Ex Parte Vahey

Patent Trial and Appeal Board

Nov 27, 2017

14249940 (P.T.A.B. Nov. 27, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/249,940 04/10/2014 MICHAEL VAHEY VAHEY 1C 8730
99344 7590 12/01/2017
Patent T aw of Virginia PT T .P
EXAMINER
PO Box 9319
Richmond, VA 23227
HOEY, ALISSA L
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
12/01/2017 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):
brian @patentlawva.com
brianjteague@gmail.com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL VAHEY
Appeal 2016-004296
Application 14/249,940
Technology Center 3700
Before GEORGE R. HOSKINS, ARTHUR M. PESLAK, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael Vahey (Appellant)1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s final decision rejecting claims 1,3,4, 6, 7, 9, and 10.2 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 The Appeal Brief identifies Michael Vahey as the real party in interest.
Br. 2.
2 Claims 2, 5, 8, and 11—16 are canceled. Id. at 12—14 (Claims App.).
Appeal 2016-004296
Application 14/249,940
SUMMARY OF THE DECISION
We AFFIRM.
SUMMARY OF THE INVENTION
Appellant’s disclosure “relates generally to head and neck support.”
Spec. 11.3 Claim 1, reproduced below from page 12 (Claims Appendix) of
the Appeal Brief, is illustrative of the claimed subject matter:
1. A head support device:
a headband adapted for encircling a head of a wearer; and
a first head support member and a second head support
member, the first and second head support members being
attached at complimentary opposing positions on the headband;
wherein each of the first head support and the second
head support comprise contoured pillows;
wherein an interior edge of the first head support is
spaced apart from an interior edge of the second head support
and wherein the first and second head support members are
positioned on the headband such that an unpadded section of
the device is adapted to be positioned at an occiput of the head
of the wearer when the device is worn encircling the head of the
wearer; and
wherein the first and second head support members are
positioned to engage the head of the wearer and further engage
a head rest surface when the headband is encircling the head of
the wearer, thereby being capable of restricting rotation of the
head of the wearer about an axis parallel to a neck of the
wearer.
3 Reference is to the second paragraph designated with the numeral one.
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Application 14/249,940
REJECTIONS4
Claims 1, 3, 4, 6, 7, 9, and 10 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Hoyle (US 7,202,774 B2, issued Apr. 10, 2007).
Claims 1, 3, 4, 6, 7, 9, and 10 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Clegg (US 6,641,220 B2, issued Nov. 4, 2003)
and Honer (US 4,679,263, issued July 14, 1987).
ANALYSIS
Anticipation Rejection
Appellant argues claims 1, 3, 4, 6, 7, 9, and 10 collectively. Br. 7—9.
We select claim 1 as representative, treating claims 3, 4, 6, 7, 9, and 10 as
standing or falling with representative claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner finds that Hoyle discloses a head support device as
recited in claim 1, including, inter alia, a headband (strap 16) and first and
second head support members (ear covers 20, 22) positioned to engage the
head of the wearer and ahead rest surface in use.5 Final Act. 4—5. The
Examiner also determines the following recitation is an indication of
intended use of the claimed head support device:
wherein the first and second head support members are
positioned to engage the head of the wearer and further engage
a head rest surface when the headband is encircling the head of
the wearer, thereby being capable of restricting rotation of the
4 A rejection of claims 1 and 6 under 35 U.S.C. § 112, second paragraph,
was withdrawn. Adv. Act. 2; Final Act. 3.
5 Parentheticals refer to the terminology of the cited references.
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Application 14/249,940
head of the wearer about an axis parallel to a neck of the
wearer.
Id. at 5.
Appellant disagrees, arguing that “Hoyle does not disclose ear covers
that are positioned to engage the head of the wearer and further engage a
head rest surface when encircling the head of a wearer.” Br. 8. According
to Appellant, “Hoyle’s ear covers are too far forward to restrict rotation of
the wearer’s neck.” Id. Appellant also argues that the above-quoted
recitation is “of a specific structure (the position of the head support
members) and the specific effect of that specific structure” rather than being
an indication of intended use. Id. at 8—9.
We are not persuaded by Appellant’s arguments. As correctly noted
by the Examiner, Appellant broadly recites “a head rest surface” with no
further description or limitation, such that the recited “head rest surface is
not limited to a straight, flat surface.” Ans. 2. Thus, we agree with the
Examiner that “[t]he [recited] head rest surface can be any head rest surface
including pillows of differing sizes, contours, densities and thickness[es],”
including “adjustable chair head rests that curve to the shape of a user’s
head, like those found on airplanes.” Id. With such a head rest surface, we
agree with the Examiner that Hoyle’s ear covers 20, 22 would be positioned
to engage the head of the wearer and further engage the head rest surface as
required by claim 1.
We agree with Appellant that the above-quoted recitation is a
structural limitation rather than being an indication of intended use.
However, as noted above, Appellant does not persuade us of error in the
Examiner’s finding that Hoyle discloses such structure.
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Application 14/249,940
Accordingly, we sustain the rejection of claims 1, 3, 4, 6, 7, 9, and 10
as being anticipated by Hoyle.
Obviousness Rejection
Appellant argues claims 1, 3, 4, 6, 7, 9, and 10 collectively. Br. 9—10.
We select claim 1 as representative, treating claims 3, 4, 6, 7, 9, and 10 as
standing or falling with representative claim 1.
The Examiner finds that Clegg discloses a head support device
substantially as recited in claim 1, including, inter alia, a headband (front
sheet 22, rear sheet 24), but does not disclose the headband encircling the
head of the wearer. Final Act. 7—8. The Examiner finds that Honer
discloses a head support device including a headband (back cushion 10,
strap 21, strap 22) that encircles the wearer’s head, and reasons that it would
have been obvious to one of ordinary skill in the art “to have provided the
device of Clegg with a front band to allow the headband to encircle the
wearer’s head, as taught by Honer, so as to keep the device securely
positioned on the wearer’s head even when the wearer sits up.” Id. at 8.
Appellant disagrees, arguing that Clegg’s “complex structure . . .
would be unnecessary if Clegg’s device had a headband, as the headband
would hold the cushions against the sides of the wearer’s head.” Br. 10.
Continuing, Appellant asserts that “[n]o person of ordinary skill in the art
would bother going to the trouble of constructing Clegg’s complex pivoting
structure and then add a headband . . ., as adding the headband renders much
of Clegg’s structure pointless and redundant.” Id. Thus, Appellant
concludes, “Clegg can be said to teach away from the use of a headband,
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since Clegg’s complex structure accomplishes what otherwise might be
accomplished with a headband.” Id.
We are not persuaded by Appellant’s arguments. The Examiner’s
modification of Clegg adds Honer’s straps 21, 22 but does not alter the
function or operation of Clegg’s head support device. Clegg’s device
includes flap 34 that “allows the weight from the user’s back and shoulder
area to maintain the device 10 in a fixed position” during use (Clegg 2:65—
67), but does not otherwise provide a mechanism to retain the device in
position should the user sit up from seat 28. Thus, the Examiner’s
modification to provide such a mechanism (in the form of Honer’s straps 21,
22) is supported by rational underpinnings. Appellant has not persuasively
shown error in the Examiner’s findings or reasoning.
Furthermore, a “teaching away” requires a reference to actually
criticize, discredit, or otherwise discourage the claimed solution. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant does not directus
to, nor does our review reveal, any such discouragement.
Accordingly, we sustain the rejection of claims 1, 3, 4, 6, 7, 9, and 10
as being unpatentable over Clegg and Honer.
DECISION
The Examiner’s decision to reject claims 1,3,4, 6, 7, 9, and 10 is
affirmed.
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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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