Ex Parte Zartman

Patent Trial and Appeal Board

Mar 20, 2018

14317466 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/317,466 06/27/2014 Cary A. Zartman
25763 7590 03/22/2018
DORSEY & WHITNEY LLP - MINNEAPOLIS
ATTENTION: PATENT PROSECUTION DOCKETING DEPARTMENT
INTELLECTUAL PROPERTY PRACTICE GROUP - PT/16TH FL
50 SOUTH SIXTH STREET, SUITE 1500
MINNEAPOLIS, MN 55402-1498
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.
P245576.US.Ol 3478
EXAMINER
NGUYEN, KIEN T
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
03/22/2018 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):
ip.docket@dorsey.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARY A. ZARTMAN
Appeal2017-003640
Application 14/317 ,466
Technology Center 3700
Before WILLIAM A. CAPP, BRANDON J. WARNER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Cary A. Zartman ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-17. 1 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appeal Brief, MD Holdings Co. is the real party in
interest. Br. 3.
Appeal2017-003640
Application 14/317,466
THE CLAIMED SUBJECT MATTER
Appellant's invention is directed to "a mask design and a handle
integral to the mask design." Spec. i-f 6. Claim 1, reproduced below, is
illustrative of the claimed subject matter.
1. An unsecured mask comprising a mask design and a
handle integral to the mask design, wherein by grasping the
integral handle and positioning the mask in an intended position,
a user's hand is disposed in a natural pose as viewed by a viewer
from at least one point of view, wherein a visual effect of the
intended position is that the user's hand is disposed in a position
that the user's hand would assume if the user were grasping an
actual item represented by the mask.
REJECTIONS
1. Claims 1---6 and 11 are rejected as anticipated under 35 U.S.C.
§ 102(a)(l) by Van Cort (US 5,619,753, issued Apr. 15, 1997).
2. Claims 7-10 and 12-17 are rejected under 35 U.S.C. § 103 as
unpatentable over Van Cort and Shields (US 5,465,427, issued Nov. 14,
1995).
DISCUSSION
Rejection 1
Appellant argues the rejection of claims 1---6 and 11 as a group.
Br. 13-18. We select claim 1 as representative and claims 2-6 and 11 stand
or fall with claim 1. 37 C.F.R. §41.37(c)(l)(iv).
The Examiner finds that "Van Cort meets all of the structural features
as claimed and is capable of performing the claimed function" of "wherein a
visual effect of the intended position is that the user's hand is disposed in a
position that the user's hand would assume if the user were grasping an
actual item represented by the mask." Final Act. 2-3.
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Application 14/317,466
Appellant, relying on Ex Parte Gianelli, 201 WL 1005325 (PTAB,
January 27, 2014), contends that the Examiner
incorrectly asserts that the masks of Van Cort anticipate
Appellant's claimed masks merely because the Van Cort masks
are allegedly capable of achieving the "intended position," ...
without determining whether the Van Cort masks, when used as
intended by Van Cort, would necessarily or inherently provide
the intended position of Appellant's claims.
Br. 15.
Appellant argues that the Specification defines the term "intended
position" as "the position of a mask wherein an identifiable visual
association is accomplished when the user of the mask is viewed by a viewer
from at a least one position." Id. at 15 (citing Spec. i-f 31 ). Appellant
continues that, "for example, the intended position of a mask having a hat
feature is achieved by the user holding the mask in a position wherein the
hat feature is disposed proximal to the forehead and the region of the head
associated with wearing a hat, because such a position provides an
identifiable visual association by the viewer of the user wearing a hat." Id.
at 15-16. Appellant argues the "intended positions are not a necessary
feature of the masks of Van Cort" and "[to] the extent that an identifiable
visual association can even be created by the Van Cort masks, this
association is not inherent to the masks themselves." Id. at 16. Appellant
next contends that because Van Cort's masks include alternating reflective
stripes, there is no possibility that Van Cort's masks can convey an
identifiable visual association. Id. at 17. Appellant next contends that Van
Cort's masks do "not comport with an[y] expectation of realism" and
therefore "there is ... no resulting identifiable visual association required by
or inherent to the Van Cort masks." Id. at 17-18. (Emphasis omitted).
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Application 14/317,466
In response, the Examiner, relying on In re Schreiber, 128 F.3d 1473,
1478 (Fed. Cir. 1997), submits that "a recitation of the intended use of the
claimed invention must result in a structural difference between the claimed
invention and the prior art in order to patentably distinguish the claimed
invention from the prior art" and because "there is no structural difference
between the claimed invention and the prior art; the recitation of the
intended use ... does not pertain [to] any particular structural feature."
Ans. 4. The Examiner also explains that "the limitation 'a natural pose' ...
is subjective and the integral handle of Van Cort is fully capable of showing
a natural pose." Id. (citing Van Cort, Fig. 6). The Examiner further explains
that Van Cort's handle is "capable of allowing a user's hand being disposed
in a natural pose" as claimed "and a visual effect of the intended position is
that the user's hand is disposed in a position that the user's hand would
assume if the user were grasping an actual item represented by the mask."
Id. at 5. For the following reasons, we sustain the rejection of claim 1.
We initially note that Appellant does not dispute the Examiner's
finding that Van Cort discloses an unsecured mask comprising a mask
design and a handle integral to the mask design. Br. 13-18. Nor does
Appellant assert that the handle of Van Cort's mask is not intended to be
used to hold the mask in front of the user's face. Id. Rather, Appellant
argues that the "intended position" recited in the wherein clauses of claim 1
structurally distinguishes claim 1 from Van Cort. Id.
The Federal Circuit directs that a patent applicant "is free to recite
features of an apparatus either structurally or functionally ... [y ]et, choosing
to define an element functionally, i.e., by what it does, carries with it a risk."
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). In addition, if
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Application 14/317,466
the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty ...
may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that the
subject matter shown ... in the prior art does not possess the
characteristic relied on.
Id. (quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)).
Van Cort discloses a mask comprising a giraffe head with ears 44, 46
and neck 47. Van Cort, 2:65-3:3, Fig. 5. Neck 47 "also functions as a
handle for mask 10." Id. 3:3--4. Van Cort similarly discloses a mask
comprising an elephant head with ears 54 and 56 and an elephant trunk 58.
Id. 3:13-14, Fig. 6. Further, elephant trunk 58 "also functions as a handle
for mask 10." Id. 3 : 16-1 7.
With respect to the masks of Van Cort, the Examiner explains that
"the user's hand is disposed in a position that the user's hand would assume
if the user were grasping an actual item represented by the mask as set forth
in claims 1 and 12." Ans. 5; Final Act. 4. We understand the Examiner to
be referring to either a novelty giraffe head or elephant head as the actual
item represented by the mask, and the user would be grasping one of the
masks' respective handles as disclosed in Van Cort. Appellant refers us to
the definition of the term "intended position" in the Specification. Br. 15-16
(citing Spec. i-f 31 ). Appellant's Specification, however, does not contain a
special definition of "identifiable visual association," a phrase imbedded
within Appellant's definition of "intended position." Appellant explains
how several embodiments of the claimed invention fall within the scope of
claim 1 by creating "an identifiable visual association." Id. We note,
however, that although claims are interpreted in light of the Specification,
limitations from the Specification are not read into the claims. In re Van
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Application 14/317,466
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Appellant's attorney
arguments, unsupported by factual evidence in the record, do not persuade
us that the mask of Van Cort would not provide the recited "intended
position" including "an identifiable visual association" of a person holding a
novelty giraffe head or elephant head by the handle when "viewed by a
viewer from at least one position" as explained by the Examiner. Appellant
also does not persuasively explain why holding the mask in the manner
explained by the Examiner would not be using Van Cort's mask and integral
handle as intended in Van Cort. See Ans. 4--5. Thus, Appellant does not
persuade us that Van Cort does not inherently disclose the recited "intended
position." Schreiber, 128 F.3d at 1478.
Appellant's contention that Van Cort's alternating reflective stripes
"eliminate the possibility of conveying an identifiable visual association" is
not persuasive for the reasons stated above and for the additional reason that
Appellant does not adequately address why the alternating stripes affect the
Examiner's analysis of Van Cort's disclosure of "intended position." In
addition, Appellant's contention that "Van Cort's masks do not comport
with an expectation of realism" is not persuasive because it is not based on
the language of claim 1. See In re Self, 671F.2d1344, 1345 (CCPA 1982)
("Many of appellant's arguments fail from the outset because ... they are
not based on limitations appearing in the claims.").
We have considered all of Appellant's arguments and are not apprised
of error in the rejection of claim 1. We thus, sustain the rejection of claim 1
and claims 2---6 and 11 which fall with claim 1.
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Rejection 2
Claims 7-10
Claim 7 depends from claim 1 and recites "wherein the mask is
substantially planar and comprises a first major side and a second major
side, wherein the mask design is printed on a first major side." Br. 22-23
(Claims App.). Claims 8-10 depend directly or indirectly from claim 7. Id.
at 23. The Examiner finds that "Shields discloses a mask (10) that has a
printed mask design ... and the mask is intended to be reversible." Final
Act. 3--4. The Examiner concludes that "it would have been obvious to one
of ordinary skill in the art to modify the mask of Van Cort with the teachings
of the mask design being printed and reversible as taught by Shields for the
purpose of accommodating the types of user." Id. at 4.
Appellant first contends that the Examiner failed "to determine
whether it would have been obvious to use or modify Van Cort's masks to
accomplish the intended position, as claimed by Appellant." Br. 20.
Appellant's second contention is that Shields does not teach or imply
Appellant's "claimed element of an 'intended position"' and does not
disclose "an identifiable visual association obtained by positioning the
mask." Id.
Appellant's first contention is not persuasive because, as we
determined above, Van Cort discloses Appellant's claimed "intended
position" recited in claim 1. Appellant's second contention is also not
persuasive. The Examiner does not rely on Shields for disclosure of the
"intended position" or "identifiable visual association" and, thus, this
contention does not address the Examiner's rejection of claim 7. We note
that Appellant does not challenge the Examiner's stated reason for
modifying Van Cort with the teachings of Shields. Br. 19-20.
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Consequently, as Appellant does not apprise us of error, we sustain the
rejection of claim 7. Appellant does not separately argue for the
patentability of claims 8-10. Id. We, thus, likewise summarily sustain the
rejection of claims 8-10.
Claims 12-17
Independent claim 12 is directed to a method of using a mask. Br. 23
(Claims App.). Claims 13-17 depend directly or indirectly from claim 12.
Id. at 24.
In the rejection of claim 12, the Examiner states the "explanation of
claims 1 and 7-9 would constitute the obvious steps of forming as in
claim 12; and the mask of Van Cort can be grasped by the handle (47) in the
manner as set forth in claims 12-15." Final Act. 4. Appellant contends
"[ s ]ince the element of 'intended position' is entirely absent from the
teachings of Van Cort and Shields, there is no method disclosed in either
reference that teaches or implies a step of positioning the masks in an
'intended position' as the term is defined by Appellant." Br. 20. This
contention is not persuasive for the reasons stated above in connection with
the rejection of claim 1. We, thus, sustain the rejection of claim 12.
Appellant does not argue separately for the patentability of dependent
claims 13-17. Id. at 21. We, thus, also sustain the rejection of claims 13-
17.
DECISION
The Examiner's decision rejecting claims 1-17 is affirmed.
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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
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