10630897 (B.P.A.I. May. 8, 2012)

Ex Parte Waddell et al

Board of Patent Appeals and InterferencesMay 8, 2012

10630897 (B.P.A.I. May. 8, 2012)

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. 10/630,897 07/31/2003 John L. Waddell JR. WADDELL 1 9607 1444 7590 05/09/2012 Browdy and Neimark, PLLC 1625 K Street, N.W. Suite 1100 Washington, DC 20006 EXAMINER JOHNSON, STEPHEN ART UNIT PAPER NUMBER 3641 MAIL DATE DELIVERY MODE 05/09/2012 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 JOHN L. WADDELL JR. and JAMES F. GORDON ____________ Appeal 2011-012257 Application 10/630,897 Technology Center 3600 ____________ Before LINDA E. HORNER, EDWARD A. BROWN, and MICHAEL C. ASTORINO, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012257 Application 10/630,897 2 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 13, 14, 17-19, and 21-29. Claims 1-12, 15, 16, and 20 have been cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). The Appellants’ representative presented oral argument for this appeal on April 12, 2012. During the oral argument the Appellants’ representative withdrew the appeal for the rejection of claims 22 and 29 under 35 U.S.C. § 103(a) as unpatentable over Bainbridge (US 6,453,477 B1, iss. Sep. 24, 2002) and Takahashi (US 5,910,540, iss. Jun. 8, 1999). Transcript of Oral Argument at 2. We suggest that the Examiner cancel these claims upon return of jurisdiction of this application to the Examiner. See Ex Parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008) (precedential), MPEP § 1215.03. The Appellants maintained the appeal for the rejection of claims 13, 14, 17-19, 21, and 23-28 under 35 U.S.C. § 103(a) as unpatentable over Bainbridge, Takahashi, and Gettle (US 5,394,786, iss. Mar. 7, 1995). We REVERSE. CLAIMED SUBJECT MATTER Claims 13 and 23 are the independent claims on appeal. Claim 13 is illustrative of the subject matter on appeal, and with emphasis added, recites: 13. A shock-attenuating assembly that is sufficiently flexible to wrap around any shaped structure, said assembly comprising, in combination, (a) a first film of flexible resin material, wherein said first film of flexible resin material is optionally water- Appeal 2011-012257 Application 10/630,897 3 impermeable or is optionally coated with a water- impermeable material; (b) a second film of flexible resin material, wherein said second film of flexible resin material is optionally water-impermeable or is optionally coated with a water-impermeable material, wherein said second film of flexible resin material has attached pockets spaced from each other along the second film; (c) the first film is attached to the second film via a plurality of seams, wherein the seams surround each of the spaced pockets in such a manner as to make the assembly sufficiently flexible to surround a structure of any shape; (d) each of the pockets is filled with a flowable shock wave attenuating material selected from the group consisting of volcanic foam glasses, perlite, vermiculite and pumice; and (e) wherein both the first film and the second film are sufficiently porous with respect to acoustic or shock waves or gas to allow the acoustic or shock wave to penetrate the film to reach the flowable shock wave attenuating material. Claim 23 is similar to claim 13, except that claim 13 is directed to a shock-attenuating assembly and claim 23 is directed to a carrier for shock- attenuating material. OPINION Bainbridge discloses a pad including beads 22, which are soft, resilient, elastic, and compressed in a casing 20 to absorb and dissipate the impact primarily intended for sports gear. Bainbridge, col. 2, ll. 48-56, col. 5, ll. 3, 4, fig. 5, 13. The Examiner correctly finds that Bainbridge’s beads 22 have shock wave attenuating characteristics (see Ans. 6) because all Appeal 2011-012257 Application 10/630,897 4 matter naturally attenuates shock (pressure) waves by virtue of its inherent mass.1 The Examiner further finds that Bainbridge, as modified by Takahashi2, does not disclose that beads 22 have perlite as a shock wave attenuating filler material. See Ans. 4. Moreover, Bainbridge’s beads 22 are not disclosed as made of volcanic foam glasses, vermiculite, or pumice, as called for by claims 13 and 23. The Examiner finds that Gettle discloses perlite as a shock attenuating filler material. Ans. 4. The Examiner concludes that combining the teachings of Bainbridge, Takahashi, and Gettle would have been obvious to one of ordinary skill in the art because the result would “have a shock attenuating assembly with a different type of shock attenuating filler material.” Ans. 4-5. The Examiner bases this conclusion on the substitution of “one type of shock attenuating filler material for another in an analogous art setting with expected or predictable results.” Ans. 4. The Appellants point out that a shock wave is a completely different form of impact than the impact that the Bainbridge pad is designed to protect against. See App. Br. 12. Further, the materials used for Bainbridge’s sports padding and for Gettle’s shock wave attenuation filler material each have specific characteristics particular for their respective purposes. More 1 Gettle, col. 1, ll. 49-54 (“All matter through which pressure waves travel naturally attenuates these waves by virtue of their inherent mass. Materials possess different acoustic attenuating properties . . . .); see also Gettle, col. 1, ll. 21-23 (“Acoustic and shock waves are traveling pressure fluctuations which cause local compression of the material through which they move.”) 2 The Examiner finds Takashi teaches that a plastic material layer, e.g., nylon, corresponds to polyamide resin. Ans. 4. However, a polyamide resin is not required by claims 13, 14, 17-19, 21, and 23-28. See Transcript of Oral Argument at 3-4. Appeal 2011-012257 Application 10/630,897 5 specifically, shock wave attenuation materials include those materials having phase boundaries for increasing the distance that a shock (pressure) wave travels by reflecting and diffracting the waves, e.g., perlite is a solid entrained with gas. See App. Br. 12, 13, Gettle, col. 14, ll. 21-25. Similarly, Gettle discloses perlite has properties that attenuate a shock wave by “focusing and/or diffraction of pressure conditions” and “high reflectivity.” Gettle, col. 16, ll. 26-44; see also Spec. paras. [0045], [0046]. As such, the material properties of perlite do not suggest that perlite is used for absorbing and dissipating impact intended for sports padding. Thus, perlite does not appear to be an adequate substitute for Bainbridge’s beads 22, which are used for absorbing and dissipating impact intended for sports padding. See App. Br. 16, Reply Br. 4, 6. Therefore, the substitution of Gettle’s perlite shock wave attenuating filler material for Bainbridge’s beads 22 lacks rational underpinning. For the reasons provided above, the rejection of claims 13, 14, 17-19, 21, and 23-28 as unpatentable over Bainbridge, Takahashi, and Gettle is not sustained. DECISION We reverse the rejections of claims 13, 14, 17-19, 21, and 23-28. REVERSED Klh