Cecelia Marco

Patent Trials and Appeals Board

Jul 31, 2020

2020000873 (P.T.A.B. Jul. 31, 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 07/31/2020
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
07/31/2020 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 APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–17. We have jurisdiction under
35 U.S.C. § 6(b). In addition to its Appeal Brief and Reply Brief, the
Appellant relies on declarations of Ms. Marco (“Marco Decl.”), Ms. Koller
(“Koller Decl.”), Ms. Taube (“Taube Decl.”), and Mr. Rudy, as well as
testimonial statements from Ms. Weston, Ms. Burkhardt, Ms. Patterson, Ms.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). The Appellant identifies the real party in interest as the applicant,
Cecelia Ann Marco. Appeal Br. 1.
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Hutkowski, Ms. Stanfield, Ms. Muma, Dr. Johnson, and Ms. Ammann, with
whom other individuals concur as identified in the Declaration of Marcos.
This evidence, together with the other evidence of record, was considered in
rendering the present decision.
We AFFIRM IN PART.
CLAIMED SUBJECT MATTER
The claims are directed to a hat for securing external hardware of a
cochlear implant. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A combination, which comprises a hat for securing
external hardware of a cochlear implant or a traditional hearing
aid of a wearer who has a head; and the external hardware of the
cochlear implant or the traditional hearing aid - wherein the hat
comprises:
a hat body of conforming material configured to cover and
conform to at least a portion of the wearer’s head and encircle
the wearer’s head about a forehead or crown portion of the
wearer’s head when the hat is worn by the wearer, including at
least one depending projection portion on at least one side having
a lower boundary that is configured to be lower than a location
of a respective ear lobe of the wearer would be when the hat is
worn by the wearer;
an opposing pair of under-chin straps of conforming
material attached to lower left and right boundaries of the hat
body, the straps having a non-tying securing couple fixed to the
under-chin straps for fastening the straps together, wherein the
under-chin straps are configured to conform to the wearer’s head
under the chin when the hat is worn by the wearer and secured
with the non-tying securing couple; and
in part of the at least one depending projection portion, a
conforming open mesh configured to cover the external hardware
of the cochlear implant or the traditional hearing aid and provide
for securing of the external hardware of the cochlear implant or
the traditional hearing aid when worn by the wearer, to reduce if
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not avoid overheating of the external hardware of the cochlear
implant or the traditional hearing aid, and to provide for external
visibility of the external hardware of the cochlear implant or the
traditional hearing aid of the wearer by a non-wearer of the hat
when the hat and the external hardware of the cochlear implant
or the traditional hearing aid of the wearer are worn by the
wearer;
wherein the hat is configured to conform to the wearer’s
head and is such that the wearer is discouraged from inserting his
or her hand under the hat and removing the external hardware of
the cochlear implant or removing the traditional hearing aid.
Appeal Br., Claims App., CA-1, CA-2.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Goldstein US 2,143,265 Jan. 10, 1939
Anderson US 5,822,800 Oct. 20, 1998
Niedrich et al. US 2009/0193564 A1 Aug. 6, 2009
Carrington US 6,360,376 B1 Mar. 26, 2002
Reynolds US 2009/0241239 A1 Oct. 1, 2009
SilkaWear http://www.silkawear.com
(waybackmachine)
Mar. 12, 2008
REJECTIONS2
1. Claim 2 is rejected under 35 U.S.C. §112(a), as failing to
comply with the written description requirement. Final Act. 4.

2 We note that claims 1, 2, and 8 have been objected to by the Examiner.
Final Act. 2–3. The Appellant submitted various arguments directed to these
objections in its Appeal Brief, treating them as rejections. Appeal Br. 4–7;
Reply Br. 1–2. However, objections are not rejections, and are petitionable
to the Director. Indeed, it is our understanding that the Appellant also
properly petitioned the Director for the withdrawal of these objections, and
that the petition was granted. Petition to Instruct Examiner to Withdraw
Claims Objections (Nov. 5, 2019); Decision on Petition (Feb. 18, 2020).
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2. Claims 1–17 are rejected under 35 U.S.C. § 112(b), as being
indefinite. Final Act. 4.
3. Claims 1 and 2 are rejected under 35 U.S.C. § 103 as
unpatentable over SilkaWear in view of Reynolds. Final Act. 6.
4. Claims 1, 2, 4–7, 9–11, and 13–16 are rejected under 35 U.S.C.
§ 103 as unpatentable over Carrington in view of Reynolds and Niedrich.
Final Act. 10.
5. Clams 3 and 12 are rejected under 35 U.S.C. § 103 as
unpatentable over Carrington in view of Reynolds, Niedrich, and Anderson.
Final Act. 18.
6. Claims 8 and 17 are rejected under 35 U.S.C. § 103 as
unpatentable over Carrington in view of Reynolds, Niedrich, and Goldstein.
Final Act. 19.
OPINION
Rejection 1: Written Description
Claim 2 is rejected under 35 U.S.C. § 112(a), as failing to comply
with the written description requirement. Final Act. 4. The Examiner finds
that the limitation reciting “the under-chin straps are at least about one inch
in width” lacks written descriptive support “because the [E]xaminer does not
see where this range of widths is found in [A]pplicant’s originally filed
specification or drawings.” Final Act. 4. The Examiner explains that the
claim encompasses a range of dimensions for which there is no support, for
example, chin straps that are 20 inches wide. Ans. 5.
The Appellant argues that the Specification explicitly discloses that
“FIGS. 2 and 3 have scales in inches, FIGS. 5 and 7 in centimeters and
inches.” Appeal Br. 7, quoting Spec. 6 and citing Figs. 5, 7. Thus, the
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Appellant argues that the Specification in view of Figures 5 and 7 provides
sufficient support for the limitation “the under-chin straps are at least about
one inch in width,” and a person of ordinary skill would have understood the
inventor’s possession thereof. Appeal Br. 7–8. We agree with the
Appellant.
The Examiner responds that “there is no scale provided denoting how
large a centimeter or an inch is in the figure[s],” and that the Specification
states that the drawings are not necessarily drawn to scale. Ans. 4, citing
Spec. 4. The Examiner also responds that Figures 5 and 7 are slanted, which
“skews any ability to determine a measurement from the figures” and a “this
measurement range would need to be expressly disclosed in the originally
filed specification.” Ans. 4.
Initially, the fact that the Specification discloses that the drawings are
not necessarily drawn to scale does not detract from its specific disclosure
that Figures 5 and 7 illustrate scales in centimeters and inches. Spec. 6. In
that regard, the actual scales of Figures 5 and 7 of the filed drawings do not
appear to be drawn to scale, but that does not negate the fact that the
illustrated scales are disclosed as representing centimeters and inches.
Accordingly, we do not find inconsistency in the Specification.
We agree with the Appellant that the Examiner’s assertion that there
is no support for the claim that encompasses a broad range of widths, such as
straps 20 inches wide, ignores “the plain meaning of the claim” in that “[t]he
under-chin strap is configured to be under, being below or beneath, the chin
of a wearer.” Appeal Br. 8; see also id. at 12. Straps that are 20 inches wide
“would not be under the chin of the wearer.” Appeal Br. 8; see also id. at
12. The recited under-chin straps would have been understood by a person
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of ordinary skill in the art as disclosing dimensions that are limited in range
to straps that are to be positioned below or beneath the chin of the wearer.
The Examiner also explains that the Appellant “never describes the
grid shown in [F]igs. 5 and 7 as a cutting board and cutting board grids are
not necessarily in inches, they can be in other units of measure such as
centimeters. . . . The black and white photos provided by the [A]ppellant of
[F]igs. 5 and 7 do not provide a scale.” Ans. 5–6. However, as noted above,
the scale is provided by the text of the Specification itself in its description
of Figures 5 and 7. See Spec. 6. We also find persuasive, the Appellant’s
argument that it would have been evident to a person of ordinary skill in the
art that “both FIGS. 5 and 7 show grid patterns and rules encountered for
decades in pattern fabric cutting boards in America. The grid patterns are in
1-inch squares; the rules are in centimeters and inches.” Appeal Br. 10.
The “test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(emphasis added). The “test requires an objective inquiry into the four
corners of the specification from the perspective of a person of ordinary skill
in the art.” Id. (emphasis added). In rejecting claim 2 as lacking written
descriptive support, insufficient consideration was given to the explicit
disclosure in the Specification, and how this disclosure would have been
understood by a person of ordinary skill in the art.
Therefore, in view of the above, we reverse the written description
rejection of claim 2.

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Rejection 2: Indefiniteness
Claims 1–17 are rejected under 35 U.S.C. § 112(b), as being indefinite
based on recitations in independent claim 1 from which claims 2–17 depend.
Final Act. 4.
“traditional”
The Examiner determines that “it is unclear what is meant by the term
‘traditional hearing aid’ because the term ‘traditional’ is a subjective term
and therefore the metes and bounds of the claim are unascertainable.” Final
Act. 4. According to the Examiner, “[h]earing aids come in all different
configurations and therefore it is not clear which configurations are
encompassed by the term ‘traditional’.” Ans. 6.
The Appellant argues that the limitation “‘traditional hearing aid,’
indeed informs with reasonable certainty the skilled artisan about the scope
of the claimed invention.” Appeal Br. 16. The Appellant submitted a listing
of references and patent documents that utilize the term “traditional hearing
aid” to support the contention that the term would be “understood by and
clear to the skilled artisan.” Appeal Br. 13; see also id. at 13–16 (list of
references made of record); Reply Br. 6.
The Appellant has the better position. The test for definiteness under
35 U.S.C. § 112(b) is “whether those skilled in the art would understand
what is claimed when the claim is read in light of the specification.”
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986) (citations omitted). Although the Examiner responds that the
term “traditional hearing aid” in the evidence submitted is not defined in the
same way (Ans. 6), the Examiner does not identify, much less explain, what
the differences are within the evidence, or how such differences would make
the term unclear to those of ordinary skill in the art so as to establish
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indefiniteness. The Examiner also responds that none of these references
were included in the originally filed application. Ans. 6. However, the
Appellant submitted such evidence to rebut the Examiner’s determination of
indefiniteness by establishing that the term is used in the art and would have
been understood by one of ordinary skill. We do not find any impropriety in
the Appellant’s rebuttal.
The Examiner further explains that “traditional” may be in reference
to size, function or structure, and that “what one might consider to be
‘traditional’ now may not be considered ‘traditional’ 5 years from now
which could lead to confusion over the scope of the claims.” Ans. 6.
However, we see no ambiguity as the term “traditional” looks back in time,
and thus, the limitation “traditional hearing aid” is properly interpreted as of
the filing date of the present patent application.
Discouraged
The Examiner also determines that the limitation “wherein the hat is
configured to conform to the wearer’s head and is such that the wearer is
discouraged from inserting his or her hand under the hat and removing the
external hardware of the cochlear implant or removing the traditional
hearing aid” is indefinite. Final Act. 5. According to the Examiner, it is
unclear how the wearer is discouraged from inserting his/her hand under the
hat and removing the external hardware of the implant or the traditional
hearing aid. Final Act. 5–6.
The Appellant argues that this limitation would have been clear to one
of ordinary skill in the art in view of the Specification, the figures and the
submitted declaration/testimonial evidence, and that the Examiner
understood its meaning in applying SilkaWear to this limitation in a prior art
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rejection. Appeal Br. 20–21, citing Spec. 1–3; Figs. 1, 4, 6 and 8; submitted
evidence.
In our assessment, the language at issue is merely functional and not
structural in that it does not link the functional discouragement to any
particular structure of the hat. It merely states that the hat is “configured to
conform to the wearer’s and is such that” the recited function is attained.
However, it is not categorically indefinite to include functional limitations in
an apparatus claim and the issue noted by the Examiner with respect to the
recited functional language pertains to the claim’s breadth, not to its clarity.
In that regard, any hat that “conforms to the wearer’s head” around the area
to which the implant or hearing aid is mounted, would perform the recited
function of discouraging the wearer from inserting his or her hand under the
hat.
“at least about 1 inch”
The Examiner also determines that claim 2 is indefinite because “‘at
least about’ in claim 2 is a relative term.” Final Act. 6. The Examiner
explains that “[i]t is unclear what range of widths is encompassed” by this
limitation (Final Act. 6), and that the Appellant “has not provided in the
originally filed specification a standard for ascertaining what range of widths
is encompassed by ‘at least about one inch.’” Ans. 7–8.
The Appellant disagrees and argues that the claim is definite in view
of the fact that “‘at least,’ means the minimum value,” and “‘about’ []
means[] ‘reasonably close to.’” Appeal Br. 21, citing Webster’s Ninth New
Collegiate Dictionary. We agree with the Appellant.
Given the meanings of the words used in the limitation at issue, claim
2 requires the lower limit of the width to be about an inch. In addition, as
discussed above relative to Rejection 1, the upper limit of the width is
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restricted to the functional realities of the recited components, which are
“under-chin straps” such that the straps must be dimensioned in its width for
under-chin placement and use. Although the maximum width may vary
based on the under-chin physiological characteristics of the intended
user/wearer, such variability does not render claim 2 indefinite. See also
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986) (holding that language of the claim limitation allowing for
various sizes was definite because it was accurate as the subject matter
permitted and one of ordinary skill can determine the appropriate
dimensions).
Therefore, we agree with the Appellant that “the skilled artisan, who
has skill, here, too, would be informed with reasonable certainty about the
scope of the claimed invention.” Appeal Br. 22.

Rejection 3: Obvious over SilkaWear in view of Reynolds
The Examiner rejects claims 1 and 2 as unpatentable over SilkaWear
in view of Reynolds, finding that SilkaWear discloses the invention
substantially as claimed, except for the recited limitation pertaining to
“opposing pair of under-chin straps . . . the straps having a non-tying
securing couple fixed to the under-chin straps for fastening the straps
together.” Final Act. 6–8. The Examiner relies on Reynolds for disclosing:
an opposing pair of under-chin straps (170)(para.
29)(considered to be substantially wide when compared with a
thinner chinstrap) of conforming material (conforming material
in order to attach under a wearer’s chin) attached to lower left
and right boundaries of the hat body (100, 110, 160, 150) (para.
29)(fig. 1), the straps having a non-tying securing couple fixed
to the under chin straps for fastening the straps together (para.
29).
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Final Act. 8; see also Reynolds, Fig. 1, ¶ 29 (“In one embodiment, the at
least two sections of chin strap 170 are removably attached to each other
(e.g., with buckles, snaps, hook and loop strips, buttons).”).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to have modified the chin strap of SilkaWear in view
of Reynolds “in order to provide a secure attachment for the straps so that
the hat is not inadvertently removed by the wearer from the wearer’s head
and would provide a neater appearance than a tie fastener which would
retain a greater amount of dirt and debris.” Final Act. 9.
The Appellant submits many different arguments and relies on the
submitted declarations and testimonial evidence in support of patentability.
Although we consider such evidence in conjunction with the Appellant’s
arguments in concluding that claims 1 and 2 would have been obvious, we
address the evidence separately infra for clarity of this Decision.
The Appellant argues that Reynolds is not analogous art because it is
directed to a hat for hunting (Appeal Br. 33), and that it “has no concern
with keeping hands away from worn hearing assistance hardware” (Appeal
Br. 35). The Appellant relies on various statements of various declarants
and testimonies of numerous individuals as establishing that the hat of
Reynolds would not have been pertinent or suitable for the claimed use of
securing external hardware of a cochlear implant or a hearing aid. Appeal
Br. 33–34; see also Reply Br. 8 (SilkaWear “is not within the pertinent field
of the invention, special hat medical devices, even though it is from the
genera of hats.”).
These arguments are unpersuasive. The test for determining whether
a prior art reference is analogous art is: “(1) whether the art is from the same
field of endeavor, regardless of the problem addressed, and (2) if the
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reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
“A reference is reasonably pertinent if, even though it may be in a different
field from that of the inventor’s endeavor, it is one which, because of the
matter with which it deals, logically would have commended itself to an
inventor’s attention in considering his problem.” Id.
We agree with the Examiner that “Reynolds is within the same field
of endeavor as the claimed invention because they are both hats having
under chin strap(s). In addition, SilkaWear and Reynolds are also from the
same field of endeavor because they are both hats having under chin
strap(s).” Ans. 9. Indeed, the field of endeavor can be correctly determined
“by consulting the structure and function of the claimed invention as
perceived by one of ordinary skill in the art” with “reference to explanations
of the invention’s subject matter in the patent application.” In re Bigio, 381
F.3d 1320, 1325–26 (Fed. Cir. 2004) (affirming Board’s finding that prior
art toothbrush was in same field of endeavor as patentee’s hairbrush where
Board concluded that “the structural similarities between toothbrushes and
small brushes for hair would have led one of ordinary skill in the art working
in the specific field of hairbrushes to consider all similar brushes including
toothbrushes”).
The Appellant (as well as the declarants and individuals providing
testimonies) appear to conflate the field of endeavor to the intended use of
the hat, i.e., its hat and that of SilkaWear are for securing external hardware
of a cochlear implant or a hearing aid, whereas Reynolds is for use in
hunting. However, the fact remains that Reynolds is also a hat having
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under-chin straps, and the intended use of the hat is not dispositive as to the
field of endeavor.
The Appellant also argues that the Examiner’s reasoning for using the
straps of Reynolds to provide a secure attachment for the straps so that the
hat is not inadvertently removed, and to provide a neater appearance than a
tie fastener, which would retain a greater amount of dirt and debris is
“abstract fantasy.” Appeal Br. 35. The Appellant argues that “[a] tie
already makes for a highly secure attachment” and that “‘a neater
appearance’ is a wholly subjective standard and thus cannot be gauged.”
Appeal Br. 35.
However, the Examiner has provided sufficient reasoning with
rational underpinnings for the modification suggested. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). In particular, we are persuaded by
the Examiner’s reasoning that:
One of ordinary skill in the art would recognize that a tie
fastener has hanging strings that could be tugged or pulled on
accidentally thereby untying a bow/knot such that the hat could
be inadvertently removed. In addition, one of ordinary skill in
the art would recognize that a tie fastener hangs below the
wearer’s chin and therefore the hanging string portions are
likely to drag in dirt or food thereby retaining a greater amount
of dirt and debris than a non-tying securing couple such that a
non-tying securing couple would provide a neater appearance.
Ans. 10–11.
Moreover, we further agree with the Examiner that:
[U]nder chin straps having a non-tying securing couple (such as
button closure, snap, hook and loop, etc.) and under chin straps
that tie are well known structures in the hat art (as evidenced by
the prior art) to hold a hat on a wearer’s head. Therefore
substituting one known securing type (non-tying) tor another
known securing type (tying) would yield predictable results.
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Ans. 11; see also KSR, 550 U.S. at 416 (“[W]hen 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.”).
The Appellant also argues that Reynolds “has no concern with
keeping hands away from worn hearing assistance hardware,” and that its
flaps over the ears are opaque. Appeal Br. 35–36. However, the Appellant
argues Reynolds individually whereas the Examiner relied on Reynolds
merely for the straps having a non-tying securing couple. See also Ans. 11.
The limitations to which the Appellant argues is disclosed in SilkaWear.
“Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
The Appellant also argues that the cotton panel top is identified as the
hat body of SilkaWear, but this narrow swath is not configured to encircle
the wearer’s head. Appeal Br. 37. According to the Appellant, the mesh of
the panels in SilkaWear “extends to the lower border plus the front, and
around most, if perhaps not all, of the back.” Appeal Br. 37. However, the
Appellant overlooks the language of claim 1, which recites a hat body
encircles the wear’s head, the hat body also including “at least one
depending projection portion.” Appeal Br., Claims App., CA-1. In other
words, the claim states that the depending projection portion is part of the
hat body. Accordingly, the Appellant’s reference to a single panel of
SilkaWear does not take into consideration that the hat body of SilkaWear
includes other portions that together, encircles the wearer’s head when the
hat is worn by the user as claimed. See also Ans. 12 (explaining that
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reference is to both the central panel and side panels). In addition, we do not
discern any limitation in claim 1, which restricts the mesh material only to
the depending projection portion of the hat body. It is well established that
features not appearing in the claims cannot be relied upon for patentability.
In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
The Appellant also argues that:
[T]here is no disclosure in SilkaWear of an open mesh in part
of a depending portion for securing external hardware of a
cochlear implant or traditional hearing aid, and no disclosure of
or appreciation for a mesh for the purpose of reducing if not
avoiding overheating of such hardware plus providing for
external visibility of the external hardware of a cochlear
implant or traditional hearing aid. Rather, the sports mesh of
the SilkaWear bonnet appears to be fine in all the photographic
panels, and only disclosed as being provided to try to keep the
wearer’s head cool.
Appeal Br. 37; see also Reply Br. 9 (The SilkaWear bonnet “is not an open
mesh as required by the claims, which reduces if not eliminates overheating
of the external hardware of a cochlear implant or traditional hearing aid and
provides for external visibility of such equipment by a non-wearer.”).
However, the language of claim 1 regarding reducing/avoiding
overheating, and providing external visibility are functional limitations.
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
In re Swinehart, 439 F.2d 210, 213 (CCPA 1971); see also In re Schreiber,
128 F.3d 1473, 1478–79 (Fed. Cir. 1997) (holding that a prior art apparatus
meeting all claimed structural limitations was anticipatory because it was
inherently capable of performing the claimed function).
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It is not disputed that SilkaWear discloses “side panels of polyester
sports mesh for breathable comfort and optimal hearing aid reception.”
SilkaWear, “About Our Bonnets.” As the Examiner explains, “[m]esh by
definition is open (mesh is defined by merriam-webster.com to be ‘a woven,
knit, or knotted material of open texture with evenly spaced holes’).” Ans.
13. Accordingly, we agree with the Examiner’s finding that “SilkaWear is
reasonably capable of achieving the function(s) as described above and
therefore meets the claim limitation.” Ans. 14.
The Appellant refers to the Declaration of Taube, Declaration of
Koller, Declaration of inventor Marco, and testimonies of record in seeking
to rebut the Examiner’s finding as to SilkaWear’s mesh. Appeal Br. 38–39.
In that regard, the Declaration of Koller states “SilkaWear advertises their
product as being a bonnet as opposed to a hat. . . . Also, bonnets do not
typically have see-through sides, and are much warmer than the hats of Mrs.
Marco, which have mesh ear coverings.” Koller Decl. 2, filed Aug. 11,
2017. Although the Declaration of Koller mentions SilkaWear, the declarant
addresses bonnets generally, and does not discuss the mesh of SilkaWear
specifically, and thus, is of little probative value. The Declaration of
inventor Marco is also general in discussing the benefits of the claimed
invention, and does not specifically discuss the mesh of SilkaWear. Marco
Decl. 4, filed Aug. 11, 2017. The testimony of Ms. Hutkowski (dated June
30, 2017), who is the daughter of the inventor Ms. Marco, discusses the
benefits of the claimed invention of Ms. Marco, but also does not discuss the
mesh of SilkaWear. The testimony of Ms. Ammann focuses on the alleged
danger of SilkaWear’s straps, but again does not specifically address the
mesh thereof.
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The Declaration of Taube states:
In addition, the SilkaWear hat, which is the only hat made for
hearing impaired children, based on its pictures, would appear
to keep in heat from a hearing device since, although it
mentions side panels of polyester sports mesh and breathable
comfort, its pictures suggest that the side mesh openings are
quite small, whereas one of the features of Mrs. Marco’s hat
definitely is to allow heat from the hearing device to escape.
And, the SilkaWear hat website does not mention and appears
to have no effective provision for allowing easy visible
inspection of the hearing device while worn by the child.
Taube Decl. 2, filed Aug. 11, 2017.
Although Ms. Taube does specifically discuss the mesh of SilkaWear,
her declarative statements are speculative, stating that SilkaWear “would
appear to keep in heat from a hearing device since, although it mentions side
panels of polyester sports mesh and breathable comfort, its pictures suggest
that the side mesh openings are quite small.” Taube Decl. 2 (emphasis
added). Accordingly, the declaration of Ms. Taube is also not probative.
Such evidence provided by the Appellant is insufficient to “prove that
the subject matter shown to be in the prior art does not possess the
characteristic relied on.” In re Swinehart, 439 F.2d at 213. Accordingly, the
Appellant does not prove that the Examiner is incorrect in finding that “one
of ordinary skill in the art would recognize that the mesh of SilkaWear
would reduce if not avoid over heating of such hardware,” and “would
provide for external visibility of the external hardware of a cochlear implant
or traditional hearing aid due to mesh having an open configuration.” Ans.
13.
The Appellant also argues that SilkaWear “appear[s] to have ties to a
large extent forward” of its depending projection instead of being “attached
to lower left and right hat boundaries.” Appeal Br. 37. This argument is
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unpersuasive because the straps of SilkaWear are shown to be attached to
lower left and right hat boundaries in the manner claimed. Compare
SilkaWear photographs, with Spec., Figs. 6, 7.
The Appellant further argues that the present invention “discourages
removal of worn external hearing assistance hardware” and “although
[SilkaWear’s] intent is to discourage removal of hearing aids worn by small
children, [it] is ambivalent about this critical functional configuration.”
Appeal Br. 37. However, as discussed above relative to Rejection 2, such
language is at best, functional, and does not distinguish the hat of SilkaWear
from that of the present invention. In that regard, as the Appellant
acknowledges, SilkaWear makes clear that the purpose of its hat was to
discourage the wearer from removing hearing aids. See SilkaWear (“[T]he
ongoing and most frustrating challenge we faced was devising a way to
encourage our active and curious little girl to keep her hearing aids in. Also,
we soon discovered . . . that she wasn’t the only one that liked to pull them
out.”). Accordingly, this argument is unpersuasive.
The Appellant also argues that SilkaWear’s disclosure of attaining the
goals of providing “a bonnet that would ensure that Silka’s hearing aids
stayed in, were comfortable, looked great, and did not impede the
effectiveness of her hearing aids” establishes that any problem has been
“solved most effectively, with nothing left to address” so as to teach away
from any modification. Appeal Br. 40. However, this line of reasoning is
unpersuasive because it is entirely unsurprising that a website seeking to sell
its product would present its product in the most favorable light and not
highlight any deficiencies related thereto.
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According to the Appellant:
The years of use of buckles, snaps, hook and loop strips, or
buttons versus ties to fasten two sections of a chin strap without
substituting the former for the latter in a hat for keeping an
external hearing device worn by a small child from being
removed, weighs on the side of unobviousness.
Appeal Br. 40.
However, “[a]bsent a showing of long-felt need or the failure of
others, the mere passage of time without the claimed invention is not
evidence of nonobviousness.” Iron Grip Barbell Co. v. USA Sports, Inc.,
392 F.3d 1317, 1325 (Fed. Cir. 2004); see also In re Wright, 569 F.2d
1124, 1127 (CCPA 1977) (mere age of the references is not dispositive).
The Appellant argues that secondary considerations evidence of praise
by professionals and other knowledgeable people establishes non-
obviousness of the claimed invention, which “has been brushed aside” by
the Examiner. Appeal Br. 27; see also id. at 40. According to the
Appellant, the submitted declarations and testimonials from individuals,
including parents of children that use the claimed invention and various
professionals, generally praise the hats produced by the inventor, Ms.
Marco. See Appeal Br. 27–29; see also id. at 40–48. The Appellant argues
that “the declarations of record are commensurate in scope with the claims”
(Appeal Br. 27) and that “[t]his body of praise is more than sufficient to
rebut any prima facie case of obviousness.” Appeal Br. 49. The Appellant
also asserts that “the claimed invention has proven to be superior to the prior
art” in that “children wear the present hat significantly longer than prior art
hats, including the SilkaWear bonnet.” Appeal Br. 49.
The Examiner finds that the declaration evidence is not commensurate
in scope with the claims because they “refer only to the system described in
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the above referenced application and not to the individual claims of the
application.” Ans. 9. The Examiner also explains that the evidence was
considered but was unpersuasive because the evidence presented was only
opinion evidence and lacked “factual evidence to support the opinions.”
Ans. 8. The Examiner also notes that some of the evidence is provided by
the inventor “who has a vested interest in the outcome of the case,” and
points out that there is no evidence of long-felt need, failure of others, or
commercial success. Ans. 8–9. The Examiner determines that “[i]n view of
the foregoing, when all of the evidence is considered, the totality of the
rebuttal evidence of nonobviousness fails to outweigh the evidence of
obviousness.” Ans. 9.
Initially, we do not agree with the Examiner that the evidence is not
commensurate in scope with the claims as we do not view the claims to be
unreasonably broader in scope than the evidence, or find that the product
praised included other elements or features not recited in the claims. Institut
Pasteur & Universite Pierre Et Marie Curie v. Focarino, 738 F.3d 1337,
1347 (Fed. Cir. 2013) (the objective indicia “must be tied to the novel
elements of the claim at issue” and must “‘be reasonably commensurate with
the scope of the claims.’”); see also Joy Tech., Inc. v. Manbeck, 751 F. Supp.
225, 229–30 (D.D.C. 1990), aff’d, 959 F.2d 226 (Fed. Cir. 1992).
However, we agree with the Examiner’s ultimate determination that
the proffered evidence is insufficient to establish nonobviousness in view of
the prior art evidence. Secondary considerations evidence is only a part of
the “totality of the evidence”; its mere existence does not control the
conclusion of obviousness. Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d
1476, 1483 (Fed. Cir. 1997) (citations omitted). The Board has “broad
discretion as to the weight to give declarations offered in the course of
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prosecution.” In re Am. Acad. of Sci. Tech Center, 367 F.3d 1359, 1368
(Fed. Cir. 2004).
Although the Appellant has provided evidence of praise, this evidence
is generally of poor quality. For example, some of the praise evidence is
provided by the inventor, as well as by those who are close to the inventor,
including the inventor’s daughter, sister, nieces, and friends. Although
related status of such individuals to the inventor is not disqualifying, it
diminishes the probative value of their testimonies. The testimonial
evidence provided by these individuals and other professionals (including
teachers for the hard of hearing, an occupational therapist, a nurse, and
doctors) are also not supported by objective facts such as industry
recognition, commercial success, etc. In that regard, “the declarations
themselves offer only opinion evidence which has little value without factual
support.” In re Beattie, 974 F.2d 1309 (Fed. Cir. 1992).
In addition, although the Appellant asserts superiority of the claimed
invention over the hat of SilkaWear, and this assertion is repeated in the
submitted declaration and testimonial evidence, as noted above, such
evidence is of poor quality. No objective evidence has been provided as to
how many children actually wear the claimed hat, and for how long of a
duration, or by how much longer than a comparable prior art product. No
empirical data from actual use or testing is provided in support.
Therefore, having considered the evidence of record, including the
proffered evidence of secondary considerations, we agree with the Examiner
that claim 1 is not patentable. Accordingly, we affirm the rejection thereof.
Claim 2
Claim 2 recites that “the hat body and under-chin straps have their
conforming material of fabric, and the under-chin straps are at least about
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one inch in width.” Appeal Br., Claims App., CA-2. The Appellant argues
that such wide straps would not be suitable for tying in a knot as in
SilkaWear. Appeal Br. 50–51. However, this argument is misdirected in
that the rejection utilizes the straps of Reynolds, which are non-tying. Final
Act. 8. The Appellant also argues that claim 2 requires straps of fabric, but
Reynolds does not discloses the material composition of its straps. Appeal
Br. 51. However, 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. Accordingly, this line of argument is unpersuasive as
well. See also Ans. 14.
The Appellant also argues that Reynolds’ straps would have been
about 0.5 inch or less in view of a common adult head circumference, and
that providing a one-inch wide strap is impermissibly gleaned from the
Appellant’s disclosure based on hindsight reconstruction. Appeal Br. 51.
However, 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. Ans. 15; see also In re
Rose, 220 F.2d 459, 463 (CCPA 1955) (“size of the article under
consideration . . . is not ordinarily a matter of invention”); see also Gardner
v. TEC Systems, Inc., 725 F.2d 1338, 1346, (Fed. Cir. 1984); In re Kirke, 40
F.2d 765, 767 (CCPA 1930). The Appellant also asserts that providing
under-chin straps of at least about one inch in width as recited in claim 2
“does not involve only routine skill.” Appeal Br. 51. However, the
Appellant does not provide persuasive evidence or arguments in support of
this assertion.
Therefore, in view of the above considerations, we also affirm the
Examiner’s rejection of claim 2.
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Rejection 4: Carrington in view of Reynolds and Niedrich
The Examiner rejects claims 1, 2, 4–7, 9–11, and 13–16 as
unpatentable over Carrington in view of Reynolds and Niedrich. Final Act.
10. The Examiner finds that Carrington discloses the invention substantially
as claimed, except for the recited limitations pertaining to “an opposing pair
of under-chin straps” and “a conforming open mesh configured to cover the
external hardware of the cochlear implant or the traditional hearing aid.”
Final Act. 10–12. The Examiner again relies on Reynolds for teaching “an
opposing pair of under-chin straps,” and concludes that it would have been
obvious to one of ordinary skill in the art to have modified the chin strap of
Carrington in view of Reynolds “in order to allow faster release of the hat
from the wearer’s head and to reduce production costs by eliminating the
need for the attachment ring” of Carrington. Final Act. 12–13.
The Examiner also finds that “Niedrich teaches a similar cap (12, 14)
(fig. 3) having mesh ear panels (50) (paras, 10,[]30) that one can see through
(fig. 3 shows the holes in the mesh and an outline of the wearer’s ear visible
through the panel).” Final Act. 13. The Examiner concludes that it would
have been obvious to one of ordinary skill in the art to have modified the
fabric material of the depending projection portions of the
Carrington/Reynolds combination “to include mesh ear panels in view of
Niedrich in order to increase the user’s ability to hear and minimize
attenuation of sounds while wearing the hat.” Final Act. 13–14, citing
Niedrich ¶ 10. The Examiner elaborates that the rejection “modifies the
fabric of Carrington and does not require cutting away [the] foam [core] to
further expose the ear. Carrington (the primary reference) already discloses
openings in the foam.” Ans. 19.
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The Appellant argues, inter alia, that Carrington’s hat “is opaque and
heat-insulative, and meant to guard against head injury from impact,” and
“its opacity . . . hinders if not obstructs what the claims require: external
viewing of the external hardware of a cochlear implant or traditional hearing
aid.” Appeal Br. 60. The Appellant also argues that the Examiner’s
articulated reason of increasing the wearer’s ability to hear and minimize
attenuation of sounds for modifying Carrington to include mesh ear panels is
“abstract [and] not practical” because Carrington already addressed this
rationale by providing an alternate embodiment, which does not cover the
ears. Appeal Br. 59, citing Carrington, col. 5, ll. 27–30 (“Protective hat 70 is
an alternate embodiment wherein region 76 of head-receiving portion 72 is
cut so as to uncover a portion of the ear of the wearer in order to permit the
wearer to hear better.”); Figs. 6–10. The Examiner responds that “[t]he
Carrington/Reynolds/Niedrich combined reference is reasonably capable of
performing the claimed intended uses.” Ans. 20.
We find the Appellant’s arguments persuasive and the Examiner’s
rejection inadequate. As the Appellant points out, Carrington’s hat includes,
as one of its layers, cores made of a “shock absorbent and thermally
insulating material,” which is a foam material. Carrington, col. 3, ll. 13–17;
col. 5, ll. 41–46; Fig. 4. This material is not depicted as being transparent,
and such cores would be positioned over the ears when the hat is worn.
Carrington, Figs. 1, 4. Moreover, the Examiner explained that the rejection
“modifies the fabric of Carrington and does not require cutting away [the]
foam [core] to further expose the ear.” Ans. 19. Accordingly, even if
Carrington’s hat is modified in view of Niedrich to replace the outer fabric
shell with the mesh ear panels in view of Niedrich, the cores of Carrington
remain.
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The Examiner correctly observes that Carrington “already discloses
openings in the foam,” and based thereon, finds that “[t]he open mesh ear
panels [of Niedrich] overlying openings of Carrington would provide
openings through all layers of the depending projection portions allowing
. . . external viewing of the external hardware of a cochlear implant or
traditional hearing aid.” Ans. 19–20. However, there is no indication that
the openings/holes in the cores of Carrington’s modified hat are positioned
in a manner to allow “external visibility of the external hardware of the
cochlear implant or the traditional hearing aid of the wearer by a non-wearer
of the hat when the hat and the external hardware of the cochlear implant or
the traditional hearing aid of the wearer are worn by the wearer” as
functionally recited by claim 1. As such, the Examiner’s finding appears to
be speculative.
In addition, we also find persuasive, the Appellant’s argument that the
Examiner’s articulated reason for modifying Carrington is inadequate.
Appeal Br. 59. As the Appellant correctly points out, Carrington already
teaches use of an alternate embodiment that uncovers the wearer’s ears to
improve hearing. Appeal Br. 59; Carrington, col. 5, ll. 27–30; Figs. 6–10.
The Examiner responds that “Niedrich provides explicit motivation for
providing mesh ear panels,” and that “Carrington provides openings in the
foam layer of the hat to improve hearing and to allow for the use of hearing
aids,” such that “any modification to even further improve hearing would be
a welcome benefit to Carrington.” Ans. 18–19. However, the logical
extension of the Examiner’s reasoning is to use the alternate embodiment of
Carrington that uncovers the wearer’s ears. Although there may be a
rational reason for one of ordinary skill in the art to look outside the solution
provided by Carrington to specifically modify the embodiment of Figure 1
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of Carrington such that its outer fabric shell over the depending projection
portion is replaced with the mesh of Niedrich, the Examiner has not
articulated such a reason. Accordingly, the reason articulated by the
Examiner for the suggested combination is not based on rational
underpinnings.
Therefore, in view of the above considerations, we reverse the
Examiner’s rejection of claim 1, and of claims 2, 4–7, 9–11, and 13–16 that
ultimately depend from claim 1. The remaining disputes between the
Appellant and the Examiner regarding: the field of endeavor (Appeal Br.
53–54; Ans. 16); the articulated reasons for using the straps of Reynolds
(Appeal Br. 58–59; Ans. 17–18); non-conformity of the straps (Appeal Br.
61; Ans. 21); the mesh of Niedrich being non-conforming (Appeal Br. 61)
and obstructing visibility (Appeal Br. 62–63; Ans. 21); and the secondary
considerations evidence (Appeal Br. 63), are all moot. In addition, the
Appellant’s separate arguments directed to the limitations of dependent
claims 2, 4, 6, and 7 (Appeal Br. 64–66), and the Examiner’s responses
thereto (Ans. 22–25) are also all moot.

Rejection 5: Carrington in view of Reynolds, Niedrich, and Anderson
The Examiner rejects claims 3 and 12 as unpatentable over Carrington
in view of Reynolds, Niedrich, and Anderson, relying on Anderson for
disclosing a hat made of stretch fleece, which is required by claims 3 and 12.
Final Act. 18–19. However, the Examiner’s application of Anderson does
not remedy the deficiencies of Carrington discussed above relative to
Rejection 4. Accordingly, we reverse this rejection, and the Appellant’s
various arguments (Appeal Br. 66–71), and the Examiner’s responses thereto
(Ans. 24), are moot.
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Rejection 6: Carrington in view of Reynolds, Niedrich, and Goldstein
The Examiner rejects claims 8 and 17 as unpatentable over Carrington
in view of Reynolds, Niedrich, and Goldstein, relying on Goldstein for
disclosing a hat having a pompom attached thereto. Final Act. 19–20.
However, the Examiner’s application of Goldstein does not remedy the
deficiencies of Carrington discussed above relative to Rejection 4.
Accordingly, we reverse this rejection, and the Appellant’s various
arguments (Appeal Br. 71–74), and the Examiner’s responses thereto (Ans.
25), are moot.
CONCLUSION
The Examiner’s rejections are affirmed in part. More specifically,
1. Rejection of claim 2 under 35 U.S.C. §112(a) is reversed.
2. Rejection of claims 1–17 under 35 U.S.C. § 112(b) is reversed.
3. Rejection of claims 1 and 2 under 35 U.S.C. § 103 based on
SilkaWear in view of Reynolds is affirmed.
4. Rejection of claims 1, 2, 4–7, 9–11, and 13–16 under 35 U.S.C.
§ 103 based on Carrington in view of Reynolds and Niedrich is reversed.
5. Rejection of clams 3 and 12 under 35 U.S.C. § 103 based on
Carrington in view of Reynolds, Niedrich, and Anderson is reversed.
6. Rejection of claims 8 and 17 under 35 U.S.C. § 103 based on
Carrington in view of Reynolds, Niedrich, and Goldstein is reversed.
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DECISION SUMMARY
In summary:
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,
Niedrich,
Goldstein
8, 17
Overall
Outcome
1, 2 3–17

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED IN PART