Ex Parte Dungan

Board of Patent Appeals and Interferences

Sep 10, 2012

11839844 (B.P.A.I. Sep. 10, 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.
11/839,844 08/16/2007 William L. Dungan 6321-001 9212
24112 7590 09/10/2012
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
OLSON, LARS A
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
09/10/2012 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 WILLIAM L. DUNGAN
____________

Appeal 2010-003446
Application 11/839,844
Technology Center 3600
____________

Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
JAMES P. CALVE, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
William L. Dungan (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1-11. Appellant cancelled
claims 12-18. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2010-003446
Application 11/839,844

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THE CLAIMED SUBJECT MATTER
The claimed subject matter “relates generally to water sports
equipment, and more particularly, to a water safety flag for attachment to a
life jacket to improve visibility of persons in the water.” Spec. 1, para.
[002]. Claims 1 and 10 are independent and claim 1, reproduced below,
with emphasis added, is illustrative of the subject matter on appeal.
1. A safety flag for a life jacket
comprising:
a flag assembly detachably secured to a
backside of a life jacket; said flag assembly
including a flexible, resilient flag pole and a flag
attached adjacent an upper end of said flag pole,
wherein said flag pole bends over the shoulder of a
user in a stowed position and stands upright in a
deployed position;
a flag holder secured to a front side of said
life jacket, said flag holder including a pocket to
receive the flag when the flag pole is in the stowed
position; and
a rip cord connected to the flag assembly
and adapted to be pulled by the user to release said
flag from said flag holder when the user is in the
water, such that said flag will rise to a deployed
position when released to alert watercraft to the
presence of the user.

THE REJECTIONS
The following Examiner’s rejections are before us for review.
(1). Claims 1, 2, 5, 6, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Samano (US 5,651,711, issued Jul. 29, 1997) and Roe
(US 4,598,661, issued Jul. 8, 1986).
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Application 11/839,844

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(2). Claims 3, 4, 7, and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Samano, Roe, and Melendez (US 4,752,264, issued Jun.
21, 1988).
(3). Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Melendez and Ely (US 6,033,275, issued Mar. 7, 2000).

OPINION
Rejection (1) – Obviousness based on Samano and Roe
The Examiner finds that Samano substantially discloses independent
claim 1’s subject matter of a safety flag for a life jacket, including a flag
assembly (flag pole 4 and flag 5) and “a strap (7) that is attached to a
flotation vest (1) for securing around and restraining a flag pole (9) with an
attached flag (5),” wherein “a user pulls on said strap in order to release said
flag pole.” Ans. 4 and 7 (referring to Samano, col. 4, ll. 31-36 and Figs. 1
and 3). The Examiner notes that since Appellant’s rip cord 144 is a strap
(Spec. [027]), Samano’s similar strap 7 is a rip cord because it functions the
same as Appellant’s rip cord. Ans. 7.
Appellant argues that “the strap in Samano [cannot] function as the
claimed rip cord in the proposed combination because the strap attaches to
the vest and not to the flag [assembly] as recited in the claim.” App. Br. 6.
More particularly, Appellant argues that “nothing in Samano teaches or
suggests that the alleged rip cord (strap 7) is connected to the flag assembly,
as required by the claim” and “[i]nstead, the strap 7 merely lays over the flag
pole 4; it is not joined or connected to the flag assembly,” but “[r]ather, the
strap 7 is connected to the safety vest.” Reply Br. 5. Appellant further
argues that “even if Samano is modified by Roe, as suggested by the
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Application 11/839,844

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Examiner, the strap 7 would not be connected to Samano’s flag pole 4 or
flag 5,” i.e., flag assembly and thus, the “combination would not teach or
suggest each and every element of the claim.” Id.
We do not agree with the Examiner that Samano’s rip cord (strap 7)
functions the same as the rip cord 144 (see Reply Br. 2) disclosed by
Appellant. Samano’s rip cord (strap 7) functions to keep the flag pole 4 bent
over the shoulder of the wearer of the flotation vest 1 as illustrated in Figure
1 when hook and loop fasteners 8 and 9 are engaged with each other, and to
release the flag pole 4 from its bent position and raise the flag 5 as illustrated
in Figure 3 when hook and loop fasteners 8 and 9 are disengaged from each
other. Samano, col. 4, ll. 21-28 and 31-36; Figs. 1 and 3. While Appellant’s
rip cord (unlabeled in Figs. 1 and 4; 144 in Figs. 5, 6, and 14) performs these
same functions, it additionally aids in withdrawal of the flag 140 from the
flag holder 150 because of the rip cord’s 144 attachment to the flag assembly
(flag pole 110 and flag 140). Thus, even if Samano were modified to have a
flag holder (pocket member 22) as taught by Roe, the rip cord (Samano,
strap 7) of the resulting device could not aid in withdrawal of the flag 5 from
the flag holder (Roe, pocket member 22) as does Appellant’s rip cord 144,
because the rip cord (Samano, strap 7) would be attached to the flotation
vest 1 and not the flag assembly (flag pole 4 and flag 5) as required by claim
1.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1, and claims 2, 5, 6, and 9 dependent thereon, under 35
U.S.C. § 103(a) as unpatentable over Samano and Roe.

Appeal 2010-003446
Application 11/839,844

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Rejection (2) – Obviousness based on Samano, Roe, and Melendez
Appellant argues that Melendez fails to cure the deficiency of Samano
and Roe. App. Br. 7. As Melendez does not teach a rip cord “connected to
the flag assembly” as required by independent claim 1, but rather teaches a
flag assembly (flag pole 23 and flag 24) that is always in a deployed state as
shown in Figures 1 and 2, we agree with Appellant that Melendez does not
cure the deficiency of the combination of Samano and Roe. Accordingly,
we do not sustain the Examiner’s rejection of claims 3, 4, 7, and 8 under 35
U.S.C. § 103(a) as unpatentable over Samano, Roe, and Melendez.
Rejection (3) – Obviousness based on Melendez and Ely
Independent claim 10 is directed to an article holder for attachment to
a life jacket, and recites, inter alia, “a pocket member having an opening for
insertion and removal of articles into a pocket,” and “a flap to cover the
opening to the pocket.” App. Br., Clms. App’x.
The Examiner finds that Melendez substantially discloses the subject
matter of independent claim 10, “including a pocket member, defined at Part
#42, having a pocket, defined as Part #76, with an opening to receive an
article, defined as Part #23, in the form of a flag pole.” Ans. 6. However,
the Examiner also finds the Melendez fails to disclose “the use of a flap to
cover an opening of said pocket of said article holder.” Id. To cure the
deficiency of Melendez, the Examiner turns to Ely for the disclosure of “an
article holder for a life jacket, as shown in Figure 3, that includes a pocket,
defined as Part #50, with a flap, defined as Part #60, for covering an opening
to said pocket.” Id. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art:
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Application 11/839,844

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to utilize a pocket with a cover flap, as taught by
Ely, in combination with the article holder as
disclosed by Melendez et al. for the purpose of
providing an article holder with a pocket with a
means for covering an opening of said pocket in
order to secure and protect the contents of said
pocket.
Ans. 6-7.
Appellant argues that a person of ordinary skill in the art would have
no reason to modify Melendez with the flap of Ely as suggested by the
Examiner, as “no flap is required in Melendez’s alleged pocket member
(strap 42) to retain articles (such as the flag or flag pole) therein because the
flag pole is fixed in the alleged pocket member,” and “[a]dding the flap to
the opening of the alleged pocket member will not further secure the flag
pole therein.” See Reply Br. 6; see also App. Br. 8-9.
Ely discloses a flotation member 26 having a pocket 50 for containing
an entire signaling device 28 (i.e., flag 66 and pole 62) and a flap 56 for
covering an open end 54 of the pocket 50. When the flap 56 is in the open
position as shown in Figure 3, Ely’s entire signaling device 28 can be
removed from the pocket 50 for use in signaling as shown in Figure 1. In
contrast, Melendez’s safety flag 22 (i.e., flexible mast 23 and flag 24) is
never completely housed within pocket 76, but rather is meant to extend
from pocket 76 at all times. The Examiner’s rejection does not sufficiently
explain what in the prior art would have prompted a person of ordinary skill
in the art to modify the life jacket 13 of Melendez to include the flap 56 of
Ely, because it does not appear that a flap as taught by Ely would be able to
cover the opening in a manner so as to secure and protect the mast 23 within
the pocket 76 as suggested by the Examiner. As we are not persuaded that
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Application 11/839,844

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the Examiner’s articulated reasoning has rational underpinnings (see KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (holding 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”), we do not
sustain the Examiner’s rejection of independent claim 10, and claim 11
dependent thereon, under 35 U.S.C. § 103(a) as unpatentable over Melendez
and Ely.

DECISION
We reverse the Examiner’s decision to reject claims 1-11.

REVERSED

mls