Ex Parte Sato et al

Patent Trial and Appeal Board

Nov 5, 2014

11215611 (P.T.A.B. Nov. 5, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LUCIANA M. SATO, GLAUCIA C. GABAS, DEAN M. REMER,
and THOMAS I. INSLEY
____________

Appeal 2012-011595
Application 11/215,6111
Technology Center 3700
____________

Before MICHAEL W. KIM, MICHAEL C. ASTORINO, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1–20 and 22–24. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to the Appellants, “[t]he real party in interest is 3M Company
(formerly known as Minnesota Mining and Manufacturing Company) of St.
Paul, Minnesota and its affiliate 3M Innovative Properties Company of St.
Paul, Minnesota.” Br. 2.
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Claimed Subject Matter
Claims 1, 17, and 24 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.

1. A hearing protective device that comprises:
a first ear cup having a first generally cup-shaped body;
a second ear cup having a second generally cup-shaped
body; and
a headpiece comprising a first end extending from the
headpiece and a second end extending from the headpiece,
the first ear cup being maintained in a fixed position in the
first end of the headpiece through a frictional engagement
between the first end and the first generally cup-shaped body of
the first ear cup, and
the second ear cup being maintained in a fixed position in
the second end through a frictional engagement between the
second end and the second generally cup-shaped body of the
second ear cup.

Rejections
Claims 1–7, 9, and 13–15 are rejected under 35 U.S.C. § 102(b) as
anticipated by Beguin (US 3,461,463, iss. Aug. 19, 1969).
Claims 10–12, 15, 17–20, and 22–24 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Beguin and Thompson (US 5,551,090, iss.
Sept. 3, 1996).2
Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Beguin and Bryerton (US 5,509,146, iss. Apr. 23, 1996).

2 Although the Examiner sets forth separate rejections for claims 10–12, 15,
17–20, 22, and 24 (Ans. 6) and claim 23 (Ans. 7–8), we have consolidated
these two rejections because they are both based upon the combination of
Beguin and Thompson.
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3
Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Beguin.

ANALYSIS
Anticipation by Beguin
Independent claim 1 recites a “first ear cup being maintained in a
fixed position in the first end of the headpiece through a frictional
engagement between the first end and the first generally cup-shaped body of
the first ear cup.” Br. 7, Claims App. (emphasis added). Additionally, claim
1 includes a substantially similar limitation for a “second ear cup.” See id.
The Examiner finds that Beguin’s ear protector cups 26 and headgear,
e.g., helmet 10, including wire 16, constitute the first and second ear cups
and headpiece, as required by claim 1.3 Ans. 5; see Beguin, Figs. 1, 2, 4.
Accordingly, the Examiner finds that each cup 26 is maintained in a fixed
position in end 16 of headpiece 10 through a frictional engagement between
end 16 and the generally cup-shaped body of ear cup 26. See Ans. 5. More
specifically, wire 16 is hooked or looped into groove 34 of washer 32, which
is connected to cup 26. See Beguin, col. 4, ll. 23–28, Ans. 8–9.
The Appellants point out that Beguin’s wire 16 is held in place in
groove 34 of washer 32 and a hex nut. See Br. 3–4. The Appellants
contend, “[t]he use of a washer and hex nut do not constitute a frictional
engagement.” Br. 4. The Appellants’ contention is unpersuasive.

3 Beguin discloses that Figures 1 and 2 show the ear protector suspension
device 12 for the left ear and “although not shown or described herein, a
duplicate suspension device for the right ear would be provided on the
opposite side of helmet 10.” Beguin, col. 3, ll. 55–61.
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4
At the outset, we note that the Appellants’ Specification provides an
explicit definition for the claimed term “frictional engagement.” See also
Ans. 8–9. According to the Specification “[t]he term ‘frictional
engagement’ means that resistance to movement exists and that the
resistance is such that an external force is required to achieve movement.”
Spec. 2, ll. 15–16. Additionally, as discussed above, claim 1 recites a “first
ear cup being maintained in a fixed position in the first end of the headpiece
through a frictional engagement between the first end and the first generally
cup-shaped body of the first ear cup.” Br. 7, Claims App. (emphasis added).
Notably, this claim limitation does not exclude the use of other mechanical
mechanisms, such as a hex nut, to help retain ear cups on the headpiece.
Further, claim 1 includes as a transitional term “comprising,” which is an
open-ended term, and does not exclude other mechanical mechanisms, such
as a hex nut.
The Appellants point out that although it is true that there could be
some friction between the wire and the groove, the use of a washer and hex
nut as taught in Beguin is not covered by the language of the claims
(frictional engagement) and ignores all of the teachings in Appellants’
Specification. See Br. 4–5. The Appellants attempt to support this assertion
by pointing to the Background of the Invention section of their
Specification. See Br. 5. The Background of the Invention section recites:
Some hearing protective earmuff configurations are
designed to allow the ear cup to be removed from the headband.
In these constructions, mechanical mechanisms such as male-
female connectors, prongs, screws, nuts, and bolts can be used
to secure and separate the headband and ear cups. These
mechanisms often involve relatively difficult manipulations of
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the connection mechanism or may require additional tools to
separate the ear cup from the headband.
Spec. 1:16–21, Br. 5.
However, the Appellants’ Specification does not exclude the use of
mechanical mechanisms between the ear cups and the headband. More
particularly, the Summary of the Invention section of the Appellants’
Specification recites, “[t]he invention is also beneficial in that the ear cups
can be retained on the headband without the use of additional affixing
mechanisms such as adhesives, screws, bolts, and snaps, although such
mechanisms can optionally be included.” Spec. 2:9–11 (emphasis added).
Accordingly, guidance from the Specification provides that mechanical
mechanisms can optionally be included to retain ear cups on a headband.
Further, the Specification does not suggest that the inclusion of
mechanical mechanisms no longer maintains a “frictional engagement”
between the ear cups and the headband. Hence, it is consistent with the
Specification to find that Beguin’s wire 16 in groove 34 of washer 32
maintains a “frictional engagement,” even though a hex nut is included. But
see Br. 4.
For the above reasons, we sustain the Examiner’s rejection of
independent claim 1. Claims 2–7, 9, and 13–15 depend either directly or
indirectly from claim 1. The Appellants do not provide separate arguments
for the rejection of these dependent claims. Thus, we also sustain the
Examiner’s rejection of dependent claims 2–7, 9, and 13–15.

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Obviousness based on Beguin and Thompson
The Appellants indicate that independent claims 17 and 24 resemble
claim 1 and contend that those claims are allowable for the same reasons as
independent claim 1. Br. 5. Further, the Appellants contend that Thompson
does not teach the frictional engagement as recited in claim 1. Br. 5, 6. The
Appellants’ contentions are unpersuasive because the Examiner’s finding
that Beguin discloses a frictional engagement as recited in claim 1 is
adequately supported. Additionally, the Appellants do not present further
arguments for the rejection of claims 10–12, 15, 18–20, 22, and 23.
Thus, for the same reasons we have sustained the rejection of claim 1,
we sustain the rejection of claims 10–12, 15, 17–20, and 22–24 under
35 U.S.C. § 103(a) as unpatentable over Beguin and Thompson.

Obviousness based on Beguin and Bryerton
The Appellants indicate that claim 16 depends from claim 1 and
contend that claim 16 is allowable for the same reasons as independent
claim 1. Br. 6. Further, the Appellants contend that Bryerton does not teach
frictional engagement as recited in claim 1. Id. The Appellants’ contentions
are unpersuasive because the Examiner’s finding that Beguin discloses
frictional engagement as recited in claim 1 is adequately supported.
Thus, for the same reasons we have sustained the rejection of claim 1,
we sustain the rejection of claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Beguin and Bryerton.

Appeal 2012-011595
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Obviousness based on Beguin
The Appellants do not provide further arguments for the rejection of
claim 8 under 35 U.S.C. § 103(a) as unpatentable over Beguin. Br. 6. The
Appellants merely rely on the arguments presented for the Examiner’s
rejection of claim 1 for this ground of rejection. Thus, for the same reasons
we sustain the rejection of claim 1, we likewise sustain the rejection of claim
8 under 35 U.S.C. § 103(a) as unpatentable over Beguin.

DECISION
We AFFIRM the rejections of claims 1–20 and 22–24.
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)(1)(iv).

AFFIRMED
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