ONO & CO., LTD. et al.

Patent Trials and Appeals Board

Apr 22, 2021

2020006216 (P.T.A.B. Apr. 22, 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.
14/771,792 08/31/2015 Hidenori Ono 034651 M 003 6039
441 7590 04/22/2021
SMITH, GAMBRELL & RUSSELL, LLP
1055 Thomas Jefferson Street
Suite 400
WASHINGTON, DC 20007
EXAMINER
NELSON, KERI JESSICA
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
04/22/2021 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):
docketing@sgrlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HIDENORI ONO, YASUO AIHARA, HISAYUKI SUGIYAMA,
TORU MATSUMOTO, and KAZUMI KAI
____________

Appeal 2020-006216
Application 14/771,792
Technology Center 3700
____________

Before BRETT C. MARTIN, JEREMY M. PLENZLER, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 1 and 3–8.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Ono & Co., LTD. and AI-MET CO.,
LTD as the real party in interest. Appeal Br. 3.
2 Claim 2 has been cancelled. See Amendment After Final Action (Feb. 2,
2020).
Appeal 2020-006216
Application 14/771,792
2
THE INVENTION
Appellant’s invention relates to “a cranial deformation correction
helmet for use in correcting cranial deformation in an infant, and a method
for producing such a cranial deformation correction helmet.” Spec. ¶ 1.
Claims 1 and 83 are the independent claims on appeal. Appeal Br. 21–22
(Claims App.). Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A helmet for correction of cranial deformation in an infant,
the helmet comprising a non-foamed synthetic resin outer shell,
and a foamed synthetic resin inner liner disposed on an inner
surface of the shell, wherein
a relative density of the shell is 92 to 96%, and
a reinforcing portion is formed integrally with the shell of
a same material as the shell at an outer peripheral edge of the
shell, the shell having a thickness and the reinforcing portion
having an increased thickness relative to the thickness of the
shell.

THE REJECTIONS4
The Examiner relies upon the following as evidence in support of the
rejections:

3 Claim 8 recites a method for producing the cranial deformation correction
helmet according to claim 1. Appeal Br. 22 (Claims App.).
4 We understand that the Examiner’s rejections pursuant to 35 U.S.C. §
103(a) as stated in the Final Office Action (dated August 7, 2019) are
withdrawn, in view of Appellant’s After Final Action Amendment of claim
1, which added the subject matter of claim 2 into independent claim 1, while
cancelling claim 2, and in further view of the Examiner’s NEW GROUNDS
OF REJECTION addressing the claims as amended by Appellant’s After
Final Action Amendment, which are presented in the Examiner’s Answer.
See After Final Action Amendment pursuant to 37 C.F.R. §§ 41.33, 1.116
(dated February 13, 2020) (“Applicant wishes to focus an appeal on a
combination of claims 1 and 2 that recites applicant’s helmet as comprised
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3
NAME REFERENCE DATE
O’Connor US 3,783,450 Jan. 8, 1974
Pomatto US 5,308,312 May 3, 1994
Dickens, Jr. US 5,990,268 Nov. 23, 1999
Papay US 6,423,019 B1 July 23, 2002
Kress US 7,096,513 B1 Aug. 29, 2006
Durocher US 8,191,179 B2 June 5, 2012
Hager US 2013/0289150 A1 Oct. 31, 2013
The following rejections are before us for review:
I. Claims 1, 6, and 8 are rejected under 35 U.S.C. § 103(a)
as being unpantable over Pomatto, Dickens, Jr., and
O’Connor. Ans. 3–4.
II. Claim 3 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Pomatto, Dickens, Jr., O’Connor, and
Papay. Ans. 5.
III. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pomatto, Dickens, Jr.,
O’Connor, and Durocher. Ans. 5.
IV. Claim 5 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pomatto, Dickens, Jr.,
O’Connor, and Hager. Ans. 6.
V. Claim 7 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pomatto, Dickens, Jr.,
O’Connor, Papay, and Kress. Ans. 6–7.

of a particular outer shell, including a reinforcing portion, and an inner resin
liner”); Adv. Act. 1 (dated February 13, 2020) (indicating entry of
Appellant’s After Final Action Amendment); Ans. 3–7; cf. id. (only
expressly withdrawing the rejection of claim 2 under 35 U.S.C. § 112, first
paragraph).
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4
OPINION
Regarding independent claim 1, the Examiner finds that Pomatto
discloses a cranial correction helmet (i.e., orthosis 11) comprising a foamed
synthetic resin inner liner (i.e., liner 17) disposed on an inner surface of a
non-foamed synthetic resin outer shell (i.e., outer layer 16), as claimed.
Ans. 3 (citations omitted).
The Examiner determines that Pomatto fails to disclose a relative
density5 of the shell in the range of 92 to 96%, as required by claim 1, and
relies on Dickens, Jr. for disclosing “a process of producing a polymer
article be selective laser sintering to produce a relative density of 80 to 95%
(near-fully dense) such that the article has essentially the same properties of
a fully dense article of the same dimensions.” Ans. 4 (citing Dickens, Jr.
1:61–67, 2:7–12, 38–46, 12:27–31, 18:48–51); cf. Spec. ¶ 20 (“The selective
laser sintering is publicly known shaping method and thus its detailed
explanation will be omitted herein.”). The Examiner reasons that it would
have been obvious to modify Pomatto’s outer shell “to be formed by
sintering to produce a relative density of 80% to 95%,” as taught by
Dickens, Jr., “for the purpose of mass producing prototypes of the shell
having essentially the proper dimensions and properties as shell produced by
molding.” Id. at 3–4.
The Examiner further determines that the combination of Pomatto and
Dickens, Jr. fails to teach a reinforcing portion, and the Examiner relies on
O’Connor for disclosing a helmet 10 comprising an outer shell 11 with a
reinforcing portion (i.e., bead 20), as claimed. Ans. 4 (citations omitted).

5 The Specification defines the claim term “relative density,” when used to
modify the shell of the helmet, as: “density relative to the density of the
same shell which, however, is solid and contains no voids.” Spec. ¶ 7.
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5
The Examiner reasons that it would have been obvious to modify Pomatto’s
helmet, as modified by Dickens, Jr. supra, “to include a reinforcing portion
having a greater thickness formed at an outer peripheral edge of the shell,”
as taught by O’Connor, “for the purpose of strengthening at the edge of the
helmet to prevent cracking of the material.” Id.
First, Appellant argues that Dickens, Jr. is improperly relied on by the
Examiner because Dickens, Jr. is nonanalogous art relative to the claimed
invention. See Appeal Br. 12–15 (relying on In re Oetiker, 977 F.2d 1443
(Fed. Cir. 1992)). Appellant submits that Dickens, Jr. is neither in the same
field of endeavor as Appellant’s claimed invention, nor is a problem
addressed by Dickens Jr. also reasonably pertinent to either of the two
problems addressed by Appellant’s invention: first, providing a lightweight
yet strong helmet, and second, providing a helmet “promptly and
inexpensively to suit each individual infant patient.” Id. at 13 (citing Spec. ¶
4); see also Reply Br. 5–6 (citing Spec. ¶ 4 (“The specification also
addresses a second problem of providing such a helmet quickly and at
reasonable cost.”)). Appellant contends that
Dickens, Jr. solves an entirely unrelated problem, namely the
problem of providing a laser sinterable powder useful in
producing ‘nearly fully dense’ objects or ‘prototypes’ that mimic
fully dense articles actually made by compression or injection
molding. Dickens, Jr. gives no examples of any specific
customizable article or three-dimensional object produced by its
powders or techniques. It offers no use for any article or object
produced by the powders or techniques.
Appeal Br. 13. Appellant concludes that Appellant “has addressed the
problem of cranial correction in infants while Dickens, Jr. addresses the
problem of compression and injection molded articles with a laser sinterable
powder.” Id. at 15.
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6
It is undisputed that Dickens, Jr. is not in the same field of endeavor
of Appellant’s claimed invention. See Ans. 8. However, the Examiner finds
that Dickens, Jr. is “reasonably relevant” to a problem addressed by
Appellant’s claimed invention, namely, “rapidly producing articles,”
because Dickens Jr. discloses “produc[ing] a custom article faster than
conventional molding techniques such as injection or compression molding.”
Id. at 8–9. The Examiner explains that
it is reasonable for a person of ordinary skill in the art seeking to
solve the problem of manufacturing a lighter weight device both
quickly and cost effectively to look to various manufacturing
techniques in an attempt to find a solution. In this case, [Dickens,
Jr.] is concerned with producing a near-fully dense (density of
80%-90%) article by selective laser sintering that is used in the
field of rapid prototyping which is a technique used to quickly
fabricate a scale model of a desired device.
Adv. Act. 2 (November 26, 2019) (emphasis added).
A reference qualifies as prior art for an obviousness determination
when it is analogous to the claimed invention. Innovention Toys, LLC. v.
MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). “Two separate tests
define the scope of analogous art: (1) whether the art is from the same field
of endeavor, regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The “field of
endeavor” test asks if the structure and function of the prior art is such that it
would be considered by a person of ordinary skill in the art because of
similarity to the structure and function of the claimed invention as disclosed
in the application.” Id. at 1325–26. “A reference is reasonably pertinent . . .
if it is one which, because of the matter with which it deals, logically would
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7
have commended itself to an inventor’s attention in considering his
problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “If a reference
disclosure has the same purpose as the claimed invention, the reference
relates to the same problem, and that fact supports use of that reference in an
obviousness rejection.” Id. Whether a prior art reference is “analogous” is a
question of fact. Id. at 658.
Here, we are not apprised of error in the Examiner’s finding that both
Dickens, Jr. and Appellant’s claimed invention have the same purpose of
rapidly producing individualized products, such that Dickens, Jr. would have
logically commended itself to an inventor’s attention when considering
Appellant’s problem of how to promptly produce a customized cranial
helmet shell. In other words, we are not persuaded by Appellant’s argument
that because the promptly-made, individualized products in Dickens Jr.’s are
prototypes, as compared to helmets made to suit individual patients, Dickens
Jr. fails to address the same problem addressed by Appellant. Appellant’s
characterization of the problem would appear to result in requiring Dickens
Jr. to be in the same field of endeavor as Appellant’s claimed invention:
cranial deformation correction helmets.
Appellant further submits that the Specification “explicitly constrains
the scope of qualified prior art to a space limited to cranial helmets” and
“explicitly limits the scope of prior art available for consideration in terms of
the problem addressed and solved by [Appellant’s] claimed invention.” Id.
To the extent Appellant is arguing that the Examiner must only rely upon
prior art disclosing cranial deformation correction helmets and further, prior
art that addresses the problem of rapidly producing individualized cranial
deformation correction helmets, we find, again, that Appellant’s argument
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would require the prior art reference to be in the same field of endeavor of
Appellant’s invention, rendering the second prong of the analogous art test
superfluous.
Regarding Appellant’s reliance on In re Oetiker, we find the court’s
holding distinguishable from the present appeal. See Appeal Br. 12–13. The
court in In re Oetiker found that Lauro, a prior art reference disclosing a
garment hook, was nonanalogous art to the claimed hose clamp for
maintaining a preassembly condition of a clamp, because Lauro’s garment
hook had a different purpose than the claimed hose clamp hook and did not
address the same problem of maintaining a preassembly condition of a
clamp. See, e.g., Oetiker, at 1446–47. Here, however, Dickens, Jr. discloses
a method for rapid prototyping a “sintered part,” such that “for most
purposes,” the sintered part “appears to be a duplicate of one which is
isotropically molded,” to achieve the same purpose as Appellant’s claimed
invention: promptly providing an individualized part, which is also made by
selective sintering. Dickens, Jr. 1:24–26; see, e.g., Spec. ¶ 7.
In sum, we are not apprised of error in the Examiner’s finding that a
person of ordinary skill, when seeking to solve a problem of rapidly making
an individualized cranial deformation helmet would reasonably be expected
to look to prior art references disclosing the selective sintering of parts to
rapidly produce individualized articles (i.e., Dickens, Jr.). Thus, the
Examiner’s reliance on Dickens, Jr. in the rejection of claim 1 is proper.
Second, Appellant argues that Dickens, Jr. teaches away from the
claimed invention, because “Dickens, Jr. would have taught those of
ordinary skill away from adopting its 80% - 95% density range in
[Appellant’s] field of endeavor.” Appeal Br. 16. Appellant submits that
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Dickens, Jr. discusses similarities and differences between
prototypes prepared from its powders and actual compression or
injection molded articles. Dickens, Jr. explicitly concedes that
its prototypes, due to their porosity, have notched Izod impacts
(and a tensile elongation percentage) that are “substantially
lower” than for compression or injection molded articles. . . . as
such, continues Dickens, Jr. “… the energy to break, which is the
area under the stress curve up to the point of break at ultimate
elongation is also very much lower than for the compression
molded article.”
Appeal Br. 16 (citing Dickens, Jr. 2:45–62). Appellant also submits that
“Pomatto expressly states that the outer shell must be of considerable
strength.” Reply Br. 9 (citing Pomatto 2:61–62). Appellant concludes that
“[t]hose of ordinary skill in the art would not tolerate, in [Appellant’s]
helmet, or in the helmets of Pomatto . . . a notched Izod impact weakness as
admitted by Dickens, Jr.,” and “[t]hus, Dickens, Jr.’s admission that three-
dimensional articles produced thereby are deficient in notched Izod impact
strength and tensile elongation would have discouraged those of ordinary
skill from applying its teachings to protective helmets, whether for sports, or
for cranial remodeling.” Appeal Br. 16–17; see also Reply Br. 8–9; id. at 8
(“To those of ordinary skill, Dickens Jr.’s admissions would have seemed to
risk creating a helmet with perhaps dangerously reduced notched Izod
impact”). Appellant maintains that “[d]espite the pitfalls that Dickens, Jr.
encountered, and admitted, [Appellant] devised a relative density range and
a reinforcing portion for its outer shell that satisfies both the strength and
weight requirements for cranial deformation treatments in infants.” Id. at 9
(emphasis added).
The Examiner responds that
Pomatto discloses that it is important for the orthosis to be self-
suspending which is achieved by the close confinement of the
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10
temporal bone and mastoid process regions of the cranium by the
depending regions (12, 13) of the orthosis . . . . However,
Pomatto does not disclose any criticality for protecting a child’s
head from impact or injury. Therefore, the lowered Izod impact
value and tensile elongation of the articles taught by Dickens
would not implicitly be teaching away from the cranial orthosis
taught by Pomatto.
Ans. 10.
We are not persuaded by Appellant’s argument. Although Pomatto
discloses that outer layer 16 of orthosis 11 suitable material possesses
“considerable strength,” Pomatto does not disclose the use of orthosis 11 as
a protective helmet, as correctly found by the Examiner supra, but rather as
requiring outer layer 16 to have an “inherent stiffness and resiliency . . .
sufficient to hold the orthosis in place and effectively restrain growth across
the breadth and height of the cranium.” Pomatto 2:55–3:1. Appellant does
not provide sufficient argument or evidence to support a conclusion that
making Pomatto’s orthosis by the selective sintering taught in Dickens Jr.
results in the orthosis having insufficient strength, stiffness, and resiliency to
hold the orthosis in place and effectively restrain growth as desired in
Pomatto, such that Dickens Jr. teaches away from the Examiner’s proposed
combination. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(attorney argument cannot take the place of record evidence); Par Pharm.,
Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014)
(obviousness “does not require that the motivation be the best option, only
that it be a suitable option from which the prior art did not teach away”).
Moreover, as set forth supra, the Examiner relies on O’Connor for
disclosing a reinforcing portion, or bead 20, which modification addresses
any alleged deficiencies in the strength of Pomatto’s helmet when made by
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11
Dickens Jr.’s selective sintering process. See, e.g., O’Connor 2:51 (“all of
the members being formed of substantially a single and uniform thickness
with the exception of a bead 20,” which provides “additional strengthening”
and “aids in preventing any cracking of the material”).
Third, Appellant concludes that “[t]here is no teaching, suggestion, or
motivation supporting the combination of O’Connor . . . with Pomatto in the
ways asserted [by the Examiner].” Reply Br. 10. However, such an
argument appears to be holding the Examiner to a TSM (teaching,
suggestion, or motivation) standard, which is not required. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 415 (2007). Appellant also does not provide
sufficient argument or evidence as to why the reasoning articulated by the
Examiner supra lacks rational underpinning. See In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (requiring an obviousness conclusion to be based on
explicit articulated reasoning with rational underpinning) cited with approval
in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Fourth, Appellant argues that O’Connor teaches a helmet for “contact
sports athletes,” which has “nothing to offer those of ordinary skill in the art
in the development of cranial correction arrangements for infants less than
four months old.” Reply Br. 11. To the extent Appellant is arguing that
O’Connor is nonanalogous art relative to the claimed invention, Appellant
does not apprise us of error in the Examiner’s factual finding that “both the
claimed correction helmet and the hockey helmet taught by O’Connor are
structurally and functionally similar since they are formed as a rigid shell
intended to be worn on a person’s head,” such that O’Connor and the
claimed invention are in the same field of endeavor. Adv. Act. 2 (dated
Nov. 26, 2019). Additionally, O’Connor addresses the problem of hockey
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12
helmets being “fabricated of materials which are heavy enough to cause
discomfort.” O’Connor 1:24–25. O’Connor’s solution is to provide “an
outer shell [that] is formed of lightweight material . . . with three protective
ribs” (id., Abstract), resulting in “a helmet of light weight construction,
which provides maximum protection through the use of the ribbed
construction (id. 4:13–15). Thus, O’Connor is also reasonably pertinent to
Appellant’s problem of providing a shell that is sufficiently lightweight,
while also having the necessary strength and hardness. Spec. ¶ 5.
Finally, Appellant argues that although Pomatto and O’Connor
disclose “headpieces,” Pomatto and O’Connor fail to disclose “a cranial
remodeling helmet,” as claimed, or teach or suggest “an outer shell with
both a 92% and 96% relative density,” and with [the claimed] reinforcing
portion.” Appeal Br. 18; see also id. at 19 (“O’Connor’s teachings of
helmets for contact sports athletes has nothing to offer those of ordinary skill
in the art in the development of cranial correction arrangements for infants
less than four months old” (citing MPEP § 2143.01)). However, Appellant’s
conclusory argument does not address the rejection as articulated by the
Examiner supra, which relies on a combination of references to result in the
claimed invention. Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, under 35 U.S.C. § 103(a), as being unpatentable over Pomatto,
Dickens, Jr., and O’Connor. Appellant does not present arguments for the
patentability of claims 6 and 8 apart from the arguments presented for the
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patentability of claim 1, and therefore, for essentially the same reasons as set
forth supra, we also sustain the Examiner’s rejection of claims 6 and 8,
under 35 U.S.C. § 103(a), as being unpatentable over Pomatto, Dickens, Jr.,
and O’Connor. Appeal Br. 12–19; Reply Br. 5–10.
Rejections II and IV
Appellant does not present arguments for the patentability of claims 3
and 5, which depend from independent claim 1, apart from the arguments
presented for the patentability of claim 1, and therefore, for essentially the
same reasons as set forth supra, we sustain the Examiner’s rejection of
claims 3 and 5, under 35 U.S.C. § 103(a), as being unpatentable over
Pomatto, Dickens, Jr., and O’Connor, and Papay and Hager. Appeal Br. 21
(Claims App.); id. at 12–19; Reply Br. 5–10.
Rejections III and V
Appellant argues that “Durocher and Kress represent two more
helmets,” and “are not properly combinable with Pomatto for essentially the
same reasons as O’Connor,” namely, that “[w]hile helmet weight is also a
consideration in sports helmets, weight is not nearly as much a consideration
as for helmets for infants.” Appeal Br. 19; Reply Br. 10. However, to the
extent Appellant is arguing that Durocher and Kress are nonanalogous art
relative to the claimed invention, Appellant’s argument does not apprise us
of error in the Examiner’s finding that “the structural similarities and
functional overlap between the protective helmets for sports taught by
[Durocher and Kress,] the arts to which the references belong are . . .
considered analogous” to the claimed invention. Ans. 10.
Accordingly, we sustain the Examiner’s rejections of claims 4 and 7,
under 35 U.S.C. § 103(a), as being unpatentable over Pomatto, Dickens, Jr.,
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and O’Connor, and Durocher and Kress. Appeal Br. 21 (Claims App.); id. at
12–19; Reply Br. 5–10.

CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 6, 8 103(a) Pomatto, Dickens, Jr.,
O’Connor
1, 6, 8
3 103(a) Pomatto, Dickens, Jr.,
O’Connor, Papay
3
4 103(a) Pomatto, Dickens, Jr.,
O’Connor, Durocher
4
5 103(a) Pomatto, Dickens, Jr.,
O’Connor, Hager
5
7 103(a) Pomatto, Dickens, Jr.,
O’Connor, Papay, Kress
7
Overall
Outcome
1, 3–8
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