ONO & CO., LTD. et al.Download PDFPatent Trials and Appeals BoardApr 22, 20212020006216 (P.T.A.B. Apr. 22, 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. 14/771,792 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 Appeal 2020-006216 Application 14/771,792 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). Appeal 2020-006216 Application 14/771,792 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. Appeal 2020-006216 Application 14/771,792 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. Appeal 2020-006216 Application 14/771,792 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 Appeal 2020-006216 Application 14/771,792 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 Appeal 2020-006216 Application 14/771,792 8 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 Appeal 2020-006216 Application 14/771,792 9 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 Appeal 2020-006216 Application 14/771,792 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 Appeal 2020-006216 Application 14/771,792 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 Appeal 2020-006216 Application 14/771,792 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 Appeal 2020-006216 Application 14/771,792 13 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., Appeal 2020-006216 Application 14/771,792 14 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 Copy with citationCopy as parenthetical citation