MIDORI ANZEN CO., LTD.Download PDFPatent Trials and Appeals BoardJun 2, 20212020005789 (P.T.A.B. Jun. 2, 2021) Copy Citation 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. 14/694,693 04/23/2015 Wataru OKUMA 20159.0049USC1 3600 52835 7590 06/02/2021 HAMRE, SCHUMANN, MUELLER & LARSON, P.C. 45 South Seventh Street Suite 2700 Minneapolis, MN 55402-1683 EXAMINER HADEN, SALLY CLINE ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 06/02/2021 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): PTOMail@hsml.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WATARU OKUMA, FUMIHARU NAKAYAMA, and NORITAKA TAJIMA Appeal 2020-005789 Application 14/694,693 Technology Center 3700 Before DANIEL S. SONG, BRETT C. MARTIN, and MICHELLE R. OSINSKI, Administrative Patent Judges. MARTIN, 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 11, 12, 14–17, 22, and 23. See Final Act. 1. Claim 26 has been canceled. Appeal Br. 13 (Claims App.). Oral Arguments were heard in this case on May 6, 2021, a transcript of which 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Midori Anzen Co., Ltd. Appeal Br. 2. Appeal 2020-005789 Application 14/694,693 2 will be entered into the record in due course. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed “to a shield member and a protective cap, and in particular relates to that configured to cover a face of a wearer.” Spec. 1. Claim 11, reproduced below, is illustrative of the claimed subject matter: 11. A protective cap, comprising: a cap body for protecting a head of a wearer and having a visor portion; a shield member, attached to the cap body, for covering a face of the wearer; and a guide guiding the shield member for movement between a housing position where the shield member is housed in the cap body and a shielding position where the shield member is adapted to cover the face of the wearer; the shield member comprising: a main body portion for covering the face of the wearer, the main body portion comprising a curved plate shape and being transparent or translucent; and a shield member visor portion for preventing a flying object from contacting a body of the wearer, the shield member visor portion being formed integrally with a lowermost end portion of the main body portion and bent below the main body portion to extend in a direction away from the body of the wearer, wherein a gap is present between the shield member visor portion and the visor portion of the cap body when the shield member is positioned at the housing position, and the guide has a first elongated slot that extends forward of a center plane in a left and right direction of the protective cap, the guide having a guide radius of curvature so as to allow the shield member to move around a predetermined axis acting as a pivotal center, the predetermined axis being positioned to extend, Appeal 2020-005789 Application 14/694,693 3 in a left-and-right direction of the protective cap, through positions of the protective cap adapted to correspond to locations at a rear of ears of the wearer. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Lord US 4,227,520 Oct. 14, 1980 James US 5,283,914 Feb. 8, 1994 Reddington US 2007/0016998 A1 Jan. 25, 2007 REJECTION Claims 11, 12, 14–17, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over James, Lord, and Reddington. Final Act. 6. OPINION Obviousness Appellant argues that the Examiner erred in combining James and Lord in that “[t]here is no reasonable basis to treat the unlabeled feature of Lord’s Fig. 3 (also unlabeled in Figs. 1 and 2) as the shield member visor portion of claim 1” and that Lord “provides little information about the feature, and the written disclosure adds nothing to the drawings on this point.” Appeal Br. 8. Appellant’s claims require that the shield member visor portion be “bent below the main body portion to extend in a direction away from the body of the wearer.” Beyond this brief description, the claims do not provide much detail as to the structure necessary to “prevent[] a flying object from contacting a body of the wearer” as claimed. Appeal 2020-005789 Application 14/694,693 4 We agree with the Examiner that the unlabeled lip in Lord meets the claimed limitation. The lip is bent below the main body portion and extends in a direction away from the body of the wearer. Appellant even admits that “[t]he unlabeled feature may be illustrated as having some part extending outward from the shield 21.” Appeal Br. 9. The claims require little more than what Appellant admits is present in Lord. Appellant additionally argues “that the unlabeled feature extends across only a very limited extent of the shield 21 and thus [is] incapable of providing any protective function.” Appeal Br. 9. We disagree. To the extent that any flying object were to strike shield 21 in the area of the unlabeled feature, this feature could deflect such an object away from a body of a user. The claims do not require that the shield member visor portion extend along the entire edge of the face shield, nor do the claims provide a level of protection that must be achieved. To the extent Appellant argues that the feature in Lord is not equivalent to a visor, we note that the claim only requires a “visor portion” and, thus, there is no requirement of an entire visor in the claims. We further find the Declarations of Mr. Tajima unpersuasive. Regardless of any testing done, neither Appellant nor Mr. Tajima explains why the feature at issue in Lord would not provide any protective capabilities. Even if some sparks generally contacted the wearer, this testing does not address what would occur at the shield member visor portion. As noted above, any object striking the shield of the Examiner’s combination in the area of the unlabeled feature could deflect away from the user. Appellant appears to ascribe more protective capabilities to the shield member visor portion than what is actually claimed. Again, the claims Appeal 2020-005789 Application 14/694,693 5 require only that the shield member visor portion be “bent below the main body portion to extend in a direction away from the body of the wearer,” which is found in Lord. Claim 11. As to the claimed feature of the shield member visor portion being formed “integrally,” such does not require the feature to be “molded from the same material as the shield 21” as asserted by Appellant. Appeal Br. 8. The unlabeled feature in Lord is integral to face shield 21 in that it is attached to the lip. Moreover, making elements of a device integral or separable is considered to be an obvious design choice and does not render an invention patentable unless such construction is for an unobvious purpose or results in an unobvious effect. See In re Larson, 340 F.2d 965, 968 (CCPA 1965); In re Fridolph, 309 F. 2d 509, 512 (CCPA 1962). Lastly, Appellant argues that the Examiner’s motivation for combining Lord with James “finds no basis in James, Lord, or elsewhere in the record.” Appeal Br. 10. Motivation need not be explicitly found in the prior art of record, but may be gleaned from the knowledge of one of ordinary skill in the art. Here, the Examiner asserts that the lip in Lord may be used as a gripping portion for raising and lowering the shield. Final Act. 8. This likely is the purpose of the lip in Lord and is a sufficient basis for adding such a lip to the similarly situated shield in James. In summation, Appellant’s arguments generally are directed to features that are not claimed. As claimed, the invention requires only a bent portion that extends away from the wearer and is capable of preventing a flying object (e.g., one that strikes the bent portion) from contacting a body of the wearer, which is what is disclosed in Lord. Accordingly, we are not apprised of error in the Examiner’s rejection. Appeal 2020-005789 Application 14/694,693 6 CONCLUSION The Examiner’s rejection is AFFIRMED. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 11, 12, 14– 17, 22, 23 103(a) James, Lord, Reddington 11, 12, 14– 17, 22, 23 TIME PERIOD FOR 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 Copy with citationCopy as parenthetical citation