Alexander HernandezDownload PDFPatent Trials and Appeals BoardFeb 16, 20222021005203 (P.T.A.B. Feb. 16, 2022) 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. 17/144,636 01/08/2021 Alexander Luis Hernandez PD7605.3002 5364 29365 7590 02/16/2022 LAW OFFICES OF HOWARD L. HOFFENBERG, ESQ. 10940 Wilshire Boulevard, Suite 1600 LOS ANGELES, CA 90024 EXAMINER ZHAO, AIYING ART UNIT PAPER NUMBER 3732 MAIL DATE DELIVERY MODE 02/16/2022 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ALEXANDER LUIS HERNANDEZ ____________________ Appeal 2021-005203 Application 17/144,636 Technology Center 3700 ____________________ Before STEFAN STAICOVICI, WILLIAM A. CAPP, and JILL D. HILL, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Alexander Luis Hernandez (“Appellant”)1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision of April 28, 2021, rejecting claims 1-4, 8-15, and 17-22. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellant identifies the real party in interest as the inventor, Alexander Luis Hernandez. Appeal Br. 4. Appeal 2021-005203 Application 17/144,636 2 BACKGROUND Independent claims 1 and 11 are pending. Claim 1, reproduced below, illustrates the claimed subject matter, with certain limitations italicized: 1. A mask hat for wearing by a human user having a head with a nose and a mouth and comprised of: a. a hat member having: i. an interior surface and ii. a bottom part where relative to being worn on the human user’s head, there is a fore-left temple hat region, a fore-right temple hat region, an aft-left temple hat region and an aft-right temple hat region b. a mask member that: i. relative to being deployed on the human user’s face, the mask member has a right upper mask region, a left upper mask region, a right lower mask region and left lower mask region ii. is capable of snugly covering the mouth and nose of the human user, iii. has a filtration cutoff which impedes the passage of a droplet and particle with the allowance for the passage of air there through and is capable of nesting on the interior surface of the hat member in substantial conformity to a portion of the interior surface of the hat member and c. an attachment means that: i. is comprised of four or more elastic cords with at least one cord fixedly connected between a right upper mask region and a fore-right temple hat region, at least one cord fixedly connected between a left upper mask region and a fore-left temple hat region, at least one cord fixedly connected between a right lower mask region and an aft- right temple hat region and at least one cord fixedly connected between a left lower mask region and an aft-left temple hat region; Appeal 2021-005203 Application 17/144,636 3 ii. is elastically stretchable and contractable, which fixedly connects the hat member to the mask member such that there is enough stretchability to stretch the mask member away from the hat member and position the mask member over the human user's nose and mouth and enough contractability to contract to a degree where the mask member is held to snugly cover the human user's mouth and nose, whereby the human user can wear the mask hat under conditions where there is no desire for protection against inhaling/exhaling a droplet and particle with the mask member is capable of being flipped and landing into a stowed position against the interior surface of the hat member and the human user can wear the mask hat under conditions where there is a desire for protection against inhaling/exhaling a droplet and particle with the mask member deployed substantially over the human user's mouth and nose. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Huang2 CN107467767 A Dec. 15, 2017 Wyatt US 5,269,024 Dec. 14, 1993 Rain Noe, Hide-a-Mask: On-Demand Face Mask That Pops Out of a Baseball Cap, Core 77 (2020), https://www.core77.com/posts/100864/Hide-a-Mask-On-Demand-Face- Mask-That-Pops-Out-of-a-Baseball-Cap 2 We derive our understanding of this reference from the English language translation contained in the image file wrapper of this application. All references to the text of this document are to portions of the translation. Appeal 2021-005203 Application 17/144,636 4 REJECTIONS3 I. Claims 1-4, 8-15, and 17-22 stand rejected under 35 U.S.C. § 112 as indefinite. Final Act. 5. II. Claims 1-4, 8, 11-15, 17, and 20 stand rejected under 35 U.S.C. § 103 as unpatentable over Huang and Wyatt. Final Act. 6. III. Claims 9, 10, 18, 19, 21, and 22 stand rejected under 35 U.S.C. § 103 as unpatentable over Huang, Wyatt, and Noe. Final Act. 18. ANALYSIS Rejection I - Indefiniteness The Examiner finds that claims 1, 2, 11, and 12 are indefinite because the meaning of “filtration cutoff” is unclear. Final Act. 6. The Examiner contends that Appellant’s Specification “does not provide a standard for ascertaining the claimed feature,” such that a skilled artisan “would not be reasonably apprised of the scope of the invention.” Id. Appellant argues, inter alia, that their Specification expounds upon the term “cutoff” as meaning “impeding” and “blocking” (Spec. ¶ 60 (discussing droplet “blocking” for certain mask materials)), and “[t]he term ‘cutoff’ is conventionally used around the world in connection with filtration” and defined by the Cambridge Online Dictionary as “a fixed point or limit at which something is stopped.” Appeal Br. 16-17. Paragraphs 29 and 58 of Appellant’s Specification use the term “filtration cutoff” in a manner similar to the droplet blockage described in paragraph 60 cited by Appellant. 3 Objections to the drawings and claims are also pending. Ordinarily, an objection is petitionable, and a rejection is appealable. Appeal 2021-005203 Application 17/144,636 5 The Examiner responds that Appellant’s Specification never provides a definition for the term “cutoff.” Ans. 4. Considering the entirety of Appellant’s disclosure, we disagree with the Examiner’s finding that the term “filtration cutoff” renders the claims indefinite. The Specification need not explicitly define each claim term. Appellant’s Specification, including the claims, when considered, reasonably inform a skilled artisan that the “filtration cutoff” is a characteristic of the mask, such as material type, that impedes the droplet and particle passage while allowing passage of air. The Examiner also finds that claim 20 is indefinite because its limitation “whereby the human user has a mask on-person without conscious thought beyond routinely wearing a hat” conveys a concept that is unclear. Final Act. 6. The rejection, however lacks an explanation of what makes this claim limitation unclear. For the above reasons, we do not sustain the indefiniteness rejection. Obviousness Rejection II - Claims 1-4, 8, 11-15, 17, and 20 Independent claims 1 and 11 recite, inter alia, a mask member that “is capable of nesting on the interior surface of the hat member in substantial conformity to a portion of the interior surface of the hat member.” The Examiner finds that Huang discloses, inter alia, the invention recited in independent claim 1, including a mask member 4 “capable of nesting on the interior surface of the hat member.” Final Act. 7-8. The Examiner also finds that Wyatt also discloses, inter alia, a mask hat 10 where the mask portion is capable of nesting at an interior surface of the hat member. Final Act. 8-9 (claim 1), 12-13 (claim 11). Regarding method Appeal 2021-005203 Application 17/144,636 6 claim 20, which recites providing a user with a mask hat according to claim 1, the Examiner finds that Huang and Wyatt, in combination, disclose the mask hat according to claim 1. Id. at 17. Appellant argues, inter alia, that Huang and Wyatt fail to teach a mask member “capable of nesting on the interior surface of the hat member in substantial conformity to a portion of the interior surface of the hat” as recited in independent claims 1 and 11. Appeal Br. 17-18. Appellant contends that “[t]he nesting limitation has a substantial and real-world advantage over the prior art” that “in cooperation with other limitations, facilitates the quick and easy flipping of the mask into a storage position.” Id. at 18-19. The Examiner does not address this argument in the Answer. Nesting, as disclosed in Appellant’s Specification, refers to the way the mask is placed or stored inside of the hat. The Specification, including the claims, describes this nesting as being “in substantial conformity to a portion of the interior surface of the hat member.” Spec. ¶ 66. While this language is functional and includes the term “substantially,” it must be afforded appropriate weight and cannot be read from the claim. A functional limitation must be evaluated and considered for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used. Huang’s device includes a cap and a mask 4, the mask being put into a storage bag 5 in the hat “without affecting the hat itself” (Huang ¶ 16). The storage bag 5 is “matched with the size of the mask 4” (Huang ¶ 22) and the storage bag 5 is described as flat “when not in use” (Huang ¶ 28), implying that the storage bag 5 is not flat when it contains the mask 4. Further, Huang’s Figure 1 shows its mask 4 appearing larger than its storage bag 5. Appeal 2021-005203 Application 17/144,636 7 While it is possible that Huang’s mask 4 is capable of nesting “in substantial conformity to a portion of the interior surface of the hat member,” the Examiner has not explained why this is so, or why the mask placed within the storage bag is “nested.” The same holds true for Wyatt. The Examiner simply relies on Figures 1 and 2 of Wyatt to establish that its mask is capable of nesting within its hat. This is not sufficient evidence to establish that Wyatt’s mask 22 is capable of being nested in its hat 12 “in substantial conformity to a portion of the interior surface” of the hat 22, as called for by each of independent claims 1 and 11. The Examiner’s rejection provides us with no evaluation or interpretation of the functional nesting limitation of independent claims 1 and 11, or why that limitation is met by Huang and/or Wyatt. The Answer does not cure this deficiency. Solely for this reason, we do not sustain the pending rejection of independent claims 1 and 11. Claims 2-4 depend from claim 1. Claims 12-15, 17, and 20 depend from claim 11. We do not sustain Rejection II. Rejection III - Claims 9, 10, 18, 19, 21, and 22 Claims 9, 10, 21, and 22 depend directly or indirectly from claim 1. Claims 18 and 19 depend directly or indirectly from claim 11. The Examiner does not find that Noe discloses the mask being capable of nesting, or otherwise cures the deficiency of Huang and Wyatt. For this reason, we do not sustain Rejection III. Appeal 2021-005203 Application 17/144,636 8 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 8-15, 17-22 112 Indefiniteness 1-4, 8-15, 17-22 1-4, 8, 11-15, 17, 20 103 Huang, Wyatt 1-4, 8, 11- 15, 17, 20 9, 10, 18, 19, 21, 22 103 Huang, Wyatt, Noe 9, 10, 18, 19, 21, 22 Overall Outcome 1-4, 8-15, 17-22 REVERSED Copy with citationCopy as parenthetical citation