STRATEGIC SPORTS LIMITED

Patent Trials and Appeals Board

Feb 18, 2020

14374226 - (D) (P.T.A.B. Feb. 18, 2020)

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.
14/374,226 07/24/2014 Tien Hou Cheng SSL-03US 8457
26875 7590 02/18/2020
WOOD, HERRON & EVANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
EXAMINER
SUTTON, ANDREW W
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
02/18/2020 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TIEN HOU CHENG
__________________

Appeal 2019-004874
Application 14/374,226
Technology Center 3700
____________________

Before STEFAN STAICOVICI, JAMES P. CALVE, and LISA M. GUIJT,
Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 1–14. Appeal Br. 3. 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 Strategic Sports Limited as the real party in interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Claims 1 and 8 are independent, with claim 1 reproduced below.
1. A helmet comprising:
a memory foam member formed from a memory foam
material, wherein the memory foam member comprises a
memory foam member inner side, and wherein the memory
foam material comprises a memory foam member outer side
opposite the memory foam member inner side; and
an impact-dissipating member formed from an impact-
dissipating member material, wherein the impact-dissipating
member comprises an impact-dissipating member inner side,
wherein the impact-dissipating member comprises an impact
dissipating member outer side opposite the impact-dissipating
member inner side, and
wherein the memory foam member outer side is in-
moulded with the impact dissipating member inner side.

REJECTIONS
Claims 1–4, 6, 11, and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rak (KR 20090072172 A, pub. July 2, 2009)2 and
Ytterborn (US 2008/0172774 A1, pub. July 24, 2008).
Claims 5 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Rak, Ytterborn, and Villari (US 3,994,022, iss. Nov. 30, 1976).
Claims 8, 10, 12, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rak, Ytterborn, and Cutler (US 6,241,926 B1, iss. June 5,
2001).
Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Rak, Ytterborn, Cutler, and Waterloo (US 3,764,250, iss. Oct. 9, 1973).

2 Refers English language translation dated Oct. 2, 2016, at http://engpat.
kipris.or.kr/pmt/patent/getTransRes.do?commKey=null&AN=10200701402
03&PK=B0102&MA=K2E&FROM=EN&NATION=KR. See Office
Action Appendix (Oct. 18, 2016)).
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ANALYSIS
Claims 1–4, 6, 11, and 13 Rejected over Rak and Ytterborn
Appellant argues the claims as a group. Appeal Br. 6–11. We select
independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). For
claim 1, the Examiner relies on Rak to teach a helmet with a memory foam
member (impact absorption layer 140) and an impact-dissipating member
(protective cap 110). Final Act. 3. The Examiner cites Ytterborn to teach an
in-moulding process that bonds the layers of such a helmet together. Id. at 3
(“Ytterborn teaches a helmet made of in-moulded” process), 7 (in-moulding
process used to assemble helmet layers); Ans. 2 (Ytterborn’s in[-]moulding
process bonds layers). The Examiner reasons it would have been obvious to
a skilled artisan to modify Rak with the in-moulding process of Ytterborn to
provide a safer helmet and improved manufacturing process. Final Act. 4.
Appellant argues that Ytterborn does not use in-moulding to attach a
memory foam to a shock absorbing layer. Appeal Br. 7. Appellant argues
that Ytterborn bonds a fiber penetration protection layer 3 between shell 1
and shock-absorbing layer 2, but does not bond comfort cladding 4, which is
comparable to the claimed memory foam. Id. Appellant also argues that
Ytterborn “merely teaches what Appellant has described in the background
of the specification as the problem with the prior art.” Id.
Appellant argues the “invention is intended to improve comfort and
reduce labor by in-moulding precisely located memory foam portions inside
the helmet” and there is “no suggestion whatsoever to utilize the process
disclosed in Ytterborn and modify this to apply memory foam members
which are attached to an impact-dissipating layer.” Id. at 8 (Ytterborn’s
process is such a different purpose for its in-moulding step it would be
unobvious to combine Ytterborn and Rak to arrive at the claims).
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In-Moulding Layers of Helmets is Known in the Art
Appellant’s Specification admits that
In-moulding, also known as injection-moulding and co-
injection moulding, is well-known in the art of helmet making
for combining a hard outer shell with an inner polystyrene
shape. Processes are known for adding a lacquered outer shell
to a styrofoam, polystyrene foam, or other foam helmet. Other
processes are known for injecting a pre-mixture of, for example
expandable poly styrene (EPS) beads and spongy particles into
a mould together so as to allegedly produce a helmet with a
balance between impact protection and impact absorption. In
some cases expandable poly propylene (EPP) beads are used as
well. Some processes apply different materials into the mould
at the same time, while other processes first form the pieces
separately and then affix them together afterwards.

Spec. 1 (Background).
Appellant admits that Ytterborn uses in-moulding3 to bond a fiber
penetration protection 3 between outer shell 1 and shock-absorbing layer 2.
Appeal Br. 7. This arrangement is illustrated in Figure 1 of Ytterborn,
which is reproduced below.

Figure 1 of Ytterborn is a cross-section of a helmet outer shell 1,
shock absorbing layer 2 and penetration protection 3. Ytterborn ¶ 20.

3 The terms “mould” and “mold” and “in-mould” and “in-mold” are used
interchangeably in this Decision as in the Specification and prior art.
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In particular, Ytterborn vacuum forms outer shell 1 and attaches fiber
penetration cloth 3 inside vacuum formed shell 1 in a female mold part. Id.
¶ 27. Then, Ytterborn positions a male mold part in the form and blows
EPS/EPP spheres into the form and inside shell 1 and cloth 3 with hot gas so
that the spheres expand and bond to each other and shell 1 to stabilize fibers
of penetration protection cloth 3 in a final position. Id. ¶¶ 21–23, 27. This
process matches the prior art process described in Appellant’s Specification
above in which EPS or EPP beads are injected into a mould to make helmets
with a balance between impact protection and impact absorption. Spec. 1.
Reasoning to Modify Rak with Ytterborn’s In-Moulding Process
The Examiner’s proposes to use a known in-moulding process, which
is admitted as prior art in the Specification and used by Ytterborn, to bond
the adjacent layers of Rak’s helmet, namely impact absorption layer 140 and
protective cap 110, as claimed, to improve Rak in the same way for similar
results. We reproduce Figure 2 of Rak below to illustrate the configuration
that the Examiner is modifying with the in-moulding process of Ytterborn.

Rak’s Figure 2 above illustrates a section of a helmet with impact
absorption layer 140 made of memory foam attached to protective cap 110.
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Using a known technique that has been used to improve one device to
improve similar devices in the same way is obvious unless its application is
beyond the level of ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007). An implicit motivation to combine also exists
when an “improvement” makes a product stronger, cheaper, faster, lighter,
smaller, more durable, or more efficient. DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
The Specification teaches that in-moulding is a well-known way to
bond materials with different properties (hard outer shell and foam helmet
layer layer) together to produce a stronger composite helmet with a balance
between impact protection and impact absorption properties. See Spec. 1.
Ytterborn also blow-moulds helmet layers to produce a composite,
lightweight helmet. Ytterborn ¶ 5. Ytterborn’s in-moulding process bonds
shock absorbing layer 2, protective cloth 3, and shell 1 together in one step
that permanently secures all three elements of the helmet. See id. ¶ 27.
Rak molds protective cap 110 and attaches impact absorption layer
140 by adhering it closely to the inside face of protective cap 110. Rak 9,
11. Like Ytterborn, Rak adheres nonwoven fabric/mesh 120a, 120b (not
shown in Figure 2 above) between protective cap 110 and impact absorption
layer 140. Id. at 10–11. Rak pressurizes and adheres fabric/mesh 120a,
120b into the inner side of protective cap 110. Then, impact absorption
layer 140 is pressurized into the fabric/mesh and protective cap 110 and
these layers are molded together to form a helmet. Id. at 9–11. Rak’s use of
molds to form a helmet by adhering its layers together (id. at 10) suggests
that modification with Ytterborn’s in-moulding teachings would improve
Rak’s helmet similarly by producing stronger bonds between layers in a
single mold step to produce a lightweight helmet. See Ytterborn ¶¶ 5, 27.
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Obviousness of In-Moulding Memory Foam in a Helmet
Appellant recognizes that Ytterborn “in-moulds” helmet materials as
claimed. Reply Br. 2 (“The process disclosed in Ytterborn is intended to
bond a penetration protection layer 3 which can be, for example, fibers, in
between the shell 1 and the shock absorbing layer 2.”). Appellant argues,
however, that “Ytterborn does not disclose the use of in-moulding to attach a
memory foam to a shock absorbing layer.” Id. (emphasis added). Appellant
argues that it would not have been obvious to in-mould a layer of memory
foam to an impact-dissipating member notwithstanding the admitted prior art
and teachings of Ytterborn to use in-moulding to permanently secure layers
of material in a helmet together. See Appeal Br. 7–9.
Appellant argues that the “invention is intended to precisely apply
memory foam as desired to specific locations of an impact-dissipating layer,
thus providing a more comfortable helmet and, at the same time, reducing
labor costs.” Id. at 8. Appellant also argues that Ytterborn “discloses such a
different purpose of its in-moulding step as compared to Appellant’s
intended purpose, it would be unobvious for one of ordinary skill in the art
to combine the disclosure of [Ytterborn] with the disclosure of Rak to arrive
at the present invention.” Id.
These arguments are not persuasive primarily because they are not
commensurate with the scope of claim 1. Claim 1 recites a helmet rather
than a method of making a helmet. It does not recite that the memory foam
member is configured or applied in any particular way much less in specific
locations to promote comfort and reduce labor costs. Claim 1 only recites “a
memory foam member formed from a memory foam material” with an inner
side and an outer side. Appeal Br. 15 (Claims App.). The “outer side is in-
moulded with the impact-dissipating member inner side.” Id.
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Arguing that Ytterborn’s purpose differs from Appellant’s purpose is
not persuasive. The Examiner’s reasons to combine prior art teachings may
differ from an applicant’s inventive purpose as long as the reasons are
supported by rational underpinnings. In re Kahn, 441 F.3d 977, 988, 990
(Fed. Cir. 2006) (“[T]he skilled artisan need not be motivated to combine
[the prior art] for the same reason contemplated by [the inventor].”) (citation
omitted); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“As long as
some motivation or suggestion to combine the references is provided by the
prior art taken as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventor.”) (citation omitted).
Here, Ytterborn teaches the well-known use of in-moulding to attach
different layers of a helmet together to permanently bond the members into
an integral helmet unit. The in-moulding process forms a helmet from many
different materials with different properties and purposes that give a helmet
the desired properties such as penetration protection, shock absorption, and
comfort of wear to a user. Ytterborn ¶¶ 3–17. In-moulding is an efficient,
effective process to permanently adhere layers of different materials to form
an integral device such as a helmet and is so recognized in the art. Spec. 1.
A skilled artisan is a person of ordinary creativity with a desire to optimize
variables of processes and products in known devices. KSR, 550 U.S. at
421; In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017).
As discussed above, the Examiner is employing this known technique
as recognized in the prior art and Appellant’s Specification for multi-layered
composite helmets to improve the properties of the multi-layered, composite
helmet of Rak similarly and to improve the efficiency of the manufacturing
process and helmet safety, which are general motivations recognized by our
reviewing court. See Final Act. 4, 7; Ans. 2–3; DyStar, 464 F.3d at 1368.
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Appellant has not provided persuasive scientific or technical evidence
that this modification of Rak’s helmet making process is beyond the level of
ordinary skill in the art, or that a skilled artisan would be incapable of, or
dissuaded from, using Ytterborn’s in-moulding process to in-mould Rak’s
memory foam impact absorption layer 140 to rigid urethane foam protective
cap 110 for similar, predictable results and advantages taught in the art.
Claim 1 recites “a memory foam member formed from a memory
foam material” and “an impact-dissipating member formed from an impact-
dissipating member material.” The Specification discloses many types of
memory foam including polyurethane and polyethelyene in many forms
(beads, paste, liquid, foamed members) with melting temperatures of about
60 ºC to about 250 ºC. Spec. 4–6, 9–10. If the memory foam melting point
is less than the impact-dissipating material melting point, e.g., 0 ºC to about
100 ºC lower or within about +/- 15 ºC, then the temperature of the impact
dissipating material will help melt at least the memory foam outer surface to
“permanently bind” the memory foam to the impact dissipating member so
the materials intermingle at a molecular level. Spec. 8–10.
Notably, however, claim 1 does not require the in-moulded memory
form and impact-dissipating members to “permanently bind” as is recited in
claim 8. Appeal Br. 15, 17 (Claims App.). Nor does claim 1 require these
materials to intermingle with one another at a molecular level as part of the
in-moulding process. Claim 1 recites none of these features or properties.
The Specification discloses broadly that “in-moulding” is known as
“injection-moulding” and “co-injection molding.” Spec. 1. Claim 1 recites
the “in-moulding” of memory foam and impact-dissipating members. We
are not permitted to read any other unclaimed features into claim 1. In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
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Because an artisan must be presumed to know something about the art
apart from what the references disclose, the skilled artisan would reasonably
expect in-moulding to bond two different materials together as taught by
Ytterborn and known in the prior art (Spec. 1). See In re Jacoby, 309 F.2d
513, 516 (CCPA 1962). In-moulding bonds materials together to improve a
product’s properties and manufacturing efficiency. See Final Act. 4.
Secondary Evidence of Non-Obviousness
Appellant introduces a Declaration of Tien Hou Cheng, the inventor,
as evidence of unexpected advantages of the invention. Appeal Br. 9–10.
Mr. Cheng declares that the claimed in-moulding process allows memory
foam sections to be applied in a wide variety of shapes and forms easily and
quickly compared to the prior art method of attaching sections by hand with
adhesive. Cheng Decl. 2. The memory foam sections do not fall off, and
they cannot be peeled off and can be placed at lower cost. Id. at 2–3.
This evidence merely states the expected properties of in-moulding
two materials so they permanently bond together. Furthermore, claim 1
recites a monolithic “memory foam member” rather than memory foam
sections that are arranged in a particular way. Claim 1 does not cover these
additional advantages touted by Mr. Cheng for in-moulding memory foam.
Mr. Cheng’s testimony that customers report that the in-moulding
“boosts the sales of their products” provides very little probative evidence of
non-obviousness. See id. at 3. Mr. Cheng’s testimony is based on hearsay
rather than direct evidence of actual sales, and it provides no sales numbers
or market share. See In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996)
(absent evidence that sales are a substantial quantity in the relevant market,
bare sales numbers provide a weak showing of commercial success);
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Weighing all of the evidence anew, we determine that the weak
evidence of secondary considerations does not outweigh the strong showing
of obviousness when all of the evidence is weighed together. See Rothman
v. Target Corp., 556 F.3d 1310, 1322 (Fed. Cir. 2009) (holding that a strong
showing of obviousness may stand even against considerable secondary
considerations evidence); Wyers v. Master Lock Co., 616 F.3d 1231, 1246
(Fed. Cir. 2010) (“secondary considerations of nonobviousness . . . simply
cannot overcome a strong prima facie case of obviousness. . . . where the
inventions represented no more than ‘the predictable use of prior art
elements according to their established functions,’ KSR, 550 U.S. at 417 . . .,
the secondary considerations are inadequate to establish nonobviousness as a
matter of law.”); Asyst Techs., 544 F.3d at 1316 (holding that the secondary
consideration evidence did not overcome the strong case of obviousness in
the substitution of a multiplexer, a known alternative to Hesser’s bus that
operates in a well-known manner); Agrizap, Inc. v. Woodstream Corp., 520
F.3d 1337, 1344 (Fed. Cir. 2008) (holding that the objective evidence of
nonobviousness cannot overcome a strong prima facie case of obviousness).
Thus, we sustain the rejection of claim 1 and claims 2–4, 6, 11, and
13, which fall with claim 1.
Claims 5 and 7 Rejected over Rak, Ytterborn, and Villari
Appellant does not present arguments for the rejection of claims 5 and
7. See Appeal Br. 6–14. Therefore, we summarily sustain this rejection.
Claims 8, 10, 12, and 14 Rejected over Rak, Ytterborn, and Cutler
Independent claim 8 recites a process for forming a helmet with mold
portions and in-moulding a memory foam member and an impact-dissipating
material to permanently bond them. Appeal Br. 16–17 (Claims App.).
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Appellant argues the claims as a group. Appeal Br. 11–13. We select
claim 8 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Regarding claim 8, the Examiner relies on Rak to teach the claimed
process steps and Cutler to teach the claimed male and female mold parts.
Final Act. 5–6 (citing Rak, p. 6 and Fig. 1 and Cutler, Fig. 6). The Examiner
determines it would have been obvious to a skilled artisan to modify Rak’s
process to use Cutler’s mould forms to provide an integral process allowing
for the helmet to be moulded at once. Id.
Appellant reasserts arguments made for claim 1 for the rejection of
claim 8. Appeal Br. 12. The arguments are not persuasive because claim 8
does not require memory foam to be made in sections or particular shapes.
Appellant also argues that a skilled artisan would not combine Cutler
with Rak and Ytterborn, and the combined teachings would not produce the
invention of claim 8. Appeal Br. 12. Appellant argues that claim 8 requires
providing a memory foam material and applying it to a male mould either as
a memory foam member or as a memory foam material and providing an
impact-dissipating material and applying it into the hollow mould, and the
combination does not teach or suggest these steps. Id. at 12–13.
The Examiner has the better position. Rak teaches to cast the outer
protective cap 110 in a mold having the outside shape of helmet 100. Rak,
10. Thus, Rak teaches the step of applying the impact-dissipating material
into a hollow mould as recited in claim 8.
Rak also pressurizes fabric/mesh 120b-1/120a into the inner side of
protective cap 110. Then, impact absorption layer 140 is pressurized into
the upper portion of the inner side of protective cap 110 over fabric/mesh
120b-1/120a to form helmet 100. Id. at 11. Thus, Rak applies a memory
foam member (impact absorption layer 140) into a mould as claimed.
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In a similar manner, Ytterborn teaches to vacuum form outer shell 1.
Fiber cloth 3 is placed inside outer shell 1 and both elements are placed in a
female part of a form. Ytterborn ¶ 27. Then, a male part is positioned in the
form and EPS or EPP spheres are blown into the form and inside shell 1 and
hot gas is used to make the spheres expand to bond to each other and shell 1
as an inner layer of shock absorbing material 2. Id. Therefore, Ytterborn
applies impact-dissipating outer shell and fiber cloth 3 into a hollow mould
as claimed. Ytterborn applies shock absorbing material 2 to a male mould
and in-moulds the material in the mould as claimed. Id. As applied to Rak,
this process would apply and in-mould memory foam in the male mould.
The Examiner relies on Cutler to illustrate male and female moulds
that form a hollow mould as claimed. Final Act. 6.
The Examiner’s reason for combining the teachings of the references
is supported by a rational underpinning based on the express teachings of the
references that this process provides an integral process to allow a helmet to
be molded as a multilayer construct. See Rak at 11; Ytterborn ¶ 27; see also
Cutler, 6:33–7:31. These underpinnings address Appellant’s hindsight
argument. See Appeal Br. 13 see also In re Cree, Inc., 818 F.3d 694, 702
n.3 (Fed. Cir. 2016) (holding appellant’s hindsight argument was addressed
by showing that a proper motivation existed to combine the references).
In view of the teachings of Rak to place multiple layers into moulds
under pressure and Ytterborn to in-mould such multiple layers of a helmet
by applying hot gas to melt the EPS/EPP beads to form a composite helmet
in a mold form, the Examiner had a reasonable basis to determine that
permanent bonding results between the helmet layers as claimed such that a
memory foam member of Rak would be bonded permanently to an impact-
dissipating layer through such an in-moulding process as claimed.
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Appellant has not provided contrary evidence. See In re Schreiber,
128 F.3d 1473, 1478 (Fed. Cir. 1997) (when the Patent Office has reason to
believe that a functional limitation asserted to be critical to establishing
novelty may be an inherent characteristic of the prior art, it can require an
applicant to prove that the subject matter disclosed in the prior art does not
possess that claimed characteristic). Nor has Appellant provided evidence
that a skilled artisan would not be motivated to in-mould memory foam and
impact-dissipating layers of Rak for similar, predictable results and benefits.
Thus, we sustain the rejection of claim 8 and claims 10, 12, and 14,
which fall therewith.
Claim 9 Rejected over Rak, Ytterborn, Cutler, and Waterloo
Appellant does not present arguments for the rejection of claim 9. See
Appeal Br. 6–14. Therefore, we summarily sustain this rejection.
CONCLUSION
Claims
Rejected
35 U.S.C.
§
Reference/Basis Affirmed Reversed
1–4, 6, 11,
13
103(a) Rak, Ytterborn 1–4, 6, 11,
13

5, 7 103(a) Rak, Ytterborn,
Villari
5, 7
8, 10, 12, 14 103(a) Rak, Ytterborn,
Cutler
8, 10, 12,
14

9 103(a) Rak, Ytterborn,
Cutler, Waterloo
9
Overall
Outcome
1–14
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED