Ex Parte Henf

Board of Patent Appeals and Interferences

Jan 30, 2009

11300538 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD HENF
____________

Appeal 2008-5297
Application 11/300,538
Technology Center 3700
____________

Decided:1 January 30, 2009
____________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and JEFFREY
N. FREDMAN, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-5297
Application 11/300,538

DECISION ON APPEAL
This is a decision on appeal from the Examiner‘s final rejection of
claims 1-3, 6-12, 15-17, and 19-22. We have jurisdiction for the appeal
under 35 U.S.C. § 6(b). The final rejection is affirmed.

STATEMENT OF THE CASE
The claims relate to a novelty baseball cap which is claimed to
simulate the appearance of a football helmet. The claimed cap is said to
have features that create the illusion of a football player wearing a football
helmet for fans to wear as a way of showing their support for a football team
(Spec. ¶¶ 2-4).
Claims 1-3, 6-12, 15-17, and 19-22 are pending. The claims stand
rejected by the Examiner as follows:
Claims 1, 3, 8-10, 12, 17, and 19-22 under 35 U.S.C. § 103(a) as
obvious in view of Hur (US 4,985,935, Jan. 22, 1991), Lee (US 6,240,568
B1, Jun. 5, 2001), and Crowder (US 2,648,847, Aug. 18, 1953) (Ans. 3);
Claims 6, 7, 15, and 16 under 35 U.S.C. § 103(a) as obvious in view
of Hur, Lee, Crowder, and Cohoon (US 1,134,515, Apr. 6, 1915) (Ans. 5, 7);
and
Claim 11 under 35 U.S.C. § 103(a) as obvious in view of Hur, Lee,
Crowder, and Weiner (US Des. 109,110, March 29, 1938) (Ans. 6).
Claims 1, 6, 7, 9, 19, and 20, which read as follows, are
representative:
1. A novelty baseball cap which simulates an appearance of a
football helmet comprising:
a crown having a generally concave shape including a
front section and a back section, said crown dimensioned to fit
2
Appeal 2008-5297
Application 11/300,538

about an upper portion of a person's head, and formed from a
fabric material;
a semi-rigid bill portion extending from said front section
along a portion of a peripheral edge of said crown;
a modified area defined on a portion of said crown
extending from said peripheral edge above said bill portion,
said modified area defining a simulated profile that corresponds
to a helmet profile of a portion of a football helmet face
opening, at least a portion of a surface of said modified area
having a contrasting color that is different from a color of an
exterior of said crown so as to create an illusion of a football
helmet interior;
said surface of said modified area further includes a
graphic image consisting of an upper portion a football player's
face that is generally visible within a corresponding upper
portion of an actual football helmet face opening when a
football helmet is positioned on a football player's head.

6. The novelty baseball cap according to claim 1, wherein said
surface of said modified area has a texture that is different from
an exterior of said crown.

7. The novelty baseball cap according to claim 1, wherein said
surface of said modified area is recessed relative to an exterior
surface of said crown.

9. The novelty baseball cap according to claim 1, further
comprising at least one guard member attached to said bill
portion, said guard member comprising an elongated
substantially tubular element having a size and shape that
simulates an appearance of a portion of a football helmet face
mask.

19. The novelty baseball cap according to claim 1, wherein said
graphic image is exclusive of a region of said person’s face
comprising a mouth.

3
Appeal 2008-5297
Application 11/300,538

20. The novelty baseball cap according to claim 19, wherein
said graphic image includes a region of said person’s face
comprising eyes and a nose.

ISSUES
Does the cooperation of a graphic design with structural elements in a
novelty baseball cap to produce an illusion of a football player wearing a
football helmet distinguish claim 1 from the prior art?
Does Hur teach a substantially tubular element on a bill portion of a
cap as recited in claim 9?
PRINCIPLES OF LAW
“During [patent] examination, the examiner bears the initial burden of
establishing a prima facie case of obviousness.” In re Kumar, 418 F.3d
1361, 1366 (Fed. Cir. 2005).
To establish obviousness, the following factors must be taken into
consideration: (a) the scope and contents of the prior art; (b) the differences
between the prior art and the claimed subject matter; (c) the level of skill in
the pertinent art; and (d) evidence of secondary considerations. Graham v.
John Deere, 383 U.S. 1, 17 (1966).
In making an obviousness determination, “it can be important to
identify a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed new invention
does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, __, 127 S. Ct. 1727,
1741 (2007).
Once prima facie obviousness is established, Appellant has the
burden of providing arguments and evidence to rebut it. In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
4
Appeal 2008-5297
Application 11/300,538

“Where the printed matter is not functionally related to the substrate,
the printed matter will not distinguish the invention from the prior art in
terms of patentability.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983).
The “critical question is whether there exists any new and unobvious
functional relationship between the printed matter and the substrate.” Id. at
1386.

OBVIOUSNESS OVER HUR, LEE, AND CROWDER
Claims 1, 3, 8-10, 12, 17, and 19-22 stand rejected under 35 U.S.C.
§ 103(a) as obvious in view of Hur, Lee, and Crowder (Ans. 3). The
following factual findings (FF) are pertinent to the Graham factors to be
taken into consideration when making an obviousness determination
(Graham v. John Deere, 383 U.S. at 17):

Scope and content of the prior art
The Hur patent
1. Hur describes a cap visor having a display means that comprises a lower
visor connected to a foldable upper visor (Hur, Abstract). The foldable
upper visor is separated from the lower visor to an open position, revealing a
pop-up display (id.).
2. Figure 2 of Hur, reproduced below, shows the cap in the open position:

5
Appeal 2008-5297
Application 11/300,538

“FIG. 2 is a perspective view of the cap visor shown in its open position and
revealing the pop-up display” (Hur, at col. 2, ll. 27-29).
3. The cap has the following elements, as shown in Figure 2: display
member 16 adapted to receive displays 17, which is attached at its base to
the lower visor member 12 and to the foldable upper visor member 13 (Hur,
at col. 2, ll. 57-66). As shown in Fig. 2, the display member is resting
against the crown.
4. The cap is provided with a peripheral lip 28 on the foldable upper visor
member 13 such that, when the upper visor 13 is lowered, it secures visor
members 12 and 13 together (Hur, at col. 4, ll. 1-7 and 27-28; see Fig. 3).
The Lee patent
5. Lee describes a cap for displaying information material on its crown
portion (Lee, Abstract; at col. 3, ll. 23-40).
6. A frame assembly can be mounted to the crown for holding the
informational material (Lee, at col. 3, ll. 23-65).
7. The frame assembly can have a member 22 which is attached to the
crown and surrounds the frame assembly (Lee, at col. 3, ll. 51-53; fig. 4).
8. Member 22 can be of a fabric or synthetic material (Lee, at col. 3, ll. 55-
57) and can be selected match the crown portion or to “provide a stark
contrast to the color of crown portion 12” (Lee, at col. 4, ll. 2-6).
The Crowder patent
9. Crowder describes a novelty cap with a person’s face on its crown above
the bill (Crowder, Fig. 1-4).

Differences between Hur and the claimed invention
6
Appeal 2008-5297
Application 11/300,538

10. Hur describes a cap with a crown and bill portion (upper and lower
visors 12 and 13; FF2, 3) which correspond to the “crown” and “semi-rigid
bill portion,” respectively, of claim 1.
11. Hur’s display member 16 extends from the crown edge 15 (FF2, 3) and
therefore meets the claim 1 limitation of a “modified area defined on a
portion of said crown extending from” the peripheral edge of the crown.
12. Hur does not state that the “modified area” has a “contrasting color that
is different from a color of an exterior of” the crown as in claim 1 (Ans. 3).
13. Hur does not describe a “graphic image consisting of an upper portion
of a football player’s face” in the modified area (display member 16) as
recited in claim 1.

Reason to combine the prior art
14. The Examiner finds that it would have been obvious to have modified
Hur with Lee’s teaching (FF8) about having different colors for the crown
and crown portion containing the informational material “for the purpose of
distinguishing the modified area from the crown” as taught by Lee (Ans. 4).
Such modification would meet the limitation of a modified area with a
contrasting color (see FF12).
15. With respect to the football player graphic of claim 1 (FF13), the
Examiner finds that it would have been obvious “to have modified the
modified area [display member 16] of Hur with the graphic image of
Crowder for the purpose of providing entertaining and unique headwear
([Crowder, at] col[.] 1 line[s] 3-6)” (Ans. 4).

Analysis
7
Appeal 2008-5297
Application 11/300,538

Claims 1, 3, 8, and 17
The Examiner has the burden of establishing prima facie obviousness
of the claimed subject matter. In re Kumar, 418 F.3d at 1366. To meet this
burden, a reason must be provided as to why the differences between the
prior art and the claimed invention would have been obvious to persons of
ordinary skill in the art. 35 U.S.C. § 103(a) (2004); see KSR, 127 S. Ct. at
1741. In this case, the Examiner contends that Hur describes all the
elements of the claimed novelty baseball cap, but not the modified area with
a color which contrasts with the player’s crown nor the graphic image of the
football player’s upper face (FF12-13). The Examiner provides a well-
reasoned statement, supported by factual findings, why persons of ordinary
skill in the art would have been prompted to combine the teachings of Lee
and Crowder with Hur to have made a novelty cap with each and every of
the claimed elements (see FF14-15). As we find no fault with this
reasoning, we conclude that prima facie obviousness has been established.
Once prima facie obviousness has been demonstrated, the burden of
coming forward with evidence or argument shifts to the applicant. See
Oetiker, 977 F.2d at 1445. See also Hyatt v. Dudas, 492 F.3d 1365, 1369-70
(Fed. Cir. 2007). Appellant makes several rebuttal arguments which we
address below.
First, Appellant contends that display member 16 does not correspond
to the “modified area” of claim 1 (App. Br. 8). Appellant’s argument is that
display member 16 “is not disposed on the crown even when the upper
foldable visor member (13) is in the open position” (id.).
To address this issue, we turn to the language of the claim since it is
the claim language which dictates whether a prior art teaching falls within
8
Appeal 2008-5297
Application 11/300,538

the claim’s scope. Claim 1 reads: “a modified area defined on a portion of
said crown extending from said peripheral edge above said bill portion.”
Thus, to meet the claimed limitation, the “modified area” must be “on” the
crown and “extend” from the peripheral edge above the bill. We interpret
the term “on” to have its ordinary meaning, i.e., to be supported by.
Appellant does not appear to dispute that the modified area extends to the
bill’s edge, but contends that it is not “on” the crown.
This argument is not persuasive. The claim merely requires that the
modified area is “on” the crown, but does not specify the means of
attachment, nor how it is arranged on the crown, nor any additional
structure. Because we interpret claims broadly, we construe the claim to
require that the crown supports the modified area, but not to be restricted as
how the support is achieved. This arrangement is clearly shown in Hur’s
Figure 2 showing the display member 16 resting against the crown (FF3)
Appellant has not provided any evidence that the term “on” should be
interpreted in any way other than its normal and ordinary meaning.
Second, Appellant argues that Lee’s modified area “merely consists of
an enclosed oval shape which is positioned well above the peripheral edge of
the bill portion. Consequently, Lee does not teach or suggest a novelty
baseball cap that simulates an appearance of a football helmet” (App. Br. 9).
The Examiner did not rely on Lee for its teaching of a modified area,
but rather for its teaching of contrasting colors (FF14). Thus, we see no
merit in Appellant’s argument.
Third, Appellant contends that Crowder describes a complete human
face in a graphic image, and not an upper portion of a football player’s face
as required by claim 1 (App. Br. 10). Therefore, Appellant concludes that
9
Appeal 2008-5297
Application 11/300,538

“the references do not teach or suggest the novelty baseball cap which
simulates the appearance of a football helmet recited in claim 1” (id.).
Along these same lines, Appellant argues that there is large gap
between Hur’s display member 16/foldable upper visor member 13 and
crown which “would frustrate the purpose of the claimed invention to the
extent that a player’s face would appear to be located on a flap in front of the
cap, rather than having the appearance of a face within the interior of a
helmet” (Reply Br. 2).
This argument does not convince us that the Examiner erred. The
issue with respect to the claimed graphic features (FF13) boils down to the
question of whether an illusion of a football player wearing a football helmet
(see App. Br. 13) is a patentable limitation under 35 U.S.C. § 101, the statute
under which this patent application has been filed.2
Words or designs printed (collectively, “printed matter”) on a
substrate (e.g., the fabric crown of a cap) are not considered patentable
limitations unless the printed matter and substrate functionally relate to each
other. In re Gulack, 703 F.2d at 1385. The “critical question is whether
there exists any new and unobvious functional relationship between the
printed matter and the substrate.” Id. at 1386; see also In re Ngai, 367 F.3d
1336, 1338 (Fed. Cir. 2004). As the Gulack court pointed out, “[w]here the
printed matter is not functionally related to the substrate, the printed matter
will not distinguish the invention from the prior art in terms of
patentability.” In re Gulack, 703 F.2d at 1385.

2 A “utility patent" protects the way an article is used and works (35 U.S.C.
§ 101), while a “design patent” protects the way an article looks (35 U.S.C.
§ 171). See MPEP 1502.01 (Eighth Edition, Aug. 2001; rev. July 2008).
10
Appeal 2008-5297
Application 11/300,538

Neither Gulack nor Ngai defined “functional relationship,” but, as we
understand it, the printed matter on the substrate must interact with the
substrate, enabling the user to perform a new and nonobvious activity with
the substrate. In Gulack, the numbers printed on a circular band permitted
the user to perform a mathematical activity with it. In re Gulack, 703 F.2d at
1386.
Here, Appellant asserts that the graphic has a functional relationship
with the substrate: “to cooperate with the other features of the hat for
simulating an appearance of a football helmet” (Reply Br. 3).
The cooperation of a graphic design with other elements to form an
illusion of a football player wearing a helmet is not sufficient to distinguish
over the prior art. The graphic printed on the substrate must interact or
interrelate with the substrate to perform a useful function with it. A printed
graphic which is merely ornamental or decorative is not a patentable
limitation because the graphic does not enable the user to perform an activity
with the cap as did the numbers on the circular band in Gulack. Rather, the
result of the graphic combined with the other recited elements is a visual
appearance which is not a basis under the utility patent statute for
distinguishing over the prior art.
In regard to Appellant’s argument about the “gap” between the visor
and crown (Reply Br. 2), we note that the structure recited in claim 1 does
not exclude there being a gap as long the modified area is supported by the
crown (see above on p. 9). As for the gap’s supposed effect on the visual
appearance of the cap, we find this to be neither supported by the evidence
nor a limitation that would distinguish over the prior art for the reasons
discussed above.
11
Appeal 2008-5297
Application 11/300,538

For the foregoing reasons, we affirm the rejection of claim 1. Claims
3, 8, and 17 fall with claim 1 because separate reasons for their patentability
were not provided. See 37 C.F.R. § 41.37(c)(vii)(1).

Claims 9, 10, and 12
Claims 9, 10, and 12 are directed to a cap having the features of claim
1, where the cap further comprises a “guard member” attached to the bill
which comprises “an elongated substantially tubular element having a size
and shape that simulates an appearance of a portion of a football helmet face
mask.”
The Examiner finds that the peripheral lip 28 on the foldable upper
visor member 13 (FF4) meets the guard member limitation (Ans. 5).
Appellant contends that
the peripheral lip (28) in Hur is part of the foldable visor. If the
foldable upper visor member in Hur is in the raised position (as
apparently assumed by the Examiner for the rejection of claim
1), then it cannot simultaneously also be in the lowered position
to satisfy the additional limitation of claim 9.

(App. Br. 11.)
Claim 9, as does claim 12, requires the guard member to be attached
to the cap’s bill which is “extending from said front section along a portion
of a peripheral edge of” the crown. The upper visor portion in Hur’s cap
forms a part of the bill. This bill part also extends from the crown edge as
required by the claim. The bill extends upwardly when the display means 16
is open, but the claim does not specify the direction in which it must extend.
Thus, the peripheral lip 28 of Hur meets the structural requirements of the
claim. As far as the limitation that the tubular element “simulates” a football
12
Appeal 2008-5297
Application 11/300,538

mask, for the reasons discussed, we find that the visual appearance of the
cap alone is insufficient to distinguish it from the prior art.
Appellant argues that it is not a “tubular element” but is “concave”
(App. Br. 11). We are not persuaded that a concave element – which would
be understood to define a curved surface – does not meet the claimed
requirement of a “substantially tubular element” which also would be
reasonably understood to comprise a curved (“tubular) surface. Appellant
has not explained with particularity the deficiency in the concave lip of Hur.
For the foregoing reasons, we affirm the rejection of claims 9, 10, and
12.

Claims 19-22
Claims 19-22 are directed to a cap of claim 1 or 12 in which the face
graphic excludes a person’s mouth.
For the reason that the graphic is printed matter and therefore
insufficient to distinguish over the prior art, we affirm the rejection of claims
19-22.

OBVIOUSNESS OVER HUR, LEE, CROWDER, AND COHOON
Claims 6, 7, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
obvious in view of Hur, Lee, Crowder, and Cohoon (Ans. 5, 7).
Claims 6 and 15 recite that the modified area surface has a texture
which is different from the crown exterior. Claims 7 and 16 recite the
modified area surface is recessed relative to the exterior of the crown.
The Examiner finds that Cohoon teaches a modified area with a
different texture and recessed relative to the crown exterior (Ans. 6). The
13
Appeal 2008-5297
Application 11/300,538

Examiner finds that it would have been obvious to have modified Hur’s cap
with Cohoon’s teaching, and provides a reasoned statement as to why
persons of ordinary skill in the art would have been prompted to make such
modifications (id.)
Appellant argues that Cohoon does not describe a graphic with a
person’s face in the recessed area as required by the claims (App. Br. 15).
For the reasons articulated above, we find this argument unpersuasive. The
graphic is printed matter and is not a basis to distinguish over the prior art.
As Appellant does not point to any defect in the Examiner’s reasoning, and
we find none, we affirm the rejection of claims 6, 7, 15, and 16.

OBVIOUSNESS OVER HUR, LEE, CROWDER, AND WEINER
Claim 11 stands rejected under 35 U.S.C. § 103(a) as obvious in view
of Hur, Lee, Crowder, and Weiner (Ans. 6).
Claim 11 is to the cap of claim 9, having a flap and an ear vent
portion. The Examiner finds that these features are described in Weiner and
provides a reason for incorporating them into Hur’s cap (Ans. 6-7).
Appellant does not identify a deficiency in the Examiner’s prima facie
case. As we find none, we affirm the rejection of claim 11.

CONCLUSIONS OF LAW
The cooperation of a graphic design with structural elements in a
novelty baseball cap to produce an illusion of a football player wearing a
football helmet does not distinguish the claimed cap from the prior art. We
therefore affirm the obviousness rejection of claims 1-3, 6-8, 15-17, and 19-
22.
14
Appeal 2008-5297
Application 11/300,538

Hur describes a substantially tubular element on a bill portion of a
cap. We affirm the rejection of claims 9, 10, and 12.
We affirm the rejection of claim 11.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc

DARBY & DARBY (formerly Sacco & Associates)
P.O. BOX 770
CHURCH STREET STATION
NEW YORK NY 10008-0770
15