MCKEGG, Ashleigh

Patent Trials and Appeals Board

Apr 12, 2021

2020003529 (P.T.A.B. Apr. 12, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
14/894,909 11/30/2015 Ashleigh McKegg 00089.0039FPWO 6628
23552 7590 04/12/2021
MERCHANT & GOULD P.C.
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
ABDUR, RAHMAN
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
04/12/2021 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):
USPTO23552@merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASHLEIGH MCKEGG
Appeal 2020-003529
Application 14/894,909
Technology Center 2800
Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
BRIAN D. RANGE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4, 5, 9, 12, 14–26, and 29. See
Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Ashleigh McKegg.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to improvements in eye glass frames so that
they can be removed and stowed on a person until they are needed again.
Spec. 1:31–35. Claim 1, reproduced below, is illustrative of the claimed
subject matter (emphasis added to highlight key disputed limitations):
1. A glasses frame adapted to hold at least a pair of lenses, the
lenses being for a pair of eyes of a user, the glasses frame
comprising:
a first lens holding portion and a second lens holding
portion adapted to each hold a said lens, having at least one hinge
therebetween;
a first arm extending from said first lens holding portion
on an edge thereof distal from said hinge, and a second arm
extending from said second lens holding portion on an edge
thereof distal from said hinge;
wherein no hinge is disposed between said first arm and
said first lens holding portion, and no hinge is disposed between
said second arm and said second lens holding portion;
wherein said glasses frame has an unfolded position
whereby said first lens holding portion and said second lens
holding portion are extended on said hinge to enable location of
said lenses in front of each said eye and said arms extend
backward either side from said frame to engage with a head of
said user, and a folded position whereby said first lens holding
portion and said second lens holding portion are contracted about
said hinge to lie toward or adjacent each other and said arms fold
such that a free end of each can fold towards said hinge to thereby
enable capture and retention of said glasses frame to an elongate
object;
wherein an axis of movement of said at least one hinge is
substantially perpendicular to a major surface of said first and
second lens holding portions when in said unfolded position;
wherein said first arm and said second arm at least in part
comprise a bi-stable material that extends for said unfolded
position, and that curls for said folded position; and
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wherein the bi-stable material is a material that holds an
elongate form until displaced beyond a certain point whereat the
material loses the elongate form and reverts to a curled form.

Independent claim 24 is similarly directed to a glass frame (Appeal
Br. Claims Appendix 31–33). Independent claim 26 is directed to a method
of use of a glasses frame similar to that recited in claims 1 and 24 (Claims
Appendix 33, 34).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Pasch US 5,247,153 Sept. 21, 1993
Conner US 6,752,496 B2 June 22, 2004
Park US 7,044,596 B2 May 16, 2006
Swartzentruber US 2003/0155389 A1 Aug. 21, 2003
Van Atta US 2006/0250573 A1 Nov. 9, 2006
Amioka US 2006/0256278 A1 Nov. 16, 2006
Willett US 2011/0228210 A1 Sept. 22, 2011

REJECTIONS
Claims 1, 2, 4, 9, 12, 14, 20–26, and 29 are rejected under 35 U.S.C.
§ 103 as being unpatentable over the combined prior art of Amioka, Park,
Willett, and Swartzentruber. Non-Final Act. 6.
Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over
Amioka, Swartzentruber, Park, Willett, and Van Atta. Non-Final Act. 23.
Claims 15–19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Amioka, Park, Willett, Swartzentruber, and Conner. Non-
Final Act. 24.

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OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections . . . .”)). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error in any of the
rejections on appeal. Thus, we affirm all of the Examiner’s rejections for the
reasons expressed in the Final Office Action and the Answer.
We add the following for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
There is no dispute that Amioka describes a glasses frame that may be
taken off and folded via a hinge at the nose piece into a band for the wrist,
arm or ankle when not in use (Amioka, e.g., Abstract, ¶ 10, Figs. 1, 2; Non-
Final Act. 6–8). Appellant does not present any arguments specific to
modifying Amioka’s nose hinge to be configured as taught in Willet (Appeal
Br. 20). Rather, Appellant argues that 1) it is impermissible hindsight to
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modify Amioka, or Amioka/Willet, with Park to use hingeless temple arms
as Park is directed to completely hingeless eye glasses (Appeal Br. 18, 20),
2), Park teaches away from a hinged nose bridge (Appeal Br. 19), and 3)
Swartzentruber is nonanalogous art and thus may not be relied upon to
modify Amioka with its teaching of using a bi-stable material for an arm
band of a watch (Appeal Br. 22–25).
Appellant’s arguments are not persuasive of reversible error in the
Examiner’s obviousness determination of the claimed subject matter, as they
do not take into account the breadth of the claim language, the applied prior
art as a whole, the knowledge of those of ordinary skill in the art, and the
inferences that one of ordinary skill would have made (generally, Ans.).
Contrary to Appellant’s arguments, we agree with the Examiner that
impermissible hindsight was not used in relying upon Park to modify
Amioka, nor does Park teach away from the proposed combination (e.g.,
Ans. 5–7). It is well established that a prior art reference must be considered
in its entirety, i.e., as a whole, when determining if it would lead one of
ordinary skill in the art away from the claimed invention. W.L. Gore &
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983); In re
Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (whether a reference teaches
away from a claimed invention is a question of fact). There is no doubt that
one of ordinary skill would have readily inferred from the overall teachings
of Amioka and Park that glass lenses may be hinged or not at the nose piece
and at the temple arm attachment locations. Thus, an artisan of ordinary
skill would have weighed the known advantages and disadvantages of
hinged temple arms or not, and of a hinged nose piece or not, as these are
both known alternatives. “The fact that the motivating benefit comes at the
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expense of another benefit, however, should not nullify its use as a basis to
modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.” Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8
(Fed. Cir. 2000). Also, cf. In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir.
2012) (“[J]ust because better alternatives exist in the prior art does not mean
that an inferior combination is inapt for obviousness purposes.”).
We also agree with the Examiner that Swartzentruber is analogous art
to the claimed invention as it is directed to the problem/use of an appropriate
material for bending and rebending a band around a wearer’s wrist or arm
(e.g., Ans. 9). See KSR Int’l Co., 550 U.S. at 419–20 (“In determining
whether the subject matter of a . . . claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is
the objective reach of the claim.”); also Wyers v. Master Lock Co., 616 F.3d
1231, 1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in KSR . . .
directs us to construe the scope of analogous art broadly,” stating that
“familiar items may have obvious uses beyond their primary purposes, and a
person of ordinary skill often will be able to fit the teachings of multiple
patents together like pieces of a puzzle”) (citation omitted). Amioka states
that its earpieces/temple arms are “made of bendable material capable of
being reconfigured between earpieces and a band many times without
fatigue or breaking” (Amioka ¶ 23). One of ordinary skill would have
readily inferred that Swartzentruber’s bi-stable spring metal material (used
for a wrist band for, e.g., a watch, radio, cellphone, etc.) would have been an
appropriate material for the use described by Amioka.
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In summary, Appellant has not shown that using hingeless temple
arms as exemplified in Park and a bi-stable material as exemplified in
Swartzentruber for the temple arms in bendable eyeglasses as taught in the
Amioka/Willet combination would have been beyond the capabilities of a
person of ordinary skill in the art based on the applied prior art. We “take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ,” and find that a person of ordinary skill in the art
would have overcome any difficulties within their level of skill. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also id. at 421 (“A person
of ordinary skill is also a person of ordinary creativity, not an automaton.”);
Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d
984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth by the
Supreme Court, the PTO must take account of the “inferences and creative
steps,” as well as routine steps, that an ordinary artisan would employ). We
further note that “[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference . . . . Rather, the test is what the combined teachings of
[those] references would have suggested to those of ordinary skill in the art.”
Appellant does not present any arguments specific to any of the
independent claims, or to any of the dependent claims, even those separately
rejected.
In light of these circumstances, we sustain all of the Examiner’s
rejection on appeal.
CONCLUSION
The Examiner’s rejections are AFFIRMED.

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 9, 12,
14, 20–26, 29
103 Amioka, Park,
Willett,
Swartzentruber
1, 2, 4, 9, 12,
14, 20–26, 29

5 103 Amioka, Park,
Willett,
Swartzentruber,
Van Atta
5
15–19 103 Amioka, Park,
Willett,
Swartzentruber,
Conner
15–19
Overall
Outcome
1, 2, 4, 5, 9, 12,
14–26, 29

RESPONSE
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