Tenacious Holdings, Inc.

Patent Trials and Appeals Board

Jul 24, 2020

2019004952 (P.T.A.B. Jul. 24, 2020)

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.
14/552,584 11/25/2014 Thomas Votel 5039.35US02 3429
87197 7590 07/24/2020
Skaar Ulbrich Macari, P.A.
601 Carlson Parkway
Suite 1050
Minneapolis, MN 55305
EXAMINER
TALLMAN, ROBERT E
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
07/24/2020 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):
pto@sumiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS VOTEL, ANDREW OLSON, and DOMINIQUE ARIS
____________

Appeal 2019-004952
Application 14/552,584
Technology Center 2800
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1–6.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as “Tenacious
Holdings, Inc.” (Appeal Br. 1).

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Application 14/552,584

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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal (emphasis added
to highlight key disputed limitations):

1. Protective eyewear comprising:
a frame;
the frame containing two protective lens;
two rigid temple pieces;
each rigid temple piece being connected to an opposite
end of the frame by a hinge;
each rigid temple piece having an opening adjacent the
hinge;
each opening being partitioned into at least two vents;
each of the at least two vents configured to allow air flow
therethrough;
each of the at least two vents configured to receive a key;
a clip having a protruding key configured to be received
by any one of the at least two vents; and,
wherein when the clip key is engaged in any one of the at
least two vents, the remaining vents in the rigid temple remain
open to allow air flow therethrough.

(Appeal Br., Claims Appendix 11).

REJECTIONS
The Examiner maintains the following rejections.
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Claims 1–3 are rejected under 35 U.S.C. § 103 as being unpatentable
over Bonacci (US 6,513,925 B1; Feb. 4, 2003) and Wang (US 7,419,260 B1;
Sept. 2, 2008).
Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over
Bonacci, Wang, and Howell (US 2009/0296044 A1; Dec. 3, 2009).
Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over
Bonacci, Wang, and Martin (US 2010/0165286 A1; July 1, 2010).
Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over
Bonacci, Wang, and Ashlie (US 2007/0076165 A1; Apr. 5, 2007).

OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal and Reply Briefs, we determine that
Appellant has not identified reversible error in the Examiner’s rejections
(See generally Ans. mailed Apr. 10, 2019). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejections for the reasons expressed by the
Examiner in the Non-Final Office Action and the Answer.
We add the following primarily for emphasis.
Appellant argues that the claim phrase “at least two vents” in claim 1
does not encompass Bonacci’s protective eyewear openings 44, as relied
upon by the Examiner, because Bonacci’s openings 44 (vents) are meant to
be filled with buoyant pads (See Appeal Br. 4; Reply Br. 2, 3). Appellant
also argues that Bonacci teaches away from the claimed invention because if
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the openings were left unfilled this would defeat the purpose of Bonacci to
have floating eyewear (Appeal Br. 5; Reply Br. 4).
These arguments are not persuasive of reversible error for the reasons
the Examiner provides (Ans. 4–13 (Answer mailed April 10, 2019)).
It is well established that “the PTO must give claims their broadest
reasonable construction consistent with the specification. . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted) (“[A]s applicants
may amend claims to narrow their scope, a broad construction during
prosecution creates no unfairness to the applicant or patentee.”)
Here, the language of claim 1 clearly encompasses the openings of
Bonacci (See Ans. 4). Appellant directs us to no limiting definition in the
Specification for the term vent. Appellant’s urged definition that vents must
be open (Reply Br. 4) is not persuasive, because it is common knowledge
that vents often have filters located therein or even covers/shutters. As the
Examiner points out, it is reasonable to assume that the buoyant (foam)
material of Bonacci would allow some air to pass therethrough (Ans. 6, 7).
Moreover, the Specification discloses the insertion of a clip in a vent’s
opening (Spec 4). Accordingly, Appellant has not shown reversible error in
the Examiner’s determination that the claimed vents encompass the openings
of Bonacci.
Next, Appellant argues that Wang does not have any vents, thus
“there is no motivation to combine” the teachings of Bonacci with Wang
(Appeal Br. 6; Reply Br. 4). We disagree.
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Appellant’s argument fails to consider the breadth of the claim
language, the applied prior art as a whole, and the inferences that one of
ordinary skill would have made. Bonacci teaches its eyewear temple
openings may be any size or shape or number (Bonacci col. 6, ll. 40–52).
Bonacci does not require all of the vent openings to be filled with a buoyant
material. (Bonacci col. 6, ll. 23–28). The Examiner relies on Wang to
exemplify that it was known to provide keyed openings in eyewear temples
to clip, e.g., an accessory strap thereto (Wang, e.g., Abstract; Figs. 1, 10). It
has been established that “the [obviousness] analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Furthermore, “[t]he test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into the structure of the
primary reference. . . . Rather, the test is what the combined teachings of
[those] references would have suggested to those of ordinary skill in the
art.”). In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). See
also In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the
teachings of references does not involve an ability to combine their specific
structures.”).
Accordingly, one of ordinary skill would have readily inferred that
openings in Bonacci may also be configured to receive a key of a clip for an
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eyewear accessory, as Wang exemplifies (see generally Ans.). Appellant
has not explained sufficiently why the claimed subject matter is “more than
the predictable use of prior art elements [or steps] according to their
established functions.” KSR, 550 U.S. at 417; Ball Aerosol & Specialty
Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009)
(under the flexible inquiry set forth by the Supreme Court, the PTO must
take account of the “inferences and creative steps,” or even routine steps,
that an ordinary artisan would employ).
Appellant’s remaining arguments regarding the Examiner’s rejections
of claims dependent on claim 1 are not persuasive of reversible error for at
least the reasons set out above (see also, Ans. 11–14). Indeed, as a matter of
claim construction, the accessory recited in each claims 3–6 is not a required
element because a portion of the clip only needs to be “configured to accept
an accessory” as recited in claim 2. In any event, the use of any known or
obvious accessory with a keyed clip would have been within the ordinary
level of skill in the art as the Examiner explains.
Accordingly, we sustain the Examiner’s rejections of claims 1–6.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3 103 Bonacci, Wang 1–3
4 103 Bonacci, Wang,
Howell
4
5 103 Bonacci, Wang,
Martin
5
6 103 Bonacci, Wang,
Ashlie
6
Overall
Outcome
1–6

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED