Steven King

Patent Trials and Appeals Board

May 14, 2021

2020000051 (P.T.A.B. May. 14, 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.
14/874,101 10/02/2015 Steven King KIN2936-002 5088
8698 7590 05/14/2021
STANDLEY LAW GROUP LLP
6300 Riverside Drive
Dublin, OH 43017
EXAMINER
DAO, TUAN C.
ART UNIT PAPER NUMBER
2193
NOTIFICATION DATE DELIVERY MODE
05/14/2021 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):
standleydocketing@standleyllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN KING
___________

Appeal 2020-000051
Application 14/874,101
Technology Center 2100
____________

Before JAMES B. ARPIN, ADAM J. PYONIN, and
PHILLIP A. BENNETT, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3, 9, and 12, all of the pending claims. Final
Act. 2.2 Claims 2, 4–8, 10, 11, and 13–20 are cancelled. Appeal Br. 12–13
(Claims App.). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party-in-interest as Steven King. Appeal Br. 2.
2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed
June 18, 2019) and Reply Brief (“Reply Br.,” filed, September 30, 2019); the
Final Office Action (“Final Act.,” mailed February 26, 2019) and the
Examiner’s Answer (“Ans.,” mailed August 2, 2019); and the Specification
(“Spec.,” filed October 2, 2015). Rather than repeat the Examiner’s findings
and Appellant’s contentions in their entirety, we refer to these documents.
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STATEMENT OF THE CASE
The claimed systems “relate generally to protective equipment,
namely customized protective equipment.” Spec. ¶ 2.
As noted above, claims 1, 3, 9, and 12 are pending. Claim 1 is
independent. Appeal Br. 12 (Claims App.). Claims 3, 9, and 12 depend
directly from claim 1. Id. at 12–13.
Claim 1, reproduced below with disputed limitations emphasized, is
representative.
1. A system for creating a fitted protective article of athletic
equipment for a person, comprising:
a shell;
a plurality of separate assorted fitting components adapted
to be secured within the shell, wherein each of said fitting
components are pads provided in at least three separate,
predetermined sizes;
a measuring device for taking measurements of a portion
of the person, said portion for which the article of athletic
equipment is to protect; and
at least one computer processor for:
receiving and processing the measurements; and,
creating instructions for assembly of the article of athletic
equipment by identifying at least two of said fitting components
in at least two different of said predetermined sizes for
securement to said shell in accordance with said measurements
of said portion of said person, wherein said article of athletic
equipment resulting therefrom more closely fits the actual
dimensions of said portion of said person when compared to the
same athletic equipment item having all components therein of
just one predetermined standard size.
Id. at 12 (emphases added).
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REFERENCES AND REJECTIONS
The Examiner relies upon the following references:
Name3 Reference Published Filed
Lemelson US 2003/0208302 A1 Nov. 6, 2003 May 1, 2002
Ebisawa US 2004/0204904 A1 Oct. 14, 2004 Feb. 18, 2004
Smith US 2009/0028679 A1 Jan. 29, 2009 July 11, 2008
Pietrzak US 2014/0201889 A1 July 24, 2014 Jan. 15, 2014
The Examiner rejects (1) claims 1, 3, and 9 under 35 U.S.C. § 103 as
obvious over the combined teachings of Pietrzak and Ebisawa (Final Act. 3–
5) and (2) claim 12 under 35 U.S.C. § 103 as obvious over the combined
teachings of Pietrzak, Ebisawa, Smith, and Lemelson (id. at 5–6).
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the contentions and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). The Examiner and Appellant focus their findings and
contentions on claim 1; so do we. See Appeal Br. 6–11; Reply Br. 5.
Arguments not made are forfeited.4 Unless otherwise indicated, we adopt
the Examiner’s findings in the Final Office Action and the Answer as our

3 All reference citations are to the first named inventor only.
4 See In re Google Tech. Holdings LLC, 980 F.3d 858, 863 (Fed. Cir. 2020)
(“We interpret the Patent Office to be arguing that Google’s failure to raise
its lexicography arguments, inadvertent or not, compels a finding of
forfeiture.”); 37 C.F.R. § 41.37(c)(1)(iv) (2018) (“Except as provided for in
§§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the
appeal brief will be refused consideration by the Board for purposes of the
present appeal.”).
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own and add any additional findings of fact for emphasis. We address the
rejections below.
ANALYSIS
Obviousness of Claim 1 over Pietrzak and Ebisawa
As noted above, the Examiner rejects claim 1 as obvious over the
combined teachings of Pietrzak and Ebisawa. Final Act. 3–4. The Examiner
finds Pietrzak teaches or suggests the majority of the limitations of claim 1,
but
Pietrzak does not explicitly disclose wherein each of said
fitting components are pads provided in at least three
separate, predetermined sizes; assembly of the article of
athletic equipment by identifying at least two of said fitting
components in at least two different of said predetermined
sizes for securement to said shell in accordance with said
measurements of said portion of said person.
Id. Nevertheless, the Examiner finds Ebisawa teaches or suggests these
limitations (id. at 4 (citing Ebisawa ¶¶ 12, 25, 51, 58–59, 68, 75, Figs. 7, 8,
10E)) and a person of ordinary skill in the relevant art would have had
reason to combine the teachings of Pietrzak and Ebisawa to achieve the
systems, as recited in claim 1 (id. (citing Ebisawa ¶ 12)).
Appellant contends that the Examiner errs in combining the teachings
of Pietrzak and Ebisawa for four reasons. Appeal Br. 7. Specifically,
Appellant contends, “The proffered rejection is improper under at least four
separate grounds of argument: 1) teaching away; 2) running contrary to
accepted wisdom and resulting in backwards step; 3) lack of motivation to
combine; and 4) destruction of intended purpose.” Id. For the reasons given
below, we are not persuaded the Examiner errs, and we sustain the
Examiner’s rejection of claim 1.
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1. Pietrzak and Ebisawa Teach Away From Their Combination
Appellant contends, “Pietrzak proposes a wholly custom helmet.”
Appeal Br. 8 (citing Pietrzak ¶¶ 4–6). In particular, in its “Background”
Section, Pietrzak discloses:
Adjustments to the standard helmet are then made by adding
different thicknesses of padding between the customer’s head
and the inner surface of the helmet. These assumptions, however,
have resulted in helmets that do not fit correctly, tend to slip
around on the customer’s head, rattle on the customer’s head
when vibration occurs in the customer’s body during activities in
the sport, or to create pressure points on the customer’s head and
face to try to keep the helmet in place even though the padding
does not fit right or where the customer’s head is too big to have
padding between the head and the helmet protective material.
Pietrzak ¶ 4 (emphasis added). Thus, Appellant contends Pietrzak teaches
away from adding different sized pads to a helmet shell, which is what the
Examiner relies on Ebisawa to teach or suggest. Appeal Br. 7 (“The Office
admits that Pietrzak fails to teach the limitations regarding use of three
different size pads, where at least two different size pads are placed into the
shell to better fit the article of athletic equipment to the user. The Office
instead cites to Ebisawa to allegedly provide these limitations.”; citing Final
Act. 4), 8 (“Therefore, Pietrzak teaches away from the very modification
proposed by the Office.”).
As noted above, Appellant cites to Pietrzak’s Background; Appellant
fails, however, to consider the entirety of Pietrzak’s disclosure. As the
Examiner finds, Pietrzak discloses:
The inner surface of the custom-fitted helmet can be formed by
an additive process. Forming the inner surface of the custom-
fitted helmet can be accomplished by inserting a liner
comprising a plurality of contiguous pieces or a plurality of
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separated pieces into a helmet base unit. The liner can be formed
as a substantially flat array of pieces and a surface of the
substantially flat array of pieces can be adjusted to mirror the
computerized headform.
Pietrzak ¶ 7 (emphases added); see Ans. 7–10 (quoting Pietrzak ¶¶ 61, 88, 93).
Thus, the Examiner finds, “Accordingly, Pietrzak teaches the inner surface of
the custom-fitted helmet can be formed by an additive process in addition to
using a computer numerical control (CNC) machine.” Ans. 9. Further,
Ebisawa teaches “The matching data may include information
regarding whether the size of the helmet 24 (see FIG. 10E),
which is selected as the matching size by the first selection as
will be described later, matches the head of the helmet wearer
comparatively well, and if so, to what degree, and if not, what
size adjusting operation should be performed to realize
comparatively well matching.”
Id. (citing Ebisawa ¶ 51, Fig. 8 (depicting pads 46–49)). Consequently, the
Examiner finds, “it is clear to one of ordinary skill in the art that the
information gathered by attaching additional pads to the helmet as taught in
Ebisawa can be performed as part of the additive process or even afterwards
to further provide an acceptable fit for the custom helmet as taught by
Pietrzak.” Id. at 10.
“A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the
applicant.” A reference does not teach away, however, if it
merely expresses a general preference for an alternative
invention but does not “criticize, discredit, or otherwise
discourage” investigation into the invention claimed.
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009) (citations omitted).
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Appellant contends Pietrzak’s “Background” disclosure “does indeed
expressly criticize, discredit, or otherwise discourage the use of standard
size protective equipment and components. Accordingly, Pietrzak proposes
creation of a wholly custom fitted helmet.” Reply Br. 3–4 (emphasis added).
As the Examiner finds, however, Pietrzak discloses, “Alternatively, the
distance or offset can be variable or changing for at least a portion of
padding layer 84 when a thickness of padding layer 84 is non-uniform or
variable.” Ans. 8 (quoting Pietrzak ¶ 61 (emphases added)). Thus,
Pietrzak’s disclosure encompasses the use of standard and non-standard size
pads. Cf. Ebisawa ¶ 61 (“Each of the predetermined attaching pads 46 to 49
shown in FIG. 8 may comprise several types having different hardness
values and/or sizes (thickness, length, width and the like), or may comprise
one type having the same hardness and size.”). Here, we are not persuaded
Appellant shows that Pietrzak or Ebisawa criticizes, discredits, or otherwise
discourages investigation into the invention claimed, such that the references
teach away from their combination. See Ans. 4.
We do not find this first reason persuasive of Examiner error.
2. Proposed Combination Is a Step Backward
Appellant next contends, “the proffered combination of Pietrzak and
Ebisawa runs contrary to accepted wisdom and would represent a step
backward.” Appeal Br. 9. In particular, Appellant asserts:
The Office’s proposed modification essentially requires taking
an otherwise wholly custom fitted helmet and placing additional
stock insert pads on the inside, thereby destroying the very
purpose for which the custom helmet was custom milled in the
first place. Indeed, if the Pietrzak helmet is already wholly
custom fitted, Applicant is left wondering why there would be a
need for the pads of Ebisawa?
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Id. (emphasis added).
As the Examiner finds, however, Pietrzak discloses “an additive
process,” by which flexible, semi-flexible, extendable or reconfigurable
components or segments may be added to a helmet to achieve an accurate
fit. Ans. 12–14 (citing Pietrzak ¶¶ 7, 61, 88, 93). Further, as the Examiner
finds, Ebisawa discloses pads of different sizes may be added to a helmet to
achieve an accurate fit. Id. at 14–15 (citing Ebisawa ¶ 51, Figs. 8, 10E); see
also Ebisawa ¶ 61 (“pads 46 to 49 shown in FIG. 8 may comprise several
types having different hardness values and/or sizes (thickness, length, width
and the like)”). As noted above, we are persuaded Pietrzak teaches or
suggests customizing helmets through the addition of pads and Ebisawa
teaches or suggests adding pads of different sizes. Ans. 15. Thus, the
references’ combined teachings are not shown to represent a backward step.
We do not find this second reason persuasive of Examiner error.
3. No Reason to Combine the Teachings of Pietrzak and Ebisawa
Appellant further contends the Examiner fails to provide a reasonable
rationale to have combined the teachings of Pietrzak and Ebisawa to achieve
the systems, as recited in claim 1. Appeal Br. 10. In particular, Appellant
contends:
The Office alleges that the motivation to modify Pietrzak with
Ebisawa is to “attach[] at least one attaching pad to at least one
portion of the front, rear, left and right sides of the helmet such
that the head accommodating space of the helmet decreases.”
This logic is unavailing. There would be no need to decrease the
head accommodating space of Pietrzak as Pietrzak teaches a
custom fitted helmet that already optimally fits the user’s head.
Id. (emphasis added).
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Nevertheless, as the Examiner finds, Pietrzak discloses an additive
process of “inserting a liner comprising a plurality of contiguous pieces or a
plurality of separated pieces into a helmet base unit” for fitting a helmet to a
user’s head (Ans. 18 (quoting Pietrzak ¶ 7)) and Ebisawa discloses adding
pads of different sizes to achieve an accurate fit (id. at 20 (citing Ebisawa
¶ 51, Fig. 8, 10E)). As Ebisawa explains, “the size adjusting operation
preferably comprises attaching at least one attaching pad to at least one
portion of front, rear, left and right sides of the helmet such that the head
accommodating space of the helmet decreases.” Ebisawa ¶ 12. Thus, as
with Pietrzak, Ebisawa teaches or suggests an additive process for fitting a
helmet to a user’s head, but Ebisawa also clearly teaches or suggests using
pads of differing sizes to achieve the desired fit. Final Act. 4; cf. Spec. ¶¶ 7,
33.
As the U.S. Supreme Court explains, “Under the correct analysis, any
need or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007) (emphasis added). Thus, we are persuaded the Examiner provides
adequate rationale to have combined the teachings of Pietrzak and Ebisawa
to achieve the claimed systems, as the combination is the predictable use of
known elements according to their established functions. See Final Act. 4;
Ans. 10.
We do not find this third reason persuasive of Examiner error.
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4. Combination Contrary to Pietrzak’s Intended Use
Finally, Appellant contends the proposed modification of the
teachings of Pietrzak by those of Ebisawa would destroy Pietrzak’s intended
purpose. Appeal Br. 10–11. In particular, Appellant contends:
The intended purpose of Pietrzak is to provide a wholly custom
helmet which needs no manual adjustment. See e.g., figure 1-
7D, para. [0004]-[0006]. Ebisawa, on the other hand, requires
manual adjustment and describes several situations where an
acceptable fit cannot be even achieved. See e.g., para. [0052]
and [0059]. Thus, the proposed modification to Pietrzak would
result in a device which is no longer wholly custom and which
would require further adjustment, if an acceptable fit can even be
achieved.
Id. at 10. We disagree.
Rather than exclude manual adjustments, Pietrzak clearly
encompasses them. See Ans. 26. As the Examiner finds, Pietrzak discloses,
“The inner surface of the custom-fitted helmet can be formed by inserting a
custom-fitted liner into a stock helmet.” Pietrzak ¶ 9; see Ans. 24. As noted
above, Pietrzak explains, “The liner can be formed as a substantially flat
array of pieces and a surface of the substantially flat array of pieces can be
adjusted to mirror the computerized headform.” Pietrzak ¶ 7. As the
Examiner further finds, Ebisawa teaches or suggests that these “pieces” may
be of differing sizes. Ans. 26; see also Pietrzak ¶ 88 (“padding layer 84 can
be formed as a layer comprising a variable or differing thickness in which
various portions of the padded layer can be formed with different amounts of
padding or cushioning relative to specific portions of customer head 30 or
custom-fitted helmet 81.”). Consequently, we are not persuaded that the
modification of Pietrzak’s teachings in view of those of Ebisawa would
destroy Pietrzak’s intended purpose.
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We do not find this fourth reason persuasive of Examiner error.
On this record, we are not persuaded the Examiner errs in rejecting
claim 1 as obvious over the combined teachings of Pietrzak and Ebisawa,
and we sustain that rejection. Further, Appellant does not challenge the
obviousness rejections of dependent claims 3, 9, or 12, separately; and,
therefore, we also sustain the rejections of those claims. See Appeal Br. 11;
Ans. 26.
DECISIONS
1. The Examiner does not err in rejecting claims 1, 3, and 9 as obvious
over the combined teachings of Pietrzak and Ebisawa or of claim 12
as obvious over the combined teachings of Pietrzak, Ebisawa, Smith,
and Lemelson.
2. Thus, on this record, claims 1, 3, 9, and 12 are not patentable.
CONCLUSION
We affirm the Examiner’s rejection of claims 1, 3, 9, and 12.
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 3, 9 103 Pietrzak, Ebisawa 1, 3, 9
12 103 Pietrzak, Ebisawa,
Smith, Lemelson
12
Overall
Outcome
1, 3, 9, 12
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