Ex Parte Preisler

Patent Trials and Appeals Board

Dec 31, 2018

14739323 - (D) (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/739,323 06/15/2015
22045 7590 01/03/2019
Brooks Kushman
1000 Town Center
22nd Floor
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Darius J. Preisler
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.
PRD 0103 PUS 1 7910
EXAMINER
ANNIS, KHALED
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
01/03/2019 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARIUS J. PREISLER
Appeal 2018-003 771
Application 14/739,323
Technology Center 3700
Before ANNETTE R. REIMERS, LISA M. GUIJT, and
NATHAN A. ENGELS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Darius J. Preisler ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision to reject claims 1-15 under 35 U.S.C. § l 12(a)
for lack of written description, 1 under 35 U.S.C. § l 12(b) for indefiniteness,
and under 35 U.S.C. § 103 as unpatentable over Sacks (US 6,336,220 Bl,
issued Jan. 8, 2002). We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Presumably, the Examiner intended to include claims 2-8 and 10--15 in the
written description rejection, as those claims depend directly or indirectly
from independent claims 1 or 9. See Final Office Action 4--5 ("Final Act."),
dated July 31, 2017.
Appeal 2018-003771
Application 14/739,323
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to protective head gear and, in
particular, to sports helmets and replacement pad kits for use therein."
Spec. ,r 2, Figs. 1, 10, 11. Claims 1 and 9 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A sports helmet comprising:
an outer shell having inner and outer surf aces; and
an energy absorbing liner, removably disposed within the
shell, the liner including at least one replacement pad formed of
a layered construction with a first layer having a cellular core of
open cell structures that is plastically-deformable, positioned
proximate the inner surface of the shell, and a second layer
having padding that is elastically-deformable, adapted to be
positioned proximate a wearer's head, wherein the second layer
is formed of a breathable material.
ANALYSIS
Written Description
The Examiner determines that the "limitation 'second layer is formed
of a breathable material' [ of claims 1 and 9] has no support in the original
disclosure." Final Act. 4.
Appellant contends that "Figures 10 and 11 [ of the subject
application] illustrate, and paragraph [0055] of the [S]pecification describes,
the layered construction of the helmet pad, and that it is 'breathable."'
Appeal Br. 4. 2
Compliance with the written description requirement set forth in the
first paragraph of 35 U.S.C. § 112 does not require that the claimed subject
matter be described identically in the Specification, but the disclosure as
2 Appeal Brief ("Appeal Br."), filed Nov. 11, 2017.
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Appeal 2018-003771
Application 14/739,323
originally filed must convey to those skilled in the art that applicant had
invented the subject matter later claimed. In re Kaslow, 707 F.2d 1366,
1375 (Fed. Cir. 1983); see also Appeal Br. 6 (citing cases). The drawings in
an application can be relied upon to show that an inventor was in possession
of the claimed invention as of the filing date. See Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991) ("[D]rawings alone may be
sufficient to provide the 'written description of the invention' required by §
112, first paragraph.").
Paragraph 55 of the Specification describes "replacement pad 55 also
has a breathable outer surface layer 57." Spec. ,r 55. In addition, Figure 11
of the subject application illustrates replacement pad 55 including a first
layer of spaced-apart structures 70 and a second breathable layer 57. See
Spec. ,r,r 42, 43, 55, 57, Figs. 10, 11.
Thus, the original Specification and its attendant drawings (Figures 10
and 11) clearly disclose a second layer "formed of a breathable material."
See Appeal Br. 1, 2, Claims App. We are of the opinion that the originally
filed Specification and drawings fully and clearly disclose a device which
demonstrates that Appellant was in possession of the claimed subject matter
at the time the application was filed. We, therefore, determine that the
original disclosure satisfies the written description requirement of 35 U.S.C.
§ 112(a).
Accordingly, we do not sustain the Examiner's rejection of claims 1-
15 for lack of written description.
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Appeal 2018-003771
Application 14/739,323
Indefiniteness
The Examiner states that "[ c ]laims 1 and 9 recite 'second layer is
formed of a breathable material', it is unclear what the metes and bounds
[Appellant] is claiming." Final Act. 5.
Appellant contends that "Figures 10 and 11 [of the subject
application] illustrate, and paragraph [0055] of the [S]pecification
describes, the layered construction of the helmet pad, and that it is
'breathable."' Appeal Br. 4
As discussed above, paragraph 55 of the Specification describes
"replacement pad 55 also has a breathable outer surface layer 57." Spec. ,r
55. In addition, Figure 11 of the subject application illustrates replacement
pad 55 including a first layer of spaced-apart structures 70 and a second
breathable layer 57. See Spec. ,r,r 42, 43, 55, 57, Figs. 10, 11.
Thus, the original Specification and its attendant drawings (Figures 10
and 11) clearly disclose a second layer "formed of a breathable material."
See Appeal Br. 1, 2, Claims App. Because the Specification and its
associated drawings set forth corresponding structure that is consistent with
the plain and ordinary understanding of a breathable material, we are of the
opinion that a skilled artisan would understand the "metes and bounds" of
"the second layer [being] formed of a breathable material" of claims 1 and 9,
rendering them clear and definite. See Appeal Br. 1, 2, Claims App.
Accordingly, we do not sustain the Examiner's rejection of claims 1-
15 for indefiniteness.
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Appeal 2018-003771
Application 14/739,323
Specification and Drawing Objections
The Examiner objects to the drawings on the ground that "[t]he
drawings must show every feature of the invention specified in the claims.
Therefore, the 'first and second layers' must be shown or the feature(s)
canceled from the claim( s )" and to the Specification on the ground that the
Specification fails to provide antecedent basis for the claimed subject matter,
i.e., "the first and second layers are not mentioned in the [S]pecification as
originally filed." See Final Act. 2--4. Ordinarily, an objection is reviewable
by petition under 37 C.F.R. § 1.181, and a rejection is appealable to the
Patent Trial and Appeal Board. When the issue of new matter presented is
the subject of both an objection and a rejection, the issue is appealable. See
Manual of Patent Examining Procedure§ 608.04(c) (9th ed., Rev. 07.2015,
Nov. 2015) (providing that "where the alleged new matter is introduced into
or affects the claims, thus necessitating their rejection on this ground, the
question becomes an appealable one, and should not be considered on
petition even though that new matter has been introduced into the
specification also").
In this case, as discussed above, Figure 11 of the subject application
illustrates replacement pad 55 including a first layer of spaced-apart
structures 70 and a second breathable layer 57. See Spec. ,r,r 42, 43, 55, 57,
Figs. 10, 11. As also discussed above, the claimed subject matter need not
be described identically in the Specification. See In re Kaslow, 707 F.2d at
1375. To the extent that the objections to the drawings and Specification in
the Final Office Action tum on the same issue(s) as the rejections under 35
U.S.C. §§ 112(a) and (b), our decision with respect to the rejections is
dispositive as to the corresponding objections.
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Appeal 2018-003771
Application 14/739,323
Obviousness over Sacks
Claims 1-15
Appellant does not offer arguments in favor of independent claim 9 or
dependent claims 2-8 and 10-15 separate from those presented for
independent claim 1. See Appeal Br. 7-9. We select claim 1 as the
representative claim, and claims 2-15 stand or fall with claim 1. 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
Appellant contends that (1) the Examiner's reasoning that Sacks'
disclosure of a foam layer teaches or suggests the "breathable" limitation as
explained at page 7 of the Final Office Action "violates the time-honored
rule that all claimed elements must be disclosed in the prior art before even
considering motivation to combine and reasonable expectation of success"
(Appeal Br. 7-8); (2) "the 'breathable' limitation is not documented in the
prior art, and it was improper under M.P.E.P. § 2144.03(c) to fill the gap by
taking official notice of this feature to support the obviousness rejection of
the claims" (Id. at 8-9); and (3) "the doctrine of inherency, which the
Examiner appears to be invoking, e.g., 'the foam layer will have to be
breathable,' cannot be used in an obviousness rejection" (Id. at 9; see also
Reply Br. 1-2).3
Appellant's arguments are not directed to the rejection as set forth by
the Examiner. First, the Examiner clarifies in the Answer that "the
rejection [was] based on obviousness ... no inherency was applied in the
rejection as argued by ... [A]ppellant." Ans. 2 (emphasis added). 4
Second, the Examiner also did not rely on "official notice," as proposed by
3 Reply Brief ("Reply Br."), filed Feb. 21, 2018.
4 Examiner's Answer ("Ans."), dated Dec. 26, 2017.
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Application 14/739,323
Appellant. See Final Act. 5-7; see also Ans. 2-3; Appeal Br. 8-9. Third,
the Examiner is not combining any references or proposing any
modification(s) to the Sacks reference. See Final Act. 5-7; see also Ans.
2-3; Appeal Br. 7-8. Rather, the Examiner finds that as Sacks' disclosure
is "concerned about comfort feel to the wearer" (see Ans. 2 citing Sacks
4: 19-21 ), a skilled artisan "would recognize that the foam layer ( 6) will be
breathable ( capable to breath) to a degree in order to provide [a]
comfortable feeling to the user as intended." Ans. 2; see also Final Act. 7;
Spec. ,r,r 3 (recognizing general principles of helmet design), 5 (recognizing
"breathability" as a known consideration in helmet design). The Examiner
further finds:
It is illogical to have a layer that is unbreathable next to a
breathable open cell layer ( 4) and yet provide comfort to the
wearer. If the foam or second layer ( 6) is not breathable it will
not provide comfort to the wearer because it will block air and
moisture such as sweat between the skin of the wearer and the
breathable open cell layer ( 4), therefore providing discomfort
due to the heat and sweat being trapped next to the skin of the
user when sweat is not removed making the device inoperable as
intended.
Ans. 2-3; see also Final Act. 7.
Appellant does not provide any persuasive evidence or technical
reasoning that the Examiner's findings about foam layer 6 of Sacks would
have been beyond the level of ordinary skill in the art or unpredictable to a
person of ordinary skill in the art. See KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398,421 (2007) ("A person of ordinary skill is also a person of
ordinary creativity, not an automaton."). After all, an artisan must be
presumed to know something about the art apart from what the reference
discloses. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962); see also
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Appeal 2018-003771
Application 14/739,323
DyStar Textilfarben GmbH & Co. v. CH Patrick Co., 464 F.3d 1356, 1360
(Fed. Cir. 2006) (explaining that "the prior art" includes basic principles
unlikely to be restated in cited references). Indeed, Appellant's
Specification refers to "breathable" materials generally and without
specificity, indicating a person of ordinary skill would recognize that
breathable materials are appropriate for use in helmet design. See In re
Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994) ("the Board's observation that
appellant did not provide the type of detail in his specification that he now
argues is necessary in prior art references supports the Board's finding that
one skilled in the art would have known how to implement the features of
the references and would have concluded that the reference disclosures
would have been enabling").
Moreover, other than stating three contentions and citing to case law,
Appellant offers no discussion as to how any of these contentions relates to
error in the Examiner's findings. See Appeal Br. 7-9. Thus, Appellant's
statements do not constitute separate arguments for patentability of claim 1
under 37 C.F.R. § 4I.37(c)(l)(iv). See In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (holding that the Board had reasonably interpreted 37
C.F.R. § 41.37 as requiring "more substantive arguments in an appeal brief
than a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art").
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as unpatentable over
Sacks. Accordingly, we sustain the Examiner's rejection of claim 1. We
further sustain the rejection of claims 2-15, which falls with claim 1.
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Application 14/739,323
DECISION
We REVERSE the decision of the Examiner to reject claims 1-15 for
lack of written description.
We REVERSE the decision of the Examiner to reject claims 1-15 for
indefiniteness.
We AFFIRM the decision of the Examiner to reject claims 1-15 as
unpatentable over Sacks.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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