MIDORI ANZEN CO., LTD.

Patent Trials and Appeals Board

Jun 2, 2021

2020005789 (P.T.A.B. Jun. 2, 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.
14/694,693 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.
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Application 14/694,693

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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,
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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.
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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
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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.
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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