Ex Parte Polstein et al

Patent Trial and Appeal Board

Jun 29, 2018

13459590 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/459,590 04/30/2012
151692 7590 07/03/2018
Robert L. Walter
Beusse, Wolter, Sanks & Maire PLLC
390 N. Orange Ave., Suite 2500
Orlando, FL 32801
FIRST NAMED INVENTOR
Matthew Evan Polstein
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
12511-003 3532
EXAMINER
TRIEU, TIMOTHY K
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ktissue@bwsmiplaw.com
rwolter@bwsmiplaw.com
patents@bwsmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW EVAN POLSTEIN,
JASON MICHAEL POLSTEIN, and
MICHAEL ALLAN POLSTEIN
Appeal2017-001858
Application 13/459,590
Technology Center 3700
Before STEVEN D.A. MCCARTHY, KEVIN F. TURNER, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 1, 3-7, and
9-18, which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest is identified as RIP-IT HOLDINGS, LLC.
Appeal Br. 1.
Appeal2017-001858
Application 13/459,590
Claimed Subject Matter
Claims 1, 7, and 17 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter.
1. A face guard frame comprising:
a unitary facial support comprising a forehead support
configured to extend laterally across a forehead of a wearer and
having a connection point for receiving a head strap, first and
second side supports extending downwardly from distal ends of
the forehead support, each of said first and second side supports
having at least one connection point for receiving a head strap;
an upper crossbar extending from the first side support to
the second side support, wherein the unitary facial support and
upper crossbar form a viewing region;
a lower crossbar extending from the first side support
towards a chin area of a wearer during use of the face guard and
to the second side support, and the lower crossbar is configured
to have an interior portion facing the wearer;
at least one blocking bar extending from the upper
crossbar to the lower crossbar to form at least one mouth region;
a chin plate centrally located on the interior portion of the
lower crossbar; and,
the chin plate has a first side operatively connected to the
interior portion of the lower crossbar and a second side, opposite
the first side, and the chin plate is configured such that the second
side faces a chin of the wearer and a chin pad is removably
secured to the second side of the chin plate.
Rejections2
I. Claims 1, 3, 5, and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schutt (US 2,100,553, issued Nov. 30, 1937) and Chafitz
(US 5,911,308, issued June 15, 1999). Final Act. 4--7.
2 The Advisory Action (dated Apr. 4, 2016) withdraws rejections under 35
U.S.C. § 101 and 35 U.S.C. § 112, fourth paragraph.
2
Appeal2017-001858
Application 13/459,590
II. Claim 4 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Schutt, Chafitz, and Lundin (US 4,173,795, issued Nov.
13, 1979). Final Act. 7.
III. Claims 7 and 9--18 stand rejected underpre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Schutt, Weaver (US 2,616,081, issued Nov. 4,
1952), and Chafitz. Final Act. 8-14.
DISCUSSION
Rejection I
Appellants argue claims 1, 3, 5, and 6 as a group. Appeal Br. 9--12.
We select claim 1 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds Schutt discloses all the limitations of claim 1,
including a lower crossbar and chin pad 8, except for the claimed chin plate.
Final Act. 4--5. The Examiner finds Chafitz teaches a chin pad attached to
its lower crossbar using a first fastener 80 and second fastener 82b (hook and
loop fasteners). Id. at 5. The Examiner finds one of skill in the art would
have used Chafitz's first fastener 80 with Schutt's face guard frame as a chin
plate to which the pad can attach using the second fastener 82b, and would
have done so "to improve the flexible remova[l] of the pad." Id. at 5-6.
Appellants argue "the Examiner's conclusion includes knowledge
gleaned only from Applicants['] disclosure" and is based on impermissible
hindsight. Appeal Br. 9. Appellants contend Schutt teaches away from a
chin plate being mounted to a lower crossbar "because Schutt teaches a
specific button-type pad (chin pad) affixed directly to a lower crossbar." Id.
Appellants argue "there is no suggestion or motivation in either Schutt or
Chafitz to combine the mechanisms of these cited references for attaching a
3
Appeal2017-001858
Application 13/459,590
chin pad to a lower crossbar." Id. at 10. Appellants further contend that if
one were to modify Schutt as suggested by the Examiner, the mask of Schutt
would not work for its intended purpose for two reasons: (1) "the result
would be a pad on the exterior of the mask as opposed to a chin pad
positioned toward an interior of the mask" and (2) "[t]he lower cross bar of
Schutt would not be able to support the fastener 80 in the flattened position
as shown in Chafitz." Id. at 10-11.
Appellants' arguments do not inform us of error in the rejection of
claim 1. Appellants assert that the rejection is based on impermissible
hindsight, but do not address the Examiner's reasoning that one of ordinary
skill in the art would have used Chafitz's fasteners to improve flexible
removal of the pad in Schutt. The motivation for combining teachings from
references need not come from the references themselves. Ball Aerosol v.
Ltd. Brands, 555 F.3d 984, 993 (Fed. Cir. 2009) ("[T]he analysis that
'should be made explicit' refers not to the teachings in the prior art of a
motivation to combine, but to the court's analysis." (quoting KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007))). Without addressing the
Examiner's reasoning for combining teachings from Schutt and Chafitz,
Appellants do not inform us of error merely by asserting impermissible
hindsight.
We also are not persuaded that Schutt teaches away from a chin plate
being mounted to a lower crossbar. "[M]ere disclosure of alternative
designs does not teach away." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004). In addition, a reference that does not suggest that a proposed
modification was unlikely to work does not teach away from that
modification. See Baxter Int'!, Inc. v. McGaw, Inc., 149 F.3d 1321, 1328
4
Appeal2017-001858
Application 13/459,590
(Fed. Cir. 1998) ("Baxter apparently misapprehends what it means to 'teach
away' from a patented invention. '[I]n general, a reference will teach away
if it suggests that the line of development flowing from the reference's
disclosure is unlikely to be productive of the result sought by the applicant."'
(quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994))). Appellants have
shown that using the hook and loop fasteners from Chafitz to attach a pad is
a modification of the attachment mechanism taught in Schutt, but have not
shown that Schutt discourages such a modification or teaches that it was
unlikely to work.
In addition, we are not persuaded that the proposed modification of
Schutt would render Schutt inoperable for its intended purpose. Appellants'
first argument on this point, contending that the result of the combination
would be a pad on the exterior of the mask, is premised on the Examiner's
statement that Chafitz's second fastener would be attached to Schutt's pad
"at 9." Final Act. 6. We understand the Examiner's reference to Schutt's
pad "at 9," however, to refer to the back side of the pad, such that attaching
the pad at that location with Chafitz's fasteners 80 and 82b would result in a
chin pad facing the interior of the mask, as it is in both Schutt and Chafitz.
With regard to Appellants' second argument, that Schutt's lower cross bar is
thin and unable to provide the necessary support for Chafitz's fastener 80,
the Examiner points out the chin plate can be attached to many portions of
the lower crossbar. Ans. 3. Appellants' attorney argument asserting that
such an arrangement would be unstable does not persuade us that it would
have been beyond the level of one of ordinary skill in the art to attach
Chafitz's fastener 80 to Schutt's lower crossbar in a manner that would
provide sufficient stability for the chin pad.
5
Appeal2017-001858
Application 13/459,590
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of representative
claim 1under35 U.S.C. § 103(a) as unpatentable over Schutt and Chafitz.
Thus, we sustain the rejection of claim 1, and, for the same reasons, the
rejection of claims 3, 5, and 6, which are not argued separately.
Rejections 11-111
Appellants argue the rejection of claims 7 and 9-18 is in error for the
same reasons as claim 1, and do not address the rejection of claim 4. Appeal
Br. 12. For the same reasons as claim 1, we sustain the rejections under 35
U.S.C. § 103(a) of: (1) claim 4 as unpatentable over Schutt, Chafitz, and
Lundin; and (2) claims 7 and 9-18 as unpatentable over Schutt, Weaver,
and Chafitz.
DECISION
We affirm the Examiner's rejection of claims 1, 3-7, and 9-18.
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)(l )(iv).
AFFIRMED
6