to each other ... [Ambrose's] strap extensions (38,
40) ... are connected directly to the pair of goggles (22)," and that
Ambrose's "goggle strap (20) do[es] not have any connection members
whatsoever that attach to each other." Id. at 7.
We agree.
C. Analysis
The issue is whether Ambrose's goggles disclose the claimed
connection members with cooperating elements that attach to one another.
To demonstrate anticipation, the Examiner must demonstrate that a
prior art reference shows every element of the claimed invention identically,
in the same relationship as in the claim. In re Bond, 910 F.2d 831, 832 (Fed.
Cir. 1990); see also Verdegaal Bros. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987) (explaining that to anticipate a claim, "each
and every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.").
In the present case, the claims do not simply require connection
members for attaching the first and second end portions to opposite sides of
the goggles, but require that "the connection members compris[ e] first and
second cooperating elements that attach to one another." Appeal Br. 13
(Claims Appendix) (emphasis added). We disagree with the Examiner's
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Application 13/830,176
finding that Ambrose discloses cooperating elements that attach to one
another.
In the Answer, the Examiner cites to Ambrose's disclosure at column
6, lines 4-10, and to its Figures 1 and 4. Ans. 3. This disclosure does not
satisfy the claim limitation, however.
For instance, Ambrose's column 6, lines 4-10, states:
Each of the ear restrainers 26, 28 also extend into a strap
extension 38, 40. The strap extensions 39, 40 can be attached
or otherwise secured to the goggles 22 by gluing, molding,
riveting, stapling, or other suitable process, or, alternatively, the
strap extensions 3 8, 40 can be threaded through the pairs of
goggle slots 42, 44 and 46, 48, respectively (the slots 42, 4, 46,
48 are best shown in FIG. 5).
Ambrose, col. 6, 11. 4-10 ( emphasis omitted, emphasis added).
The Examiner's position is that Ambrose's reference to "riveting"
meets the limitation. Such speculative findings, however, are insufficient to
establish anticipation under 35 U.S.C. § 102, which requires "each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference." Verdegaal Bros., 814 F .2d at 631.
In other words, we are not persuaded that Ambrose's mere reference to
attaching strap extensions 38, 40 "to the goggles 22" by "riveting" discloses
that each strap end has "first and second cooperating elements that attach to
one another," by rivet and hole, as opposed to the strap end having a hole
that attaches to a rivet on the goggle. If the latter, the claimed limitation
would not be satisfied.
Additionally, we do not find Ambrose's Figures 1 and 4, also cited by
the Examiner (Ans. 3), to support its finding. To illustrate this point, we
reproduce Ambrose's Figures 1, 4, and 5, below:
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Appeal2019-000442
Application 13/830,176
28
FIG 4
40
64
f~$~~
5\s
. 24
82
1 26
A-,,::::,,. ,.-:::~' 38
-~v"\_22
As can be seen in Ambrose's Figure 1 (top-left), Ambrose's Figure 4 (top-
right), and Ambrose's Figure 5 (bottom), the ends of Ambrose's strap
(extension end portions 58, 60) simply fit within slots (42, 44, 46, and 48) to
hold Ambrose's strap 20 to its goggles 22. Ambrose, col. 6, 11. 8-10, 14-19.
Nothing in these figures depicts Ambrose's "first and second end portions"
(straps) as having "first and second cooperating elements that attach to one
another," as required by independent claim 1.
For the foregoing reasons, we do not sustain the rejection of claims 1,
2, 12, 13, 18, and 20 as anticipated by Ambrose.
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Application 13/830,176
II. Claims 1. 2. 4-12. and 14-17 Reiected as Unpatentable Over Hahn
and Rao
A. Examiner's Rejection
In rejecting claims 1, 2, 4-12, and 14-17 as unpatentable over Hahn
and Rao, the Examiner references Figure 2 of Hahn (Final Act. 5), which we
reproduce, below:
........ ·· '
HG, 2
According to the Examiner, and as shown above in Hahn's Figure 2, Hahn
discloses sport goggle strap 500 with end portions 510, 520 for holding sport
goggles. Final Act. 5. The Examiner finds that Hahn's sport goggle strap
comprises, inter alia, a unitary piece of elastomeric material and
intermediate portion 530, 540 comprising an elongated opening, namely, the
opening between 530 and 540, which is "disposed substantially in line
between the first and second end portions [510, 520]." Id. (citing Hahn ,i
20).
The Examiner acknowledges, however, that "Hahn does not disclose
the connection members comprising first and second cooperating elements
that attach to one another," and relies on Rao for addressing the limitation.
Id. at 6 (citing Rao, Figs. 2, 3). We reproduce Rao's Figures 2 and 3, below:
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Appeal2019-000442
Application 13/830,176
FIG .. 2
According to the Examiner, and as shown in Rao's Figures 2 (top figure)
and 3 (bottom figure), Rao teaches a goggle strap with connection members
comprising first and second cooperating elements 32, 33 that attach to one
another. Id. ( citing Rao ,i,i 35, 36).
In combining Hahn with Rao, the Examiner reasons that it would have
been obvious to modify Hahn's end portions "to include hook and loop
fastener portions, as taught by Rao, in order to provide a google strap that is
adjustable such that it delivers a secure and custom fit to an individual's
head." Id.
B. Appellant's Argument
Appellant presents multiple arguments, which we address separately,
below.
First, Appellant argues that the Hahn's opening is "not an elongated
opening." Appeal Br. 9. In support of this argument, Appellant asserts that
"the opening of Hahn is formed by the convergence of the upper strap (530)
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Appeal2019-000442
Application 13/830,176
and the lower strap (540) where the upper strap (530) extends over a user's
crown and the lower strap (540) extends behind the user's neck." Id.
Appellant explains that "the opening of Hahn is almost circular, such that the
upper strap (530) and the lower strap (540) are not disposed substantially in
line with the first and second side straps (510, 520)." Id. ( emphasis added);
see also Reply Br. 4 (arguing that Hahn's "substantially circular" opening
"has an equal length and width and therefore cannot, by definition, be an
elongated opening.").
Appellant's first argument is not persuasive, as it is premised on a
misinterpretation of the claim. The claim requires "an elongated opening
disposed substantially in line between the first and second end portions."
Appeal Br. 13 (Claims Appendix) (emphasis added). Even ifwe assume
Appellant's assertion to be true that Hahn's upper strap 530 extends over a
user's crown and its lower strap 540 extends behind the user's neck, we
agree with the Examiner and find that Hahn's opening is elongated and
disposed substantially in line between its first and second end portions 510,
520, as required by the claim. To illustrate these findings, we reproduce the
Examiner's annotated version of Hahn's Figure 2, below.
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Appeal2019-000442
Application 13/830,176
":'"·····~·/···'"'.-'
~-··.,,.,, ., ... ,._, .. ·., '-.,, ..... ~ .. ~·J •?~~
/'"''
.,-/ l "-. ~
~:?::~ ; ~. $(:
~:,{.:~ ','-~
~
As shown in the above annotated Figure 2, Hahn depicts a non-circular
opening that is elongated and substantially in line between first and second
end portions 510, 520. See also Hahn Fig. 1 ( depicting first end portion 510
opposite that of second end portion 520).
Second, Appellant contends, "[t]he goggle strap (500) of Hahn is ...
not comprised of a unitary piece of elastomeric material." Appeal Br. 9. In
support of this contention, Appellant argues that "[ w ]hile the goggle strap
(500) may include an elastomer ... , it also requires at least one support
member (600) that prevents the strap (500) from sliding while in use." Id.
( citing Hahn ,i,i 20, 26-29). Appellant further explains that "[b Jecause the
support member ( 600) is a separate component attached on the strap of
Hahn, the strap cannot be said to comprise a unitary piece of elastomeric
material." Id.
Appellant's second argument is also unpersuasive. Although Hahn
discloses that "[i]n one embodiment" the goggles "have at least one support
member 600" (id. ,i 26), the Examiner does not rely on this embodiment or
support member 600 to satisfy the claimed "unitary piece of elastomeric
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Application 13/830,176
material." See Ans. 4 ("support member (600) was not used in the
outstanding rejection"); see also Final Act. 5-6 ( confirming the same).
Rather, the Examiner relies on Hahn's goggle strap 500 as comprising a
unitary piece of elastomeric material (Final Act. 6), and the finding is
supported by Hahn, which discloses that strap 500 may be made of
elastomers (Hahn ,i 20). Furthermore, even though the claim requires the
"sport goggle strap [to] compris[ e] a unitary piece of an elastomeric
material," the claim uses the term "comprising" and does not recite language
that would preclude the goggle strap from having other structure. Appeal
Br. 13 (Claims Appendix).
For the foregoing reasons, Appellant's arguments do not apprise us of
Examiner error, and we affirm the rejection of claims 1, 2, 4-12, and 14-17
as unpatentable over Hahn and Rao.
C. Analysis
III. Claim 19 Re;ected as Unpatentable Over Ambrose
In rejecting dependent claim 19 as unpatentable over Ambrose, the
Examiner relies on the same defective finding discussed above in connection
with the rejection of independent claim 1. See Final Act. 10 ("Regarding
Claim 19, Ambrose discloses a sport goggle strap of Claim l ").
For the same reasons we do not sustain the rejection of independent
claim 1 as anticipated by Ambrose, we do not sustain the rejection of its
dependent claim 19 as unpatentable over Ambrose.
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Application 13/830,176
SUMMARY
We reverse the rejection of claims 1, 2, 12, 13, 18, and 20 under 35
U.S.C. § 102(a) as anticipated by Ambrose.
We affirm the rejection of claims 1, 2, 4-12, and 14-17 under 35
U.S.C. § 103(a) as unpatentable over Hahn and Rao.
We reverse the rejection of claim 19 under 35 U.S.C. § 103(a) as
unpatentable over Ambrose.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § l.136(a)(l)(iv).
AFFIRMED-IN-PART
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