Ex Parte Asiatico

Patent Trial and Appeal Board

Mar 31, 2015

12567252 (P.T.A.B. Mar. 31, 2015)

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.
12/567,252 09/25/2009 Benny Asiatico JASIA.0101 3926
22858 7590 04/01/2015
CARSTENS & CAHOON, LLP
P.O. Box 802334
DALLAS, TX 75380-2334
EXAMINER
COLLINS, ANDREW WARREN
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
04/01/2015 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 BENNY ASIATICO
____________

Appeal 2012-003942
Application 12/567,252
Technology Center 3700
____________

Before ANNETTE R. REIMERS, SUSAN L. C. MITCHELL, and
BRANDON J. WARNER, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Benny Asiatico (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision to reject under 35 U.S.C. § 103(a): (1) claims 1, 2,
and 4 as unpatentable over Vernon (US 2002/0095714 A1; pub. July 25,
2002); (2) claims 3 and 5 as unpatentable over Vernon and Wong (US
2008/0034473 A1; pub. Feb. 14, 2008); (3) claims 7–9 and 11 as
unpatentable over Calvo (US 5,920,910; iss. July 13, 1999) and Vernon; and
(4) claims 10 and 12 as unpatentable over Calvo, Vernon, and Wong.
Appeal Br. 2. Claims 6 and 13 are canceled. Id. We have jurisdiction under
35 U.S.C. § 6(b).
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We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to “a secondary perspiration
absorber for a hat.” Spec., para. 5; Figs. 1–4. Claims 1 and 7 are
independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A secondary perspiration absorber, comprising:
a core made of a first material;
an absorbent layer surrounding said core made of a
second material which is different than said first material; and
a porous outer layer surrounding said absorbent layer
made of a third material which is different from said first
material and second material;
a length, a height and a thickness such that less than
about 25% of said absorber is visible when said absorber is
placed behind an inner lip of a hat.

ANALYSIS

Obviousness over Vernon
Claims 1, 2, and 4
Appellant argues the claims subject to this ground of rejection (i.e.,
claims 1, 2, and 4) as a group. Appeal Br. 5‒6. We select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(viii) (2011). Claims 2 and 4
stand or fall with claim 1.
The Examiner finds that Vernon discloses the secondary perspiration
absorber as claimed, except that “Vernon does not specifically disclose a
length, a height and a thickness such that less than about 25% of said
absorber is visible when said absorber is placed behind an inner lip of a hat.”
Ans. 4. The Examiner finds that “Vernon does state that variations in size
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and shape are allowable as long as to not depart from the principles and
concepts of the invention.” Id. at 4–5; see also Vernon, para. 45. The
Examiner reasons that “[m]aking the absorbent headband of Vernon of a
sufficient size and shape so as to fit behind an inner lip of a hat such that less
than about 25% of the absorber is visible is in keeping with absorbing sweat
from a wearer’s brow region as disclosed in Vernon.” Id. at 5. The
Examiner concludes that
it would have been obvious to one of ordinary skill
in the art at the time the invention was made to
have created the absorbent headband with the
aforementioned dimensions because doing so
would create a more secure fit behind the inner lip
of a standard hat, which involves a mere change in
the size of a component of the prior art. A change
in size is generally recognized as being within the
level of ordinary skill in the art.
Id. (citing In re Rose, 220 F.2d 459, 463 (CCPA 1955)).
Appellant contends that “the invention of claim 1 does not represent a
‘mere change in size’ to the headband of Vernon, but instead contemplates a
specific size based on the intended use of the device – a use not taught or
[suggested by] Vernon.” Appeal Br. 6. Specifically, Appellant contends
that “(1) Vernon never once mentions a hat, and (2) Vernon never suggests
that its headband be used in conjunction with a hat, especially by being
placed behind the inner lip of a hat.” Id. at 5; see also Reply Br. 1–2.
Appellant’s arguments are not persuasive. At the outset, it is well
established that size is not ordinarily a patentable feature. In re Rose, 220
F.2d 459, 463 (CCPA 1955) (claims directed to a lumber package “of
appreciable size and weight requiring handling by a lift truck” were held
unpatentable over prior art lumber packages which could be lifted by hand
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because limitations relating to the size of the package were not sufficient to
patentably distinguish over the prior art.); Gardner v. TEC Systems, Inc., 725
F.2d 1338, 1346, (Fed. Cir. 1984), cert. denied, 469 U.S. 830 (1984),
(holding that, where the only difference between the prior art and the claims
was a recitation of relative dimensions of the claimed device and a device
having the claimed relative dimensions would not perform differently than
the prior art device, the claimed device was not patentably distinct from the
prior art device); see also Ans. 5.
In response, the Examiner restates that “making the absorbent
headband of Vernon of a sufficient size and shape so as to fit behind an inner
lip of a hat such that less than about 25% of the absorber is visible is in
keeping with absorbing sweat from a wearer's brow region as disclosed in
Vernon.” Ans. 11. The Examiner correctly points out that “[A]ppellant
acknowledges [that] Vernon discloses that variations in size and shape are
allowable as long as to not depart from the principles and concepts of the
invention.” Id. at 10; see also Appeal Br. 7; Vernon, para. 45. The
Examiner reasons that
[t]he primary principle and concept of the [subject]
invention is to remove and absorb sweat from a
wearer’s brow or forehead region. Using the
headband as solely a headband or using it in
combination with a hat will still allow for
removing and absorbing sweat from a wearer’s
brow or forehead region. There is nothing in the
physical makeup, figures or description from
Vernon that would prevent the sweat absorber
from being placed behind an inner lip of a hat.
Appellant argues two further points that the sweat
absorber of Vernon must be against the forehead of
a wearer and that it can be used as a fashionable
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head garment alone. Both of these examples point
to examples of how the sweat absorber can be
used, but they do not limit the physical structure or
how the absorber could be used. Vernon provides
for a structure that meets all of the limitations of
the current application and is capable of being
positioned in any location that the current
application could be positioned, including behind
the inner lip of a hat.
Ans. 10–11 (emphasis added).
Claims directed to an apparatus, as here, must be distinguished from
the prior art in terms of structure rather than function. See In re Schreiber,
128 F.3d 1473, 1477–78 (Fed. Cir. 1997); see also Hewlett-Packard Co. v.
Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“apparatus
claims cover what a device is, not what a device does”). We agree with the
Examiner that the identified structure of Vernon (i.e., Vernon’s headband) is
capable of being positioned behind the inner lip of a hat, as recited in the
claim. See Ans. 11. Appellant does not provide any evidence or persuasive
technical reasoning why the identified structure of Vernon would not be
capable of such operation.
We further are not persuaded by Appellant’s allegation that the
subject invention “contemplates a specific size.” See Appeal Br. 6. The
Specification describes that (1) “[a] secondary absorber fits substantially
behind the inner lip of a hat when less than about 25% of the absorber is
visible when it is in place behind the inner lip of a hat” (Spec., para. 14); and
(2) “the embodiment depicted in Figure 4 is slightly visible over the inner lip
of the hat . . . [and in] another embodiment, the absorber would not be
visible above the inner lip of the hat” (Id. at para. 17). The Specification
does not describe (1) Appellant’s current rationale for alleged criticality, or
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(2) a preference for any specific value. And even with respect to the current
assertion (Appeal Br. 6), Appellant fails to put forth any factual evidence of
alleged unexpected results to support the criticality of the claimed value.
See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“It is well settled
that unexpected results must be established by factual evidence.”).
Appellant contends that
Vernon . . . teaches away from placing its
headband behind the inner lip of a hat for two
reasons. First, if placed behind the inner lip of a
hat, it would not be against the wearer’s forehead,
which is directly counter to the teachings of
Vernon. Second, behind the inner lip of a hat, the
Vernon headband could not be used as a
fashionable head garment, again running counter
to Vernon.
Appeal Br. 5–6 (citing Vernon, para. 12, 37, and 41); see also Reply Br. 1–2.
Appellant’s arguments are not persuasive. At the outset, Appellant’s
contention that if placed behind the inner lip of a hat, Vernon’s headband
would not be against the wearer’s forehead amounts to unsupported attorney
argument, and thus is entitled to little, if any, weight. See In re De Blauwe,
736 F.2d at 705 (arguments and conclusions unsupported by factual
evidence carry no evidentiary weight). Appellant does not establish that the
prior art teaches away from the claimed invention because Appellant does
not demonstrate that “a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed Cir. 1994). At best, the
prior art here merely discloses an alternative, which is not, by itself,
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sufficient to demonstrate a teaching away.1 In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one
alternative does not constitute a teaching away from any of the[] [disclosed]
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed . . . .”).
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 1 as unpatentable over Vernon. Claims 2 and 4 fall with
claim 1.
Obviousness over Vernon and Wong
Claim 3
Appellant contends that

Vernon discloses a headband comprising a
“flexible, resilient C-shaped core member,” and
throughout Vernon the core is described as being
made of plastic. The plastic core gives the
headband of Vernon enough structural rigidity to
hold the headband against the head of the wearer,
thereby making the headband of Vernon a
“fashionable head garment.”
Appeal Br. 6 (citing Vernon, para. 41).
Appellant’s arguments are not persuasive. At the outset, Appellant’s
contention the plastic core gives the headband of Vernon enough structural
rigidity to hold the headband against the head of the wearer amounts to
unsupported attorney argument, and thus is entitled to little, if any, weight.
Further, as discussed above, Vernon’s disclosure of a “fashionable head

1 Vernon discloses, “Alternatively, the apparatus can be worn as a
fashionable head garment for appearance improvement only.” Vernon, para.
41 (emphasis added).
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garment” is merely an alternative use for the headband. See Vernon, para.
41.
Appellant contends that “[Vernon’s] headband, as modified by Wong,
could not possibly provide the rigidity and resilience needed to hold the
headband against the wearer’s head, especially after it has become wet with
perspiration” and that “[o]ne skilled in the art would not substitute the
cardboard of Wong for the plastic of Vernon because it would depart from
the principles and concepts set forth in Vernon by rendering the device
inoperable.” Appeal Br. 7; see also Reply Br. 2.
In response, the Examiner states that
[t]here is no quantitative amount of rigidity
required from the disclosure with regards to the
plastic core of Vernon. Wong already teaches that
structural rigidity can be interchangeably provided
by both plastics and cardboard when it comes to
caps. Certainly a substantial or slightly thicker
piece of cardboard could provide all of the
necessary rigidity for the sweat absorber of Vernon
to function as it is intended.
Second, [A]ppellant concludes that the core
provides the only structural rigidity to hold the
headband against the head of the wearer. Nowhere
in the specification of Vernon is this stated. There
are additional absorbing layers that tightly
surround the center core. These additional layers
will add further structure and substantial rigidity to
the already rigid core, whether that core is
constructed with plastic as disclosed in Vernon or
if replaced by cardboard as taught by Wong.
Ans. 11–12; see also Final Act. 2–3 (mailed May 10, 2011). Appellant does
not present any persuasive evidence or arguments apprising us of error
regarding the Examiner’s findings or conclusions.
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Appellant contends that “[t]he simple fact is, if cardboard were used
as the core material for the Vernon headband, it could not possibly remain
resilient enough to retain the headband on the forehead of the wearer,
thereby rendering it inoperable” and that “[b]y stark contrast, [Appellant’s]
device does not require the structural rigidity and resilience of the plastic
core disclosed in Vernon.” Appeal Br. 7. However, we note that
Appellant’s Specification describes that
[t]he core [of the subject invention] can be made of
any relatively stiff, absorbent material. Although
it need not be as efficient at absorbing water as the
absorbent layer, the core material can itself be
somewhat absorbent. This property will increase
the overall absorptive capacity of the secondary
absorber of the present invention. The core
material can comprise, for example, cardboard or
paperboard. Such a material is able to absorb
some moisture while retaining a high degree of its
original stiffness.
Spec., para. 22 (emphasis added). Based on Appellant’s disclosure, it
appears that a core material of cardboard could remain resilient enough to
retain a headband on the forehead of a wearer. Accordingly, Appellant’s
argument is not persuasive.
Appellant contends that “[Appellant’s] core structure functions to
improve ‘the ease of handling it when it is saturated with perspiration’ . . . .
Thus, [Appellant’s] core serves an entirely different function than the core of
Vernon, and is a novel and non-obvious improvement over the cited art.”
Appeal Br. 7 (citing Spec., para. 21).
Appellant’s argument is not persuasive because it is not
commensurate in scope with the claims. At the outset, we note that neither
claim 3 nor claim 1, from which claim 3 ultimately depends, requires the
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core structure to function to improve “the ease of handling it when it is
saturated with perspiration.” Claim 1 merely calls for “a core made of a first
material.” See Appeal Br. 11, Claims App. We further are not persuaded by
Appellant’s contention because Appellant does not present any evidence or
technical reasoning why the identified core structure of Vernon as modified
by Wong would not also ease handling of the core structure when it is
saturated with perspiration. See Ans. 12; see also Spec., para. 22.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 3 as unpatentable over Vernon and Wong.
Claim 5
Appellant contends that “[a]s described above with respect to claim 3,
[the core material comprising cardboard or paperboard] materials would
render the Vernon device inoperable.” Appeal Br. 8. As discussed above in
reference to claim 3, this argument is not persuasive.
Accordingly, for similar reasons as those discussed above for claim 3,
we sustain the Examiner’s rejection of claim 5 as unpatentable over Vernon
and Wong.
Obviousness over Calvo and Vernon
Claims 7‒9 and 11
Appellant argues the claims subject to this ground of rejection (i.e.,
claims 7‒9 and 11) as a group. Appeal Br. 8‒9. We select claim 7 as
representative. Claims 8, 9, and 11 stand or fall with claim 7.
Appellant contends that “[Appellant] has discussed the inapplicability
and contrary teachings of Vernon in detail with respect to claim 1 . . . (which
arguments are incorporated herein by reference).” Appeal Br. 8. As
discussed above in reference to claim 1, these arguments are not persuasive.
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Appellant also contends that
the Calvo absorber is placed directly against the
head of the hat wearer, and only a support member
is placed behind the inner lip of the hat.
[Appellant] again stresses that Examiner has not
cited any teaching or suggestion in the art to place
a secondary absorber substantially behind the inner
lip of a hat. In fact, all of Examiner’s references
teach that the absorber should be directly against
the forehead of the wearer.
Appeal Br. 8; see also Reply Br. 2.2
Appellant’s arguments are not persuasive. First, Appellant’s
arguments are individual attacks on the references rather than a challenge to
the Examiner’s combination of the teachings of the Calvo and Vernon
references. See In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986); In re
Keller, 642 F.2d 413 (CCPA 1981) (one cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references). Second, Appellant’s arguments appear to hinge
primarily on the premise that the prior art does not pass the TSM (teaching,

2 The Specification describes, “When this embodiment of the secondary
absorber 8 is placed behind the lip 22 of the baseball cap 20 depicted in
Figures 3 and 4, and directly above the bill of the cap, the larger surface area
of the middle of the secondary absorber 8 is directly adjacent to the forehead
of the wearer . . . . The larger surface area more efficiently absorbs
perspiration occurring at the forehead of the wearer of the cap. Spec.,
para. 15 (emphasis added); Figs. 3, 4. Moreover, Appellant does not direct
us to any portion of Calvo or Vernon that “teach[es] placing [the] respective
sweat absorbers directly and entirely against the head of the wearer.” Reply
Br. 2; see also Appeal Br. 8. Appellant only provides arguments, but
attorney argument is no substitute for facts. See In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974).

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suggestion, or motivation) test. Although the TSM test is a test that may be
applied to determine obviousness, we consider whether the Examiner has
articulated adequate reasoning based on a rational underpinning to explain
why a person of ordinary skill in the art would have been led to combine the
teachings of the cited art as applied in the rejection. See KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (stating that “rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness” (citing In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))). Further, the reason to modify
the reference may often prompt a person of ordinary skill in the art to do
what the inventor has done, but for a different purpose or to solve a different
problem. It is not necessary that the prior art suggests the combination to
achieve the same advantage or result discovered by an applicant. See In re
Kahn, 441 F.3d at 987–88.
Here, the Examiner provides articulated reasoning with a rational
underpinning for the combination of teachings of Calvo and Vernon,
namely, to modify Calvo’s hat device “[by substituting Calvo’s] secondary
absorber with the secondary absorber taught by Vernon” to “provide[] for an
item that absorbs sweat and is made from inexpensive and durable material.”
Ans. 8; see also id. at 12. Thus, we are not persuaded of error in the
Examiner’s reasoning based on the combination of Calvo and Vernon.
Appellant contends that
Calvo discloses placing a water resistant material
between the inner band and the crown of the cap.
. . . This is intended to prevent moisture and oil
from passing through the inner band and into the
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crown of the cap. . . . This is the exact opposite of
the claimed method, which discloses placing
absorptive materials between the inner lip and
crown of the cap. Calvo also discloses a water
resistant layer between the perspiration absorber
and the inner band of the cap.
Appeal Br. 8 (citing Calvo, Abstract; col. 2, ll. 45–61).
Appellant’s argument is not persuasive because it is not responsive to
the Examiner’s rejection. The Examiner makes clear that the combination
applied in the rejection is “to replace the entire absorber of Calvo with the
entire absorber as taught by Vernon.” Ans. 12 (emphasis added). Further, in
response, the Examiner reasons that
[the combination of Calvo and Vernon] creates a
superior sweat absorber and cap combination to
that of the one found in Calvo alone. The absorber
of Calvo does not have additional layers of
structural rigidity to form and maintain a particular
shape. As detailed above, the Vernon absorber has
a certain amount of structural rigidity due to its
layered construction. Vernon’s absorber will
function better than that of Calvo because the
material of the absorber will not fold or bunch up,
as could happen with the absorber of Calvo.
Retaining a structured shape will ensure that the
maximum surface area of the wearer's forehead
will be covered and protected at all times. Another
issue with the Calvo design is that it requires two
portions of a sweat absorber (both in front of the
inner lip and behind the inner lip) to handle the
requirements that the Vernon design can complete
with merely a singular portion. This will save on
both weight, which will add to overall comfort for
the wearer, and manufacturing costs. Lowering the
manufacturing costs will reduce the upfront cost
for the end user which will further entice the
specific use of this particular product over any
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others available. It will also allow the user to more
frequently replace the absorber so as to keep a
more hygienic feeling and appearance.
Ans. 12–13.
The Examiner’s findings are supported by a preponderance of the
evidence, and the conclusions are based on rational underpinnings.
Appellant does not apprise us of error in the Examiner’s findings or
conclusions.
We also are not persuaded that the Examiner’s proposed combination
involves impermissible hindsight. See Reply Br. 2. Contrary to Appellant’s
assertion, the Examiner’s rejection does not include knowledge gleaned only
from the Appellant’s disclosure. Rather, for the reasons discussed above,
the rejection takes into account the teachings of Calvo and Vernon (i.e.,
knowledge that was within the level of ordinary skill at the time the claimed
invention was made). See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971).
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 7 as unpatentable over Calvo and Vernon. Claims 8, 9,
and 11 fall with claim 7.
Obviousness over Calvo, Vernon, and Wong
Claim 10
Appellant contends that, for the reasons set forth for claims 1, 3 and 7,
Appellant “submits that claim 10 is novel and non-obvious over the cited art.
In particular, Applicant re-emphasizes the fact that Calvo discloses two
water resistant layers in its device, whereas all layers of Applicant’s
invention are water absorptive.” Appeal Br. 9. As discussed above, these
arguments are not persuasive. Further, as discussed above, the Examiner
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proposes “to replace the entire absorber of Calvo with the entire absorber as
taught by Vernon.” Ans. 12 (emphasis added).
Accordingly, for the reasons discussed above, we sustain the
Examiner’s rejection of claim 10 as unpatentable over Calvo, Vernon, and
Wong.
Claim 12
Appellant contends that, “[f]or the combination of reasons set forth
above for claims 1, 5 and 7, [Appellant] submits that claim 12 is novel and
non-obvious over the cited art.” Appeal Br. 9. As discussed above, these
arguments are not persuasive.
Accordingly, for the reasons discussed above, we sustain the
Examiner’s rejection of claim 12 as unpatentable over Calvo, Vernon, and
Wong.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1–5 and
7–12.
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