Tracey Pickett

Patent Trials and Appeals Board

Jun 25, 2020

2019006333 (P.T.A.B. Jun. 25, 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.
14/461,262 08/15/2014 Tracey L. Pickett TUP18555 6736
62439 7590 06/25/2020
SINORICA, LLC
20251 Century Blvd.
Suite 140
Germantown, MD 20874
EXAMINER
HADEN, SALLY CLINE
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
06/25/2020 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):
SINORICA@GMAIL.COM
pair@sinorica.com
sinorica@outlook.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TRACEY L. PICKETT

Appeal 2019-006333
Application 14/461,262
Technology Center 3700
____________

Before BENJAMIN D. M. WOOD, MICHAEL J. FITZPATRICK, and
LISA M. GUIJT, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, Tracey L. Pickett,1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s final decision rejecting claims 1, 20, and 21. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies herself as the sole real party in interest. Appeal Br. 2.
Appeal 2019-006333
Application 14/461,262

2
STATEMENT OF THE CASE
The Specification
The Specification “relates generally to the field of head coverings
designed for different weather conditions,” and discloses “a hat that is
aesthetically pleasing and that can also be used during inclement weather.”
Spec. 1:10–12.
The Claims
Claims 1, 20, and 21 are rejected. Non-Final Act. 1. No other claims
are pending. Id. Claim 1, the sole independent claim, is reproduced below.
1. A rain hat device comprising:
a combination structure;
a lining;
the combination structure and the lining jointly forming a
hat shape by the combination structure being positioned atop
the lining and the lining being positioned within the
combination structure;
the lining being made of a satin material;
a device opening;
the device opening being formed in response to the
combination structure and the lining jointly forming the hat
shape;
a storage bag;
the storage bag being laterally connected to the lining;
a visor;
the visor being integrated onto the combination structure;
an adjustable band;
the adjustable band being configured to adjust the device
opening;
the adjustable band and the visor being located opposite
to each other;
Appeal 2019-006333
Application 14/461,262

3
the adjustable band being made of an elastic material;
a nonslip band;
the nonslip band being located in between the adjustable
band and the visor;
the adjustable band and the nonslip band being connected
with each other;
the adjustable band and the nonslip band jointly
delineating the device opening;
the nonslip band being made of a nonslip material;
the combination structure comprising an interlacing layer
and a waterproof layer;
a portion of the interlacing layer being made of a cotton
material, a nylon material, a mesh material or a polyester
material;
the interlacing layer being superimposed onto the
waterproof layer;
the waterproof layer being superimposed onto the lining;
the waterproof layer being located in between the
interlacing layer and the lining;
the storage bag comprising a bag opening;
the combination structure, the lining and the visor being
configured to be accommodated within the storage bag by
rendering the storage bag foldover, stuffing the combination
structure, the lining and the visor into the storage bag through
the bag opening, and fully closing the bag opening without
utilizing any opening collapsing mechanism;
in response to the storage bag being laterally connected
to the lining, the storage bag being formed in between the
combination structure and the lining, the bag opening being
formed adjacent to the device opening, and the bag opening and
the visor being located opposite to each other;
a back covering section;
Appeal 2019-006333
Application 14/461,262

4
the back covering section being formed in response to the
combination structure and the lining jointly forming the hat
shape; and
the back covering section and the visor being located
opposite to each other.
Appeal Br. 20–21.
The Examiner’s Rejections
The rejections before us are:
1. claims 1, 20, and 21 under 35 U.S.C. § 112(a) for lacking
adequate written description (Final Act. 4);
2. claims 1, 20, and 21 under 35 U.S.C. § 112(b) for being
indefinite (id. at 5);
3. claim 1 under 35 U.S.C. § 103 as unpatentable over Garza2 and
Steffy3 (id. at 6); and
4. claims 20 and 21 under 35 U.S.C. § 103 as unpatentable over
Garza, Steffy, and Epling4 (id. at 10).

DISCUSSION
Rejection 1—Written Description
The Examiner originally found that the Specification lacks an
adequate written description for the following limitations of claim 1:
“combination structure,” “interlacing layer,” “back covering section,” and
“polyester material.” Final Act. 4. In the Answer, the Examiner narrowed
his findings, maintaining the rejection only with respect to “interlacing

2 US 2009/0055995 Al, published Mar. 5, 2009 (“Garza”)
3 US 6,012,172, issued Jan. 11, 2000 (“Steffy”).
4 US 2005/0268382 Al, published Dec. 8, 2005 (“Epling”).
Appeal 2019-006333
Application 14/461,262

5
layer” and “polyester material.” See Ans. 3 (“Examiner is persuaded by
Appellant’s arguments that ‘combination structure’ and ‘back covering
section’ are not new matter; however, ‘interlacing layer’ and ‘polyester
material’ are new matter.”).
The Specification as filed lacks in haec verba support for either an
“interlacing layer” or “polyester material.” See generally Spec. Although
the law does not require in haec verba support, “the disclosure must . . .
convey with reasonable clarity to those skilled in the art that . . . [the
inventor] was in possession of the invention.” Purdue Pharma L.P. v.
Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). “Put another way, one
skilled in the art, reading the original disclosure, must immediately discern
the limitation at issue in the claims.” Id.
As support for an “interlacing layer,” Appellant argues that it “refers
to the exterior layer and the knitted interior layer onto which the exterior
layer is superimposed.” Appeal Br. 13. Appellant further argues, “as shown
in FIG. 4, the combination structure, comprises the interlacing layer and the
waterproof layer 6. Further, the interlacing layer comprises the interior
knitted layer 3 and the exterior layer 2.” Id. at 16. The Specification,
however, does not describe the knitted layer 3 and exterior layer 2 being
grouped, let alone by interlacing, to form an interlacing layer. Indeed, as the
Examiner explained in the Answer, “[b]ecause ‘interlacing’ is a specific
structure it appears Appellant is not merely grouping two previously
disclosed layers, but introducing a new ‘interlacing layer’ with a specific
structure.” Ans. 4. Appellant did not file a reply brief, and ultimately has
not shown error in the Examiner’s finding that “interlacing layer” constitutes
Appeal 2019-006333
Application 14/461,262

6
new matter and that the Specification as filed lacks an adequate written
description of the claimed invention.
Although the lack of written description support for “interlacing
layer” is a sufficient basis to affirm Rejection 1, we also address the
Examiner’s finding that “polyester material” likewise constitutes new
matter. As support for “polyester material,” Appellant argues that nylon,
which is disclosed in the Specification, “is a specific type of . . . polyester
material.” Appeal Br. 13. Appellant does not provide a citation to any
evidence in support of its argument. The Examiner responds unequivocally
that “[n]ylon and polyester are two different materials and nylon is not a
type of polyester.” Ans. 4. On the record presented, Appellant does not
show error in the Examiner’s finding that “polyester material” constitutes
new matter and that the Specification as filed lacks an adequate written
description of the claimed invention.
Appellant does not apprise us of error in the rejection of claim 1 and,
thus also claims 20 and 21, under 35 U.S.C. § 112(a) for lacking adequate
written description. Rejection 1 is affirmed.
Rejection 2—Indefiniteness
The Examiner determined that claim 1 was indefinite based on
multiple limitations. Final Act. 5–6. In the Answer, the Examiner narrowed
the rejection, maintaining it only with respect to claim 1’s recitation of “the
lining and the visor being configured to be accommodated within the storage
bag by rendering the storage bag foldover.” See Ans. 4–5 (“Examiner is
persuaded by some of Appellant’s arguments and the rejections set forth in
the first, second, fifth, and sixth paragraphs are withdrawn by Examiner;
however the ‘the lining and the visor being configured to be accommodated
Appeal 2019-006333
Application 14/461,262

7
within the storage bag by rendering the storage bag foldover’ (third
paragraph) and ‘the storage bag foldover’ (fourth paragraph) remain
indefinite.”).
With respect to this recitation, the Examiner determined that “the
storage bag foldrover” lacks antecedent basis and, further, it is unclear “how
and by what means . . . the storage bag foldover [is] rendered.” Final Act. 5.
The Specification discloses that, in one embodiment, “the opening
collapsing mechanism 10 can be, but is not limited to, a zipper or a fold-over
pocket.” Spec. 6:10–11. This is the only reference in the Specification to
“fold-over” or “foldover.” See generally id. In that singular disclosure, the
hyphenated version of the claim term “foldover” is used to modify a
“pocket.” Appellant argues that this disclosure evidences that “when a
storage bag 8 is foldover, the lining 7 and a visor 100 can be accommodated
within the storage bag 8.” Appeal Br. 14.
The Examiner responds that, notwithstanding Appellant’s argument,
“[i]t is not clear how the combination structure, lining, and visor are
accommodated within the storage bag by rendering . . . the storage bag
foldover.” Ans. 5. The Examiner further responds that it is not even clear
whether “foldover” is a structural component of the claimed bag or merely a
capability of the bag. See id. (“Is a ‘foldover’ a portion of the bag? If so,
how is the portion ‘rendered?’ Is a ‘foldover’ a capability of the storage bag,
which is to say, it is capable of folding over? If so, what does it mean to
‘render’ an ability to fold over?”).
Finally, the Examiner correctly notes that Appellant does not contest
the lack of antecedent basis. Id.
Appeal 2019-006333
Application 14/461,262

8
As stated above, Appellant did not file a reply brief. Based on the
record before us, we agree with the Examiner that the phrase “rendering the
storage bag foldover” is unclear and that Appellant’s reliance on page 6, line
11 of the Specification along with associated figures (see Ans. 14) does not
adequately elucidate its meaning. Additionally, the lack of antecedent basis
for “the storage bag foldover” effectively is conceded by Appellant.
Appellant has not shown error in the Examiner’s determination that
“the lining and the visor being configured to be accommodated within the
storage bag by rendering the storage bag foldover” is indefinite.
Accordingly, we affirm the rejection of claim 1 and, thus also claims 20 and
21, under 35 U.S.C. § 112(b). Rejection 2 is affirmed.
Rejection 3—Obviousness in view of Garza and Steffy
Appellant argues for reversal of Rejection 3 mainly by contrasting the
Specification’s disclosure with the asserted prior art. See, e.g., Appeal Br. 7
(“In the present application, based on page 3 lines 23–25 and page 5 lines
20–21 of the specification and FIGs. 9 and 12, a rain hat device comprises: .
. . .”). All such arguments are inapposite. Section 103 of Title 35, under
which the Examiner has rejected claim 1, states:
A patent for a claimed invention may not be obtained,
notwithstanding that the claimed invention is not identically
disclosed as set forth in section 102, if the differences between
the claimed invention and the prior art are such that the claimed
invention as a whole would have been obvious before
the effective filing date of the claimed invention to a person
having ordinary skill in the art to which the claimed
invention pertains.
35 U.S.C. § 103 (emphasis added); see also Graham v. John Deere Co., 383
U.S. 1, 17 (1966) (“Under § 103, the scope and content of the prior art are to
Appeal 2019-006333
Application 14/461,262

9
be determined; differences between the prior art and the claims at issue are
to be ascertained; and the level of ordinary skill in the pertinent art resolved.
Against this background, the obviousness or nonobviousness of the subject
matter is determined.” (emphasis added)); Sjolund v. Musland, 847 F.2d
1573, 1582 (Fed. Cir. 1988) (“[T]he claims define the invention. . . .
[L]imitations from the specification are not to be read into the claims.”).
Appellant’s sole argument based on the scope of claim 1 (as opposed
to the disclosure of the Specification) is that the asserted prior art does not
teach “a back covering portion; the back covering section being formed in
response to the combination structure and the lining jointly forming the hat
shape; and the back covering section and the visor being located opposite to
each other,” as recited in claim 1. Appeal Br. 6. The Examiner found that
Garza teaches these limitations via its closed end 14. Final Act. 8 (citing
Garza Fig. 5).
Appellant argues that the asserted “closed end 14” of Garza’s hat “is
on a top of a user’s head when worn by the user” and “is essentially different
from the back covering section of the present application.” Appeal Br. 9. It
is true that the closed end 14 appears centered about the top of a user’s head
in Figure 1 of Garza. But this argument does not respond to the Examiner’s
specific finding that the Garza’s closed end “has a substantial diameter that
will cover the top of the wearer’s head as well as portions of the front, sides,
and back.” Final Act. 5. It is enough, per the Examiner’s claim
interpretation, that it “covers at least portions of the back of the wearer’s
head.” Id. at 6. Appellant also does not rebut the Examiner’s further finding
that “Garza’s hat is capable of being tilted back on the wearer’s head to
cover an even greater amount including the entirety of the back of the
Appeal 2019-006333
Application 14/461,262

10
wearer’s head.” Id. Nor does Appellant persuade us that Garza’s closed end
14, despite covering a portion of the back of the user’s head in Figure 1 of
Garza and despite being capable of being tilted back to cover a greater
portion of the back of the user’s head, is not “a back covering portion” as
recited in claim 1.
Because Appellant does not apprise us of error in the obviousness
rejection of claim 1, Rejection 3 is affirmed.
Rejection 4—Obviousness in view of Garza, Steffy, and Epling
Claims 20 and 21 depend from claim 1. Appellant does not present
any arguments with respect to the obviousness rejection of claims 20 and 21
beyond those already considered above with respect to the obviousness
rejection of claim 1. Accordingly, we affirm Rejection 4 for reasons similar
to those for which we affirm Rejection 3.
SUMMARY
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 20, 21 112(a) Written
description
1, 20, 21
1, 20, 21 112(b) Indefiniteness 1, 20, 21
1 103 Garza, Steffy 1
20, 21 103 Garza, Steffy,
Epling
20, 21
Overall
Outcome
1, 20, 21

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