11614685 (B.P.A.I. Feb. 13, 2012)

Ex Parte CHO

Board of Patent Appeals and InterferencesFeb 13, 2012

11614685 (B.P.A.I. Feb. 13, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/614,685 12/21/2006 BYOUNG-WOO CHO 66560/06-728 9772 22206 7590 02/13/2012 FELLERS SNIDER BLANKENSHIP BAILEY & TIPPENS THE KENNEDY BUILDING 321 SOUTH BOSTON SUITE 800 TULSA, OK 74103-3318 EXAMINER CLINE, SALLY COLSON ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 02/13/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte BYOUNG-WOO CHO __________ Appeal 2010-007139 Application 11/614,685 Technology Center 3700 ___________ Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and DENISE M. POTHIER, Administrative Patent Judges. PER CURIAM DECISION ON APPEAL Appeal 2010-007139 Application 11/614,685 - 2 - Yupoong, Inc. (“Appellant”), the real party in interest, appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-10 and 12-16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE Claims 1-10,1 12, 13, 15, and 16 were finally rejected by the Examiner under 35 U.S.C. § 103(a) as obvious over Cho (US 2005/0160518 A1), Klein (US 1,648,551), and Schneider (US 5,265,669). (Ans. 3-6.) Claim 14 was finally rejected by the Examiner under 35 U.S.C. § 103(a) as obvious over Cho, Klein,2 Schneider, and Garza (US 5,893,170). (Ans. 6.) APPELLANT’S INVENTION Appellant discloses a baseball cap with a double-structure headwear. (Spec. ¶¶ 0010-0011). An embodiment of the headwear is shown by Appellant’s Figs. 2 and 4. Fig. 2, reproduced below (left), shows an underside view of the cap. (Spec. ¶ 0018). Fig. 4, reproduced below (right), shows a cross-sectional view of the cap along lines B-B of Fig. 2. (Spec. ¶ 0020). 1 Although the Examiner erroneously includes cancelled claim 11 in this rejection, we nonetheless present the correct claim listing here for clarity. See App. Br. 2 (indicating that claim 11 was cancelled). Accord Ans. 2 (confirming this status as correct). 2 Claim 14 depends from claim 12, which is rejected over Cho, Klein, and Schneider. Ans. 3, 6. The Examiner does not include Klein in the heading of the rejection for dependent claim 14. Ans. 6. We presume the Examiner’s failure to list Klein was an oversight. App App seco stitch 23 al The show is co lowe 0038 inven eal 2010-0 lication 11 Figures 2 The head nd wearing ing fabric ong the bo first weari n), a core mpleted b r folded p and 0049 Claim 1, tion as fo 1. a 07139 /614,685 and 4 dep wear incl portion 2 pieces 21 ttom edge ng portion member 1 y stacking ortions 16, ). reproduce llows: A dou first weari icting var udes an ou 1. The se a together of the hea 11 is simi 3(12), and the wearin 26 togeth d below w ble-structu ng portion - 3 - ious views ter first w cond wear and stitch dwear’s c larly form tape 14. g portions er with a s ith paragr re headw ; and of Appel earing por ing portion ing a core rown (see ed of fabri The doubl 11, 21 an titch line 1 aphing ad ear compri lant’s head tion 11 an 21 is form member 2 sewing lin c pieces 1 e-structure d then stit 25. (Spec ded, sets f sing: wear d an inner ed by 2 and tape e 115). 1a (not headwear ching their . ¶¶ 0037- orth the Appeal 2010-007139 Application 11/614,685 - 4 - a second wearing portion being disposed over an entirety of an inner side of the first wearing portion, wherein the first and second wearing portions respectively have a lower portion folded to a predetermined height in a vertical direction and sewed to each other, and the first wearing portion has a lower thermal conductivity and lower contact thermal sensation than that of the second wearing portion and also the first wearing portion has a seam portion for connecting a plurality of fabric pieces and being pre-sewed with each other and sewed in one-to-one with a tape of a predetermined width, and the second wearing portion has a seam portion for connecting a plurality of fabric pieces and being pre-sewed with each other. CONTENTIONS 1. § 103(a) rejection of claims 1-10, 12, 13, 15, and 16 over Cho, Klein, and Schneider A. Claims 1, 3-10, 12, 13, 15, and 16 The Examiner finds that: (1) Cho teaches the first and second wearing portions (e.g., gores 212 and stretchable fabric 236 respectively) are stitched together at respective lower fold portions (see Fig. 8) and (2) Klein teaches a reversible crown with a second wearing portion (e.g., 12) disposed over a first wearing portion’s (e.g., 11) entire inner side. Ans. 4. The Examiner proposes modifying Cho by extending Cho’s second wearing portion's fabric (e.g., 236) completely over Cho’s first wearing portion’s (e.g., 212) inner side, as taught by Klein. Id. The Examiner determined that it would have App App been rever beca no an cove arran findi struc porti repro secti crow show swea uppe fabri elast 3 Sw eal 2010-0 lication 11 obvious t sible crow Appellan use Klein alogous s ring Cho’s gement w Does Kl We agre ng that Ch ture are at ons, as cla duced to t onal view n structur n, the sec tband 230 r and lowe c 236 over ic band lay eatband 23 07139 /614,685 o combine n that con t argues: expressly weatband cap with ould be ho ein teach a e with the o’s sweatb tached at l imed. Ch he right, s of Cho’s s e. (Cho ¶ ond wearin 3) is forme r edges of a foam la er 234. (C 0 is descr Klein’s te ceals dirt. (1) Klein t teaches a h structure ( a sweatban t, impract way from AN Examiner and and c ower folde o’s Fig. 8, hows a cro weatband 0040). As g portion d by foldi its stretch yer 233 an ho ¶ 0076 ibed in ¶ 0 - 5 - aching wi Id. eaches aw at with no App. Br. 6 d is non-o ical, and u ISSUE the propo ALYSIS ’s rown d ss- and (e.g., ng the able d ). 076 but is th Cho’s c ay from co need for a -7; Reply bvious be ncomforta sed combi not shown ap to yield mbining w sweatban Br. 3-4) an cause the ble (App. nation with in the Fig a ith Cho d and has d (2) Br. 7). Cho? ures. App App The edge The 246) 0080 fabri crow porti Klein rever eal 2010-0 lication 11 Figure 8 first weari of the gor sweatband at their re ). We also c 236 of th n layer or on’s entire ’s Fig. 1, sible head F 07139 /614,685 showing a ng portion es 212 ove and crow spective lo agree with e sweatba a second w inner side reproduce wear. (Kl igure 1 dep sectional (e.g., gore r a shape n structure wer folde the Exam nd 230 ma earing po , as taugh d below, s ein 1:31-3 icts a cen - 6 - view of th s 212) is f tape 218. are sewn d portions iner’s find y be simp rtion disp t by the re hows a cro 4). tral lateral e headwea ormed by (Cho ¶¶ 0 together (e , as recited ing that C ly extende osed on th versible he ss-section section of r’s sweatb folding th 071-73 an .g. elastic in claim 1 ho’s stretc d to form e first wea adwear in al view of the cap and e lower d 0081). thread . (Cho ¶ hable an inner ring Klein. Klein’s Appeal 2010-007139 Application 11/614,685 - 7 - As can be seen, a first crown 11 (e.g., a first wearing portion) and a second crown 12 (e.g., a second wearing portion) are used to create a reversible cap, i.e., turning the cap inside out. Extending Cho’s sweatband fabric 236, as proposed, would predictably yield no more than the reversible function of Klein’s first and second crowns 11, 12.4 Appellant does not dispute the above findings. Rather, Appellant argues that it would not have been obvious to extend Cho’s sweatband to cover the entirety of Cho’s crown because Klein teaches away from using a sweatband. (App. Br. 6-7). The argument presumes that the Examiner’s modification removes the functionality of Cho’s sweatband. However, the modification merely looks to Klein’s teaching to extend Cho’s stretchable fabric 236, while retaining the sweatband’s foam and elastic band layers 233, 234. (See Ans. 4). That is, the Examiner is relying on Klein for the purpose of illustrating that extending a second wearing portion over the entire inner side of first wearing portion to create a reversible cap is known by artisans and not for Klein’s material properties. See id. The argument also neglects that, even assuming arguendo Cho’s modified cap loses the benefit of the sweatband, the cap nonetheless gains the benefit of reversible crown layers. Such tradeoffs can provide a reasonable basis for a modification, and the combined headwear need not include every disclosed feature of a prior art. Also, references must be considered as a whole and are good for all that they teach. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985). Moreover, assuming such a modification is made, Klein teaches another known 4 The proposed modification does not add Klein’s flap 28 to Cho’s cap. (Ans. 4:11-16). Appeal 2010-007139 Application 11/614,685 - 8 - material (e.g., leather, etc.) to ordinary artisans for the second wearing portion that is waterproof or handles sweat in another manner. See Klein, lines 68-74. Appellant further argues that using Cho’s sweatband fabric 236 as a second wearing portion would make the cap too “hot, impractical, and uncomfortable.” (App. Br. 7:1-8). Appellant presents no evidence, however, in support of this assertion. Such speculative attorney argument cannot take the place of evidence lacking in the record. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Additionally, even if the modification renders the headwear somewhat inferior in certain aspects, this does not teach away from the combination or render the combined Cho/Klein device patentable. See In re Gurley, 27 F.3d 551, 554 (Fed. Cir. 1994). Appellant relies on the same arguments for independent claim 12 as were presented for claim 1 (App. Br. 8), and we refer to the above discussion. Accordingly, we sustain the obviousness rejection of claim 1 over Cho, Klein, and Schneider, as well as the rejection of claims 3-10, 12, 13, 15, and 16, not separately argued with particularity (App. Br. 4-8). B. Claim 2 Claim 2 depends from claim 1 and requires “first and second core members” to be disposed respectively on each of the folded portions of the first and second wearing portions. The Examiner maps Cho’s foam layer 232 and shape tape 218 to the recited core members and states it would have been obvious to place foam and tape in both folded portions. See Ans. 5. Appellant argues that the above structures are not core members as claimed Appeal 2010-007139 Application 11/614,685 - 9 - or a similar structure because, in light of Appellant’s Specification, “core members” absorb sweat and provide cushioning. (App. Br. 7:25-8:4 (citing to Spec. ¶ 0044)5). ISSUE Under § 103, did the Examiner err in rejecting claim 2 by finding that Cho, Klein, and Schneider collectively teach or suggest first and second core members respectively disposed on each folded lower portion? ANALYSIS Notably, claim 2 recites the core members, but not that the core members have a sweat absorbing or cushioning properties. We therefore give the recitation, “core members,” its broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations and quotations omitted). Appellant’s Specification does not define the core members 13 and 22 to include sweat absorbing or cushioning properties, but only that they may absorb sweat and provide cushioning. (Spec. ¶¶ 0033 and 0044). Thus, contrary to Appellant’s assertion (App. Br. 7), we do not find the “core members” recited in claim 2 must absorb sweat or provide cushioning or import a particular embodiment discussed in the disclosure into claim 2. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). 5 Appellant mistakenly cites the Specification at ¶ 0046. Appeal 2010-007139 Application 11/614,685 - 10 - Turning to Cho, Cho’s foam layer 233 and elastic band layer 234 are disposed within the lower fold of the sweatband fabric 236. Cho ¶ 0076; Fig. 8. We agree with the Examiner’s finding that these layers 233 and 234 can be broadly construed as core members disposed within the second wearing portion’s folded lower portion. (Ans. 5:3-5). Similarly, because Cho’s tape 218 is disposed within the lower fold of the gores or first wearing portion 212, we agree with the Examiner’s finding that the tape 218 can be reasonably construed as a core member disposed in the first wearing portion’s lower folded portion. (See id.). Additionally, the Examiner finds that Cho teaches or suggests to an ordinarily skilled artisan modifying the lower folded potions to include a core member so as to provide comfort and structural support. See Ans. 5. Appellant does not challenge this conclusion. See App. Br. 7-8. We accordingly sustain the obviousness rejection of claim 2 over Cho, Klein, and Schneider. 2. § 103(a) rejection of claim 14 as obvious over Cho, Klein, Schneider, and Garza Claim 14 depends from claim 12. Appellant provides no separate argument for claim 14. (App. Br. 9:1-2). For the reasons discussed above with respect to claims 1 and 12, we sustain the obviousness rejection of claim 14. DECISION The rejection of claims 1-10, 12, 13, 15, and 16 under 35 U.S.C. § 103(a) as obvious over Cho, Klein, and Schneider is affirmed. Appeal 2010-007139 Application 11/614,685 - 11 - The rejection of claim 14 under 35 U.S.C. § 103(a) as obvious over Cho, Klein, Schneider, and Garza is affirmed. 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 rwk