14544733 - (R) (P.T.A.B. Oct. 21, 2020)

Cecelia Marco

Patent Trials and Appeals BoardOct 21, 2020

14544733 - (R) (P.T.A.B. Oct. 21, 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. 14/544,733 02/09/2015 Cecelia Ann Marco Hat-919 2037 7590 10/21/2020 Christopher John Rudy Suite 8 209 Huron Avenue Port Huron, MI 48060 EXAMINER SPATZ, ABBY M ART UNIT PAPER NUMBER 3732 MAIL DATE DELIVERY MODE 10/21/2020 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 CECELIA ANN MARCO Appeal 2020-000873 Application 14/544,733 Technology Center 3700 Before KEVIN F. TURNER, DANIEL S. SONG, and ANNETTE R. REIMERS, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING The Appellant1 requests reconsideration (hereinafter “Request” or “Req.”) under 37 C.F.R. § 41.52 of our Decision mailed July 31, 2020 (“Decision”), affirming the Examiner’s rejection of claims 1 and 2 as unpatentable over SilkaWear and Reynolds. The Appellant requests the reversal of this rejection. Req. 1, 18. 1We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § l.42(a). The Appellant identifies the real party in interest as the applicant, Cecelia Ann Marco. Appeal Br. 1. Appeal 2020-000873 Application 14/544,733 2 We grant the Request to the extent that we consider the Appellant’s arguments infra, but we DENY the request to reverse the Examiner’s rejection. REHEARING DECISION The Appellant argues that the Board misapprehended or overlooked various aspects of its appeal. Req. 1. In particular, the Appellant argues that the combination of SilkaWear and Reynolds is improper because Reynolds is not analogous art, and the Board misapprehended the inventor’s field of endeavor argument as being directed to intended use. Req. 7–8. In support, the Appellant points to the “configured to” language in the claims and the declaration evidence of record. Req. 8–11. However, the argument regarding the field of invention was considered and addressed in the Decision, which affirmed the Examiner’s conclusion that Reynolds is within the same field of endeavor of hats having under-chin straps. Decision 11–13. We disagreed with, and found unpersuasive, the Appellant’s characterization of the field of invention as being defined by what its hat (or the hat of Reynolds) is intended for, or what it may be configured to do, rather than to hats having under-chin straps generally. The Appellant also argues that “[s]ignificant limitations of the claims are not found if combining the SilkaWear and Reynolds disclosures.” Req. 11. Specifically, the Appellant argues that the proposed combination lacks a hat body, under-chin straps, and an open mesh that are made of a conforming materials that are “configured to inherently conform” to the wearer, and lacks the additional limitation reciting discouraging insertion of the wearer’s hand under the hat. Req. 11–12. However, it is not entirely Appeal 2020-000873 Application 14/544,733 3 evident where such arguments based on configuration, inherency, and conformity, were made in its Appeal Brief based on the generic citation of 30 pages provided by the Appellant in its Request. Req. 1, citing Appeal Br. 22–51. The arguments presented by the Appellant as to hat body, under- chin straps, open mesh, and discouraging insertion of the wearer’s hand under the hat, were addressed in the Decision. Decision 14–19. Moreover, the Appellant’s further arguments as provided in the Request for Rehearing are unpersuasive because the hat resulting from the suggested combination of SilkaWear and Reynolds would be capable of performing, and would be configured to perform, the recited functions. The Appellant also points out that visibility of the external hardware is not disclosed in the applied art. Req. 13–14. However, this argument was also addressed in the Decision. Decision 15–17. The Appellant also again argues, as in the Appeal Brief, that the combination of SilkaWear and Reynolds does not result in the dimensions of the conforming strap recited in claim 2. However, this argument was already addressed in the Decision. Decision 22 (“it cannot be reasonably disputed that hat straps made of fabric are well known in the art, and that SilkaWear discloses such material for straps that are tied . . . we agree with the Examiner that the limitation is merely directed to sizing, and that ‘discovering the optimum or workable ranges involves only routine skill in the art,’ and is not patentable.”). Finally, the Appellant directs our attention to the secondary considerations evidence in the record in support of non-obviousness. Req. 15–17. However, the Decision already considered and addressed such evidence. Decision 19–21. Requests for Rehearing are limited to matters overlooked or misapprehended by the Panel in rendering the original Decision. See Appeal 2020-000873 Application 14/544,733 4 37 C.F.R. § 41.52. A request for rehearing may not rehash arguments originally made in the briefs, and is not an opportunity to merely express disagreement with a Decision. In the present Request for Rehearing, the Appellant presents arguments not presented or fully developed in its Appeal Brief, which are nonetheless unpersuasive, or rehashes arguments already sufficiently addressed in the Decision. Therefore, in view of the above, although we have considered the Decision in light of the Request, we decline to modify the Decision in any respect. DECISION SUMMARY Outcome of Decision on Rehearing: Claims 35 U.S.C § Reference(s)/Basis Denied Granted 1, 2 103 SilkaWear, Reynolds 1, 2 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2 112(a) Written Description 2 1–17 112(b) Indefiniteness 1–17 1, 2 103 SilkaWear, Reynolds 1, 2 1, 2, 4–7, 9– 11, 13–16 103 Carrington, Reynolds, Niedrich 1, 2, 4–7, 9– 11, 13–16 3, 12 103 Carrington, Reynolds, Niedrich, Anderson 3, 12 8, 17 Carrington, Reynolds, 8, 17 Appeal 2020-000873 Application 14/544,733 5 Niedrich, Goldstein Overall Outcome 1, 2 3–17 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). DENIED