Ex Parte Schneider

Patent Trial and Appeal Board

Dec 20, 2018

14490123 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/490,123 09/18/2014
30652 7590 12/21/2018
CONLEY ROSE, P.C.
5601 GRANITE PARKWAY, SUITE500
PLANO, TX 75024
FIRST NAMED INVENTOR
Terrence Lee Schneider
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4671-00100 6059
EXAMINER
HOEY, ALISSA L
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
12/21/2018 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 TERRENCE LEE SCHNEIDER
Appeal 2018-003408
Application 14/490, 123
Technology Center 3700
Before LISA M. GUIJT, NATHAN A. ENGELS, and
SEAN P. O'HANLON, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection2 of claims 1--4, 6, 7, 9--12, 14, 21, and 22. 3 We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellant identifies the real party in interest as Composite Technology
Concepts, LLC. Appeal Br. 3.
2 Appeal is taken from the Final Office Action dated January 10, 2017.
3 Claims 5, 8, 13, and 15-20 have been withdrawn. See Amendment dated
June 23, 2015.
Appeal2018-003408
Application 14/490,123
STATEMENT OF THE CASE
Claims 1 and 10 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. A helmet adapted for use by a human being, comprising:
a shell configured and arranged to cover at least a portion
of a wearer's head, the shell having an exterior surface and an
interior surface;
a plurality of force-absorbing elements that are separately
positioned adjacent to the shell's interior surface, wherein each
force-absorbing element of the plurality of force-absorbing
elements includes at least one disc spring having a frusto-conical
exterior with a planar top surface and a skirt extending from the
planar top surface to an edge defining an aperture, a diameter of
the planar top surface being smaller than a diameter of the
aperture defined by the edge to absorb forces by deforming along
the at least one disc spring's central, symmetrical axis; and
at least one rigid component that is disposed within the
shell and adjacent to the plurality of force-absorbing elements,
the rigid component having an outer surface;
wherein the plurality of force-absorbing elements are
between the shell's interior surface and the at least one rigid
component, and one of the planar top surface and the edge is in
contact with the shell's interior surface and the other of the planar
top surface and the edge is in in contact with the outer surface of
the at least one rigid component; and
wherein a force applied to a location on the shell's exterior
surface is substantially absorbed by at least one force-absorbing
element of the plurality of force-absorbing elements separately
positioned adjacent to the location on the shell's interior surface,
and
wherein the at least one disc spring of the at least one
force-absorbing element is configured to deform by reducing a
distance between the planar top surface and the edge, wherein the
diameter of the aperture increases as the at least one disc spring
deforms and the edge slides along the surface with which the
edge is in contact.
2
Appeal2018-003408
Application 14/490,123
THE REJECTIONS
I. Claims 1--4, 6, 7, 9-12, 14, 21, and 22 stand rejected under 35
U.S.C. § 112(b) as indefinite.
II. Claims 1, 2, 6, 9, and 21 stand rejected under 35 U.S.C. § 103
as unpatentable over Ferrara (US 2006/0059606 Al; published Mar. 23,
2006) and Cobley (US 3,489,402; issued Jan. 13, 1970).
III. Claim 3 stands rejected under 35 U.S.C. § 103 as unpatentable
over Ferrara, Cobley, and Aspray (US 2007/0056081 Al; published Mar. 15,
2007).
IV. Claim 7 stands rejected under 35 U.S.C. § 103 as unpatentable
over Ferrara, Cobley, and Picotte (US 2012/0124718 Al; published May 24,
2012).
ANALYSIS
Rejection I
A. The claim term "substantially absorbed"
Regarding independent claims 1 and 10, and thus, their dependent
claims, the Examiner finds that it is unclear "[to] what extent of absorption"
the term "'substantially absorbed' means." Final Act. 3. The Examiner
determines that the Specification "does not define what 'substantially'
requires in terms of absorption and therefore one of ordinary skill in the art
would not be able to determine the metes and bounds of the claimed
limitation based on an unknown factor." Ans. 2-3.
Appellant argues that one of ordinary skill in the art would understand
the term "substantially absorbed" to mean that "(i) for a force less than M,
the disc spring will not deform fully and will absorb all the force, and (ii) for
a force greater than M (say M + E), the disc spring will absorb some of the
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Application 14/490,123
force (M, by flattening) and transmit the remainder of the force (E)."
Appeal Br. 10 ( emphasis added). Appellant maintains that the claim term
"substantially" allows the claims to read on a device wherein the force-
absorbing elements ("F AE" 4) are not able to absorb all of the force applied
to the exterior of the helmet's shell, but a substantial amount. Reply Br. 2.
An ordinary definition of the claim term "substantially," in light of the
Specification, means "in a substantial manner," and, in tum, an ordinary
meaning of the term "substantial" is "being that specified to a large degree ..
. . " WEBSTER'S THIRD NEW INT'L DICTIONARY 2280 (1993). We understand
the Examiner's rejection to be based on the premise that the magnitude of
the force recited in claims 1 and 10 is undefined-the force may be very
small or very great, and therefore, the claim term "substantially" introduces
ambiguity into the claims by defining the amount of absorption (i.e.,
absorption that must be to a large degree) in terms of any ( or an undefined)
force applied to the helmet.
4 See Spec. 4:3--4 ("the term "force-absorbing element" or "FAE" refers to
an arrangement and configuration of one or more disc springs and an
elastomer element") ( emphasis added). Notably, the Specification also
discloses that "FIGURE IA shows a schematic perspective view of a force-
absorbing element," wherein "FAE 1 OOA" is "a single disc spring, such as
disc spring 101, which may include top 102 and skirt 104, such that skirt 104
is connected to top 102 to create a frusto-conical shape." Id. at 4:20-23. Cf
id. at 12:6--12 (disclosing, with reference to Figure 4B, "a schematic cross-
sectional view of alternative arrangements of a force-absorbing element,"
wherein "FAE 400B" includes "elastomeric spacer 41 O"). Thus,
notwithstanding the definition provided in the Specification, we determine,
in view of the Specification, that the claimed force-absorbing element may
be a single disc spring, without an elastomeric element. Cf Appeal Br. 3--4
(Claims App.) (claim 4, in relevant part, "wherein each force-absorbing
element ... further includes: an elastomeric component").
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Application 14/490,123
We determine that the meaning of "substantially absorbed," as recited
in the claims, is clear: a force applied to a location on the shell's exterior
surface must be substantially, or to a large degree, absorbed by at least one
force-absorbing element, which has the structure and placement recited in
the claims. We note that Appellant's argument that the claims read on a
helmet wherein some of the force is absorbed is not commensurate in scope
with the claim language, which requires a substantial amount of the force to
be absorbed-notably, all is a substantial amount.
However, in light of our interpretation above, we do not sustain the
Examiner's rejection of independent claims 1 and 10, and their dependent
claims, as indefinite for reciting "substantially absorbed."
B. The claim term "the surface"
Regarding independent claims 1 and 10, and thus, their dependent
claims, the Examiner finds that the claims recite many surfaces (i.e., the
planar top surface, the shell's interior and exterior surfaces, and the outer
surface of the rigid component), and that it is unclear to which surface the
claim term "the surface" refers. Final Act. 3; Ans. 3.
Appellant argues, with specific reference to Figure 22, that
[ c ]laims 1 and 10 ... recite that one of the top surface and the
edge [ of each of the disc springs of the FAE] is in contact with
the shell's interior surface and the other of the planar top surface
and the edge is in contact with the outer surface of the at least
one rigid component. ... That is, that the disc spring is in one of
two configurations. In a first configuration, the disc spring has
its top surface in contact with an interior surface of the shell and
its edge in contact with an outer surface of the rigid component.
In a second configuration, the disc spring is inverted and has its
edge in contact with the shell's inner surface and its top surface
in contact with the rigid component's outer surface.
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Application 14/490,123
Appeal Br. 12 (citing Spec. 8:3---6, 9: 11-12, 11:4--7, Figs. 7-10); Reply Br.
3.
We agree with the Appellant that the recitation, in both claims 1 and
10, requiring "the edge [to slide] along the surface with which the edge is in
contact," clearly refers to one of the two surfaces expressly defined by the
claims as potentially in contact with the edge (i.e., the shell's interior surface
or the outer surface of at least one rigid component, depending on the
position of the disc spring), as argued by Appellant.
Accordingly, we do not sustain the Examiner's rejection of
independent claims 1 and 10, and their dependent claims, as indefinite for
reciting "the surface."
C. The claim term "the location "
Regarding independent claim 1, and thus, the claims depending
therefrom, the Examiner finds that the claim's recitation of "the location"
lacks antecedent basis. Final Act. 3.
Appellant argues that the recitation of "a location on the shell's
exterior surface" provides the antecedent basis for "the location." Appeal
Br. 13.
Claim 1 recites, in relevant part, as set forth supra, "wherein a force
applied to a location on the shell's exterior surface is substantially absorbed
by at least one force-absorbing element ... separately positioned adjacent to
the location on the shell's interior surface." Thus, we agree with Appellant
that antecedent basis for the location is provided by the recitation of a
location. In other words, claim 1 means that a force applied to a location on
the shell's exterior surface is substantially absorbed by at least one FAE
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Application 14/490,123
positioned adjacent to the location on the shell's exterior surface at which
the force is applied, and also positioned on the shell's interior surface.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1, and the claims 2--4, 6, 7, 9, and 21 depending
therefrom, as indefinite for reciting "the location."
Re} ections II-IV
Appellant presents arguments for the patentability of independent
claim 1, with claims 2, 3, 6, 7, 9, and 21 standing and falling with claim 1.
Appeal Br. 14.
Regarding independent claim 1, the Examiner finds, inter alia, that
Ferrara teaches a shell having exterior and interior surfaces (i.e., outer layer
20'), FAEs (i.e., compressible middle layer 24', including individual
compressible members of various shapes (see Ferrara ,r 47)), and a rigid
component disposed within the shell (i.e., inner component 28'). Final Act.
4--5. The Examiner determines that Ferrara fails to teach an FAE having a
frusto-conical exterior with a planar top surface from which a skirt extends
to form an edge and defining an aperture, as claimed. Id. at 5---6. The
Examiner relies on Cobley for teaching an FAE in the form of a disc spring
having the claimed frusto-conical geometry. Id. at 6 (citing Cobley 1:13-31,
Figs. 7-10). The Examiner reasons that it would have been obvious to have
provided Ferrara's helmet with "frusto-conical disc shaped" FAEs, as taught
by Cobley, "that flatten when force is applied." Id.; see Ans. 4--5
( explaining that only the "simple plate structure" or "resilient, conical discs
that flatten in response to an applied force," as taught by Cobley in Figures 7
to 10, "are being used in place of resilient members 50 of Ferrara").
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Application 14/490,123
Appellant argues that "the combination of Ferrara and Cobley fails to
show both a[ n] FAE that has a top surface in contact with either the shell or
the rigid component and an edge that is in contact with the other of the shell
and the rigid component." Appeal Br. 15. Appellant submits that
[w]ere Cobley's composite springs (Figures l(a) through 6) to be
placed between the outer layer and inner layer of Ferrara's
helmet, none of Cobley' s disc springs would have both one
surface ( or edge) in contact with Ferrara' s outer layer and another
surface ( or edge) in contact with Ferrara' s inner layer. Instead,
[Cobley's] disc spring would be in contact with either Ferrara's
outer or inner layer, while either [Cobley's] elastomeric material
or a second disc spring would be in contact with the other of the
outer and inner layers.
Id at 16. Appellant argues that "Figures 7-10 are used by Cobley to
illustrate disc springs that can be combined with elastomeric material to
create Cobley's composite spring." Id at 17.
Appellant further argues that Cobley teaches away from the use of
disc springs without elastomeric material by disclosing that "[ t ]he composite
springs described are all designed to combine the properties of rubber
springs ( e.g. high energy storage capacity, vibration damping properties)
with the wide range of load-deflection characteristics obtainable with coned
disc types of spring." Id. ( quoting Cobley 2:44---65; citing Cobley 2:36-38);
Reply Br. 4 (arguing that "Cobley teaches away from the use of disc springs
alone by listing the benefits of its composite springs").
We are not persuaded by Appellant's argument. Ferrara discloses that
individual members in various geometric configurations comprised of
compressible material, such as thermoplastic elastomer, may be used to form
middle layer 24. Ferrara ,r,r 31, 47. Cobley discloses a composite spring,
which Cobley discloses combines "the properties of rubber springs ... with
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Application 14/490,123
the wide range of load-deflection characteristics obtainable with coned disc
types of springs." Cobley 2:44--48. The Examiner relies on Cobley's
teaching of the later only----coned disc types of springs, and proposes
substituting Ferrara's compressible individual members with Cobley's load-
deflecting disc spring. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007) (citing United States v. Adams, 383 U.S. 39, 50-51 (1966)) ("when a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result.").
Appellant's argument does not address the Examiner's proposed
modification, which does not require substitution of Ferrara's compressible
individual members with Cobley's composite spring, but rather, requires
substitution of Ferrara's compressible individual members with disc springs,
as taught by Cobley. Further, a teaching away requires a reference to
actually criticize, discredit, or otherwise discourage investigation into the
claimed solution, and Appellant has not identified where Cobley discourages
use of a disc spring to deflect a load. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004); see also In re Zhang, 654 Fed. Appx. 488,490 (Fed. Cir.
2016) ("While a prior art reference may indicate that a particular
combination is undesirable for its own purposes, the reference can
nevertheless teach that combination if it remains suitable for the claimed
invention.")
Accordingly, we sustain the Examiner's rejection of independent
claim 1, and claims 2, 3, 6, 7, 9, and 21 fall therewith.
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DECISION
The Examiner's decisions rejecting claims 1--4, 6, 7, 9--12, 14, 21, and
22 under 35 U.S.C. § 112, second paragraph, are REVERSED.
The Examiner's decisions rejecting claims 1-3, 6, 7, 9, and 21 under
35 U.S.C. § 103(a) are 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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