Ex Parte Spector

Board of Patent Appeals and Interferences

Jan 21, 2009

11183370 (B.P.A.I. Jan. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SHELLY SPECTOR
__________

Appeal 2009-0083
Application 11/183,370
Technology Center 3700
__________

Decided: January 21, 2009
__________

Before ERIC GRIMES, RICHARD M. LEBOVITZ, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a cover
for a headband, a method of making a headband cover, and a combination
headband and cover. The Examiner rejected some claims as anticipated and
the remainder of the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
Appeal 2009-0083
Application 11/183,370

STATEMENT OF THE CASE
The invention relates to a device for adding decoration to a wearer’s
hair. (Spec. 1.) The device is a cover for a headband. (Id.)
Claims 1-20, all the pending claims, are on appeal. The Examiner
rejected all the claims as follows:
• claims 1, 6-8, 11-14, 19, and 20 are rejected under 35 U.S.C.
§ 102(b) as anticipated by LeCrone.1
• claims 2-5, 9, 10, and 15-18 are rejected under 35 U.S.C. § 103(a)
as unpatentable over LeCrone.
As to the claims rejected under § 102(b), Appellant sets out separate
arguments for claims 1, 6, 7, 13, 14, and 19. Claim 20 will stand or fall with
claim 1; and claims 8, 11, and 12 will stand or fall with claim 7. 37 C.F.R.
§ 41.37(c)(1)(vii). For this rejection, the representative and separately
argued claims read as follows:
1. A cover for a headband, comprising:

a first elongated ribbon of material having a length dimension
approximately equal to the length of said headband and having a width
dimension wider than the width of said headband; and

a second elongated ribbon of material approximately equal in length
and width to said first elongated ribbon of material, wherein

said second elongated ribbon of material is attached to said first
elongated ribbon of material along both the edges of the length dimension
and along only one of the edges of the width dimension forming an
elongated pocket sized and configured to enable a headband to be removably
placed therein.

1 U.S. Patent No. 6,237,611 B1, issued to LeCrone et al., May 29, 2001.
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6. The cover for a headband according to claim 1, further
comprising a flap, sized and configured to cover the open end of the pocket
formed by said first and second elongated ribbons of material.

7. A method of making a headband cover, comprising the steps of:

providing a first elongated ribbon of material having a length
dimension approximately equal to the length of a headband and having a
width dimension wider than the width of said headband;

providing a second elongated ribbon of material approximately equal
in length and width to said first elongated ribbon of material;

aligning said first elongated ribbon of material with said second
elongated ribbon of material such that the outside edges of both sides of the
length dimension of said first elongated ribbon are arranged in a line with
the outside edges of both sides of the length dimension of said second
elongated ribbon; and

forming an elongated pocket comprising said first and second
elongated ribbons of material, sized and configured to enable a headband to
be removably placed therein.

13. The method of making a headband cover according to claim 7,
further comprising the steps of creating a flap, sized and configured to cover
the open end of the pocket formed by said first and second elongated ribbons
of material.

14. A combination headband and cover for a headband, comprising:

a substantially C-shaped flat band having a length dimension
significantly longer than the width dimension of said band;
a first elongated ribbon of material having a length dimension
approximately equal to the length of said band and having a width
dimension wider than the width of said band; and
a second elongated ribbon of material approximately equal in length
and width to said first elongated ribbon of material, wherein
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said second elongated ribbon of material is attached to said first
elongated ribbon of material along both the edges of the length dimension
and along only one of the edges of the width dimension forming an
elongated pocket sized and configured to enable said band to be removably
placed therein.

19. The combination according to claim 14, further comprising a
flap, sized and configured to cover the open end of the pocket formed by
said first and second elongated ribbons of material.

As to the claims rejected under § 103, Appellant addresses the
arguments to claims 3, 10, and 16 as a group. (App. Br. 10.)2 We designate
claim 3 as representative. 37 C.F.R. § 41.37(c)(1)(vii). Claims 2, 4, 5, 9,
10, and 15-18 will stand or fall with claim with claim 3. Representative
claim 3 reads as follows:
3. The cover for a headband according to claim [1, wherein said
first and second elongated ribbons of material have a surface displaying a
decoration], wherein the decorative surface of said first elongated ribbon of
material is different from the decorative surface of said second elongated
ribbon of material.

ANTICIPATION
The Anticipation Issue
The Examiner rejected claims 1, 6-8, 11-14, 19, and 20 under
35 U.S.C. § 102(b) as anticipated by the LeCrone patent. The Examiner’s
position is that LeCrone disclosed ribbons of material fastened to form an
elongated pocket “configured to have a headband removably placed
therein.” (Ans. 3.) The Examiner found that LeCrone’s method for making

2 All references to the Appeal Brief (App. Br.) are to the Second Amended
Appeal Brief dated July 25, 2007.
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the elongated ribbon pocket is the method Appellant now claims. (Ans. 3-
4.)
Appellant contends that (1) LeCrone did not teach an open edge to
allow removable placement of a headband within the cover, (App. Br. 4);
(2) LeCrone did not teach forming a pocket to allow headband removal, and
the method claims are therefore distinguishable from LeCrone, (id. at 8); and
(3) LeCrone did not teach a flap covering the open end of the cover, as
required by claims 6, 13, and 19. (Id. at 4-5.)
The issues with respect to this rejection are:
• did LeCrone disclose an open edge that would allow removable
placement of a headband within the cover; and
• did LeCrone disclose “a flap, sized and configured to cover the open
end of the pocket?”

Findings of Fact Relating to Anticipation
1. LeCrone disclosed a cover fit to a headband. (Col. 3, l. 63 – col. 4,
l. 9.)
2. LeCrone disclosed a tubular headband cover comprising first and
second elongated ribbons of material having a length dimension about
equal to the length of a headband and a width dimension wider than
the headband. (Col. 3, ll. 50-61.)
3. LeCrone taught making a headband cover by attaching two strips of
fabric along both edges of the long dimension and along only one
edge of the width dimension (“leaving at least one end opened”),
forming a tubular structure to receive a headband. (Col. 4, ll. 40-51.)
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4. LeCrone taught an embodiment in which “[t]urning the raw edges of
the fabric tube into the opening then finishes the open end of the
fabric tube. The opening may then be stitched closed.” (Col. 4, ll. 27-
29.)
5. The Examiner found that LeCrone’s tubular structure allowed the
headband to be “removably placed therein.” (Ans. 3.)
6. The Examiner found that LeCrone’s cover can be removed from the
headband. (Ans. 4.)
7. LeCrone disclosed a headband cover having a flap at the open end.
(Figure 6.)
8. The Examiner found that LeCrone’s flap was sized and configured to
cover the open end of the pocket formed by said first and second
elongated ribbons of material. (Ans. 3-4.)
9. LeCrone taught the combination of a headband cover and headband.
(Col. 4, ll. 48-51.)

Principles of Law Relating to Anticipation
“A person shall be entitled to a patent unless –
***
(b) the invention was patented or described in a printed publication
. . . more than one year prior to the date of the application for patent in
the United States.”

35 U.S.C. § 102(b).

“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.
Anticipation is an issue of fact, and the question whether a claim limitation
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is inherent in a prior art reference is a factual issue.” In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).

Analysis of the Anticipation Issue
Claim 1
LeCrone taught making a cover with three edges stitched together,
leaving an opening at a width edge to receive a headband. (FF3, 7.) After
the headband was inserted, the open end could be stitched closed if desired.
(FF4.) LeCrone anticipates Appellant’s claims because LeCrone’s open end
necessarily allowed not only for inserting the headband but also removing it.
Appellant acknowledges that LeCrone taught a tubular cover open at one
end, but argues “[n]owhere do LeCrone et al. recite that the tubular structure
is to be left open at an end, or otherwise mention that any structure on the
interior of such tube should be removable.” (App. Br. 6.) LeCrone’s tubular
cover, open at one end, anticipates the claims, even if LeCrone taught
subsequently sewing it shut. Whether LeCrone mentioned that any structure
placed inside the tube “should be removable” is beside the point. The
Examiner properly shifted the burden to Appellant to show by evidence that
a headband slid into LeCrone’s tube could not be just as readily slid out.
LeCrone’s opening was configured to accept a headband; the same open-end
configuration was necessarily the same size required for headband removal.
See Schreiber, 128 F.3d at 1478.
Appellant quotes LeCrone: “[t]urning the raw edges of the fabric tube
into the opening then finishes the open end of the fabric tube. The opening
may then be stitched closed.” (App. Br. 6, Appellant’s emphasis.)
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Appellant interprets this passage as evidence that LeCrone required a closed,
tubular cover. (Id.) Instead, the quoted passage reinforces the Examiner’s
finding, with which we agree. We find that LeCrone used “may” in the
ordinary permissive sense. LeCrone said the end was finished by simply
turning the raw edges into the opening, not that stitching was needed to
finish the end. (FF4.) We find that LeCrone taught leaving the end
unstitched, i.e., open, but permitted stitching it closed if desired.
Claim 6
Claim 6 requires “a flap, sized and configured to cover the open end
of the pocket formed by said first and second elongated ribbons of material.”
Appellant argues that LeCrone did not teach a flap covering the open end of
the headband cover. (App. Br. 4-5.) The Examiner found, and we agree,
that the flap shown in LeCrone’s Fig. 6 is configured to cover the open end
of the pocket. (FF7; Ans. 3-4.) Appellant argues that LeCrone only taught
“’turning the raw edges of the fabric into the opening.’” (App. Br. 8.) This
argument is misdirected. The claim language requires only that a flap be
“sized and configured to cover the open end.” The claim is not limited to an
opening covered by a flap. The Examiner correctly found that LeCrone
established a prima facie case of anticipation, and properly shifted the
burden to Appellant to show by evidence that LeCrone’s flap did not possess
the intended function Appellant recites in the claim. See Schreiber, 128 F.3d
at 1478.
Claim 7
Claim 7 is directed to a method of making a headband cover.
Appellant essentially repeats the argument that LeCrone did not disclose
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forming a pocket configured to enable a headband to be removably placed
therein. (App. Br. 8.) Appellant further argues that LeCrone only taught
“providing a tubular structure closed on all edges and encasing a headband.”
(Id.) Appellant is mistaken. As the Examiner found, LeCrone expressly
taught making a tubular pocket from two approximately equal sized ribbons,
stitched on three sides, “leaving at least one end opened,” into which a
headband can be put. (Col. 4, ll. 45-50; FF3.) As discussed above for claim
1, the opening through which the headband is put into the tube would
necessarily allow the headband to be withdrawn. (FF5.)
Claim 13
Claim 13 is directed to the method of claim 7, with the added step
“creating a flap, sized and configured to cover the open end of the pocket
formed by said first and second elongated ribbons of material.” LeCrone’s
Figure 6 shows the product of LeCrone’s method, with a flap as claimed.
(FF7.) Appellant argues that the Examiner did not address this feature. On
the contrary, the Examiner found, and we agree, that LeCrone’s flap is
“sized and configured” as claimed. (Ans. 3-4.) The discussion of this issue
for claim 6 is applicable as well to claim 13.
Claim 14
Claim 14 is directed to a combination headband and cover. Appellant
argues that LeCrone disclosed “a tubular structure closed on all edges and
encasing a headband,” but not the claimed combination with an “elongated
pocket sized and configured to enable said band to be removably placed
therein.” (App. Br. 9.) Appellant is mistaken. As the Examiner found,
LeCrone expressly taught making a tubular pocket from two approximately
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equal sized ribbons, stitched on three sides, “leaving at least one end
opened,” into which a headband can be put. (Col. 4, ll. 45-50.) The opening
through which the headband is put into the tube would allow the headband to
be withdrawn. (FF5.) The discussion of this issue for claim 1, above, is
applicable as well to claim 14.
Claim 19
Claim 19 is directed to the combination of claim 14, with the added
feature “a flap, sized and configured to cover the open end of the pocket
formed by said first and second elongated ribbons of material.” Appellant
argues that LeCrone did not teach it, and the Examiner did not address it. To
the contrary, the Examiner pointed out the feature in LeCrone’s Fig. 6, and
labeled it “flap” in the Examiner’s Answer. (Ans. 3-4; FF7.) The discussion
of this issue for claim 6, above, is applicable as well to claim 19.

OBVIOUSNESS
The Obviousness Issue
The Examiner rejected claims 2-5, 9, 10, and 15-18 under 35 U.S.C.
§ 103(a) as unpatentable over LeCrone. The Examiner’s position is that
LeCrone disclosed all the features of Appellant’s invention except for the
first and second surfaces displaying a different decoration. (Ans. 4-5.) The
Examiner found this feature “would have been an obvious matter of design
choice” because decorative and aesthetic purposes are well known. (Ans. 5.)
As an alternative theory, the Examiner finds that the absence of a decoration
on LeCrone’s second elongated ribbon was “displaying a different
decoration since a lack of decoration is still considered decoration.” (Id.)
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Appellant contends that LeCrone fails to “teach or suggest a headband
cover formed of separate strips of material having different decorative
surfaces.” (App. Br. 10). The issue with respect to this rejection is whether
LeCrone taught or suggested a headband cover formed of separate strips of
material having different decorative surfaces.

Additional Findings of Fact Relating to Obviousness
10. LeCrone’s headband and cover may be worn with ornamentation
(col. 2, ll. 59-64) or “without the interchangeable ornamentation.”
(Col. 2, ll. 64-67.)
11. The pocket(s) in LeCrone’s device have the additional use of carrying
objects such as lunch money or bus tokens. (Col. 2, l. 67 – col. 3,
l. 3.)
12. LeCrone disclosed examples in which the two ribbons had different
widths: “one being a ¾″ wide strip and a second being ½″ wide,” (col.
4, ll. 42-44); and another in which “a ⅞″ ribbon is place[d] wrong
sides together with a ¾″ ribbon,” (col. 5, ll. 14-16.)
13. LeCrone described an example with a fringed edge along the outer
surfaces, as “particularly adorable and commercially appealing if the
ribbon or fabric selected has a lace edge.” (Col. 5, ll. 25-33.)

Principles of Law Relating to Obviousness
Section 103 of Title 35 prohibits a patent when “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
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invention was made to a person having ordinary skill in the art to which said
subject matter pertains.”
Obviousness is a question of law based on fact findings. The scope
and content of the prior art are determined; differences between the prior art
and the claims at issue are ascertained; and the level of skill in the art is
resolved. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Against
that background, the obviousness or nonobviousness of the subject matter is
determined. Id.; In re Kahn, 441 F.3d 977, 985 (Fed. Cir. 2006). The
determination of obviousness is made with respect to the subject matter as a
whole, not separate pieces of the claim. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, ___, 127 S. Ct. 1727, 1734 (2007). “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more that yield predictable results. . . . [I]f a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.”
Id. at 1739-40.
“During patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow.” In re Zletz, 893 F.2d 319, 322
(Fed. Cir. 1989).

Analysis of the Obviousness Issue
Appellant begins the discussion of this issue by reapplying arguments
about elements in the claims rejected for anticipation. As we have already
found LeCrone disclosed the elements of claim 1, the repeated arguments
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are unpersuasive as far as claim 3 incorporates the limitations of claim 1.
Accord, Schreiber, 128 F.3d at 1479.
We interpret the phrases “a surface displaying a decoration” (claim 2)
and “the decorative surface” (claim 3) as including a surface that is itself the
decoration. Put another way, while claim 3 includes a decorative surface, it
does not require an attached decorative element. “[T]he decorative surface”
includes a surface that is colored or patterned, without attachments. The
Specification does not set out a definition for these terms, but appears to use
them in their ordinary or broad sense. For example: “there remains a need
for a hair decoration device that allows the wearer to decorate their hair with
color, while allowing the user to change the decoration color and pattern of
the device, as well.” (Spec. 2.) In the absence of a limiting definition, we
construe both phrases broadly. This interpretation is also consistent with
claim differentiation, as the “surface displaying a decoration” is limited in
claim 4 by “further comprises a decorative element.” Phillips v. AWH
Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“Differences among
claims can also be a useful guide in understanding the meaning of particular
claim terms.”).
Appellant argues that headbands have had “static design, with the
problem of how to allow varied decoration on a single headband device
being solved by allowing varied, separate ornamentation, such as clip-on
ornaments.” (App. Br. 11.) LeCrone taught using its decorative headband
cover without attached ornamentation. (FF10.) We therefore do not find
that the prior art is limited to clip-on ornaments.
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Appellant argues that making the headband cover “from separate
pieces of distinct material (as required by claims 3, 10, and 16) would have
in fact needlessly complicated the construction and increased its expense.”
(App. Br. 11.) However, LeCrone expressly taught making the headband
cover from separate pieces. (FF3.) LeCrone also provided examples
wherein the strips vary in width (FF12), and suggested selecting ribbon or
fabric for its design and commercial appeal (FF13). Given LeCrone’s
teachings that the decorative headband cover could be worn without attached
ornamentation, and that ribbon or fabric should be selected for its appeal, we
find that LeCrone suggests selection of ribbon or fabric materials for their
design and commercial appeal.
The Examiner reasoned that it would have been an obvious design
choice to have the first and second ribbons show different decoration. (Ans.
5.) The Examiner first explained that LeCrone showed a first surface
displaying a decoration and a second surface without a decoration (id.),
pointing to LeCrone Figures 1 and 4. (Ans. 6.) Given LeCrone’s suggestion
to select ribbons or fabric for design appeal or commercial appeal, we agree
with the Examiner that a person of ordinary skill in the art at the time of the
invention would have made LeCrone’s headband cover with different
decorative surfaces, such as colors. See KSR, 550 U.S. at ___, 127 S. Ct. at
1740 (cautioning against rewarding obvious variations precipitated by
“design incentives and other market forces”).

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CONCLUSIONS OF LAW
• LeCrone disclosed a headband cover that had an open edge that would
have allowed removable placement of a headband within the
headband cover;
• LeCrone disclosed a headband cover with “a flap, sized and
configured to cover the open end of the pocket;” and
• LeCrone suggested a headband cover formed of separate strips of
material having different decorative surfaces.

SUMMARY
We affirm the rejection of claims 1, 6-8, 11-14, 19, and 20 under
35 U.S.C. § 102(b) as anticipated by LeCrone; and
We affirm the rejection of claims 2-5, 9, 10, and 15-18 under
35 U.S.C. § 103(a) as obvious over LeCrone.
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
WHITEFORD, TAYLOR & PRESTON, LLP
ATTN: GREGORY M STONE
SEVEN SAINT PAUL STREET
BALTIMORE MD 21202-1626

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