Ex Parte Yeung et al

Patent Trial and Appeal Board

Jul 10, 2018

13342872 (P.T.A.B. Jul. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/342,872 01/03/2012
68803 7590 07/12/2018
TI Law Group, PC
2055 Junction A venue, #205
San Jose, CA 95131-2116
FIRST NAMED INVENTOR
Adrienne Yeung
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.
CDTPOlO 1706
EXAMINER
ANNIS, KHALED
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
07/12/2018 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):
aspence@tipatents.com
dthomas@tipatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADRIENNE YEUNG and C. DOUGLASS THOMAS
Appeal2017-005985 1
Application 13/342,872
Technology Center 3700
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 2, 4, 6-8, 12, 14,
16, 22, 23, 26-28, and 34--40. We have jurisdiction to review the case under
35 U.S.C. §§ 134 and 6.
1 The Appellants identify the inventors as the real party in interest. Appeal
Br. 2.
Appeal2017-005985
Application 13/342,872
The invention relates generally to protective hats. Spec. ,r 2.
Claim 2 is illustrative:
2. A protective hat, comprising:
a fabric covering having an interior surface and an exterior
surface; and
at least one thin force absorbing member coupled to the interior
surface of the fabric covering; and
an inner layer of material arranged to cover the at least one thin
force absorbing member and coupled to the fabric cover, the
inner layer of material being separate and distinct from the at
least one thin force absorbing member,
wherein the at least one thin force absorbing member has a
plurality of openings,
wherein the at least one thin force absorbing member has a
thickness of approximately 1 to 5 millimeters, and
wherein the at least one thin force absorbing material comprises
polyurethane foam.
REJECTIONS
Claims 29-33 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 2, 4, 6-8, 12, 14, 16, 22, 23, 26-28, and 34 are rejected under
35 U.S.C. § 112, second paragraph, as indefinite.
Claims 2, 4, 6-8, 12, 14, 16, 22, 23, 26, and 34--40 are rejected under
35 U.S.C. § I03(a) as unpatentable over Nilforushan et al.
(US 2008/0040831 Al, pub. Feb. 21, 2008) (hereinafter "Nilforushan").
Claims 27 and 28 are rejected under 35 U.S.C. § I03(a) as
unpatentable overNilforushan and Speth et al. (US 5,271,101, iss. Dec. 21,
1993) (hereinafter "Speth").
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Application 13/342,872
Claims 4 and 34 are rejected, in the alternative, under 35 U.S.C.
§ 103(a) as unpatentable over Nilforushan and March, II (US 5,661,854, iss.
Sept. 2, 1997) (hereinafter "March").
We REVERSE.
ANALYSIS
Reiection under 35 U.S.C. § 112, First Paragraph
Appellants canceled previously withdrawn claims 29-33 in an
amendment filed March 29, 2016. On April 29, 2016, the Examiner rejected
the canceled claims under 35 U.S.C. § 112, first paragraph. Final Act. 3.
The rejection is without effect and, thus, moot, because the claims were not
pending at the time of rejection.
Reiection under 35 U.S.C. § 112, Second Paragraph
As to dependent claims 27 and 28, the Examiner finds the "claimed
feature [ of 'a plurality of thin force absorbing members that combine'] is not
illustrated in the elected Figs. 3A and 3B." Final Act. 5.
We are persuaded by the Appellants' argument that "[w]hat is or is
not shown in Figs. 3A and 3B is ofno relevance whether the language of the
claim is somehow indefinite." Appeal Br. 7. The Examiner did not respond
to this argument.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). The Examiner has provided no evidence, or sufficient analysis,
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Application 13/342,872
that the ordinary artisan would fail to understand the meaning of the claim
language.
As to independent claims 2 and 4, and all claims that depend from
claim 4, the Examiner finds "[s]ince there is an 'OR' in claim 4 and if the
first structure is chosen to be examined, then claim 2 is indefinite since it
does not apply anymore." Final Act. 5.
We are persuaded by the Appellants' argument that there is no basis
for the rejection, because, "[a]lthough at one time claim 4 was dependent
from claim 2, that dependency was previously removed." Appeal Br. 7. The
Examiner did not respond to this argument. The claims appendix included
with the Appeal Brief makes clear the claim 2 is an independent claim, and,
therefore, the Examiner's rejection is in error, because there is no conflict
between claims 2 and 4 by nature of each being presented in independent
form.
For these reasons, we do not sustain the rejection under 35 U.S.C.
§ 112, second paragraph as indefinite.
Reiection of Claims 2, 4, ~. 12, 14, 16, 22, 23, 26, and 3~40 under
35 U.S.C. §103(a)
Each of independent claims 2, 4, and 35 recites "wherein the at least
one thin force absorbing member has a plurality of openings."
We are persuaded by the Appellants' argument that:
Nilforushan does disclose that its pouch 8 can be made of mesh
material. See Nilforushan, p. 5, lines 3, one side of pocket
made of "mesh material". However, the pouch 8 in Nilforushan
is for holding the thermal pack 9 as shown in Fig. 8. As such,
nowhere does Nilforushan teach or suggest that its thermal pack
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Application 13/342,872
9 or its thermal transfer element 4 are made of mesh material or
"has a plurality of openings" as recited in claim 2.
Appeal Br. 12.
The Examiner finds the "thermal element ( 4) and the pouch (8) made
of mesh material (para. 0059, line 3) were considered as the thin force
absorbing member that is coupled between the interior surface and the
exterior surface of the fabric covering." Final Act. 7; see also id. at 8
("wherein the thin force absorbing member ( 4, 8) includes a pouch/pocket
(8) made of mesh material (para. 0059, line 3) wherein an ordinary skilled in
the art would recognize that mesh material has plurality of
apertures/openings capable to facilitate ventilation").
The Specification describes that "the thin force absorbing member
may have a plurality of openings designed to facilitate ventilation of the air
passage." Spec. ,r 47. We interpret the meaning of "openings," in light of
the Specification, to mean that the ordinary artisan would have understood
the claimed openings, included for the purpose of facilitating ventilation,
would require an opening through the thin force absorbing material, not just
through a mesh surrounding a thermal element, where the thermal element
portion would block ventilation. The Examiner's use of the combination of
a mesh bag along with the thermal material in the pouch as the "thin force
absorbing member," thus, would require openings through both the mesh
layer and the thermal material within the mesh pouch.
However, the Examiner has provided no evidence that Nilforushan' s
thermal material has openings, and instead finds only the mesh outer layer of
the pouch has openings. See Final Act. 7-8; see also Answer 5 ("[T]he
member comprises openings since an ordinary skilled in the art would
recognize that mesh has plurality of openings.").
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Application 13/342,872
We also are persuaded by the Appellants' argument that "the
Examiner's assumption that one in the art would substitute polyurethane
foam for gel is unreasonable, wrong and the result of improper hindsight."
Appeal Br. 11.
The Examiner finds:
an ordinary skilled in the art would be motivated to try different
well-known materials such as for example polyurethane foam.
Substituting the gel with polyurethane foam is a mere
substitution of a well-known material with another. It is
obvious to the ordinary skilled in the art to provide pads made
of polyurethane foam in addition to the padding made of gel
(heat/cold packs) to provide protection to areas of the wearer's
body that does not require heat or cold treatment.
Final Act. 7. The primary basis for this substitution, according to the
Examiner, is that, in Nilforushan, "[p]ara[graph] 0030, lines 11-12 disclosed
that the thermal transfer element acts as padding for the body part[,] which
makes it capable to absorb a force or an impact to the body of the wearer[,]
for example during a fall or sporting events." Final Act. 6-7.
Nilforushan "relates generally to clothing that transfers heat to or from
the body of the wearer, and is particularly concerned with a garment for
applying hot and/or cold thermal packs to the body of the wearer."
Nilforushan ,r 2. After nineteen paragraphs describing different
embodiments, Nilforushan has six paragraphs describing advantages of the
various embodiments, of which paragraph 30 is directed to "the ability to
engage in an athletic activity while a thermal transfer element is held against
a body part." Id. ,r 30. Amongst the advantages of putting heat or cold
against the body during sports, Nilforushan has the single sentence that
"[f]urthermore, a thermal transfer element secured to a body part may act as
padding for that body part." Id.
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Application 13/342,872
This single sentence is insufficient rationale for the ordinary artisan to
substitute "polyurethane foam" for the thermal materials disclosed by
Nilforushan, to provide padding, because Nilforushan is directed to thermal
transfer, not providing padding. In addition, the Examiner has not
demonstrated adequately that polyurethane foam is a reasonable substitute as
a "thermal transfer element."
For these reasons, we do not sustain the rejection of claims 2, 4,
and 35, nor of dependent claims 6-8, 12, 14, 16, 22, 23, 26, 34, and 36-40
that depend from claims 4 and 35 and were rejected along with claims 4
and 35.
Reiection of Claims 27 and 28 under 35 U.S.C. § 103(a) over
Nilforushan and Speth
The Examiner does not establish on the record that Speth remedies the
shortcomings ofNilforushan as to a plurality of openings. For this reason
we do not sustain the rejection of claims 27 and 28 under
35 U.S.C. § 103(a).
Alternative Reiection o(Claims 4 and 34 under 35 U.S.C. § 103(a)
over Nilforushan and March
We are persuaded by the Appellants' argument that "nowhere does
Nilforushan teach or suggest that its thermal pack 9 or its thermal transfer
element 4 are made of mesh material or 'has a plurality of openings' as
recited in claim 4." Appeal Br. 37.
In the rejection, the Examiner does not address the "plurality of
openings." See Final Act. 12-15. In the Response to Arguments2, the
2 The Examiner refers to the Appellants' "Twelfth Argument," but does not
clearly tie it to the argument advanced for the rejection of claims 4 and 34
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Examiner repeats the reasoning used in the rejections of claim 4 over
Nilforushan, stating "an ordinary skilled in the art would recognize that
mesh material has plurality of apertures." Answer 9-10. We are
unpersuaded for the same reason we set forth above-because the openings
under our claim construction must be through the entire element, not just a
mesh pouch surrounding part of the element.
For this reason, we do not sustain the rejection of claim 4 under
35 U.S.C. § 103(a) over Nilforushan and March, nor of claim 34 that
depends from claim 4 and was rejected along with claim 4.
DECISION
We reverse the rejection under 35 U.S.C. § 112, first paragraph.
We reverse the rejection under 35 U.S.C. § 112, second paragraph.
We reverse the rejections under 35 U.S.C. § 103(a).
REVERSED
over Nilforushan and March. Based on its location, though, we assume it
applies to the alternative rejection of claim 4 that relies in part on March.
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