Ex Parte Becker et al

Patent Trial and Appeal Board

Apr 25, 2016

12201185 (P.T.A.B. Apr. 25, 2016)

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.
12/201,185 08/29/2008 William Becker 21483(ITWO:0249)YOD 8993
52145 7590 04/26/2016
FLETCHER YODER (ILLINOIS TOOL WORKS INC.)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
BRANDON, MEGAN E
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
04/26/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM BECKER, KENNETH S. DOBSON,
KUI-CHIU KWOK, and ERIC SOMMERS
____________

Appeal 2014-0031891,2
Application 12/201,185
Technology Center 3700
____________

Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
MATTHEW S. MEYERS, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–14, 16–21, and 23–25. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 Our decision references Appellants’ Specification (“Spec.,” filed Aug. 29,
2008), Appeal Brief (“Appeal Br.,” filed Oct. 21, 2013), and Reply Brief
(“Reply Br.,” filed Jan. 15, 2014), as well as the Final Office Action (“Final
Action,” mailed May 21, 2013) and the Examiner’s Answer (“Answer,”
mailed Nov. 18, 2013).
2 The real party in interest is Illinois Tool Works Inc. Appeal Br. 2.
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Application 12/201,185

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According to Appellants, the invention is directed to “airflow systems
for welding helmets.” Spec. ¶ 2. We reproduce, below, independent claim 1
as representative of the appealed claims.
1. A system comprising:
a headgear that in operation directly attaches to the head
of a wearer and is configured to adjustably fit the head of the
wearer without removing the headgear from the head of the
wearer, and to be attached to a removable helmet, the headgear
comprising:
an airflow system attached to a rear portion of the
headgear and configured to receive air;
a front portion configured to direct the air toward
the face of the wearer;
a first adjustment device configured to enable
circumferential adjustment of the headgear to the head of
the wearer without removing the headgear from the head
of the wearer;
a second adjustment device configured to attach the
headgear to the removable helmet and to enable
adjustment of the angle of the helmet with respect to the
face of the wearer; and
a flexible conduit comprising flexible tubing
configured to expand and contract along the curvature of
the headgear as the headgear is adjusted to fit the head of
the wearer to enable a circumferential adjustment of the
headgear,
wherein the flexible conduit fluidly connects the
front portion and the airflow system, and wherein when
the removable helmet is attached to the headgear via the
second adjustment device, at least a portion of the flexible
conduit is located internal to the removable helmet
between the removable helmet and the head of the wearer.
Appeal Br., Claims App.

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Application 12/201,185

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REJECTIONS AND PRIOR ART
The Examiner rejects claims 1–14, 16, and 23 under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter that Appellants regard as the invention.
The Examiner rejects 1–5, 10–14, 16, 18, 19, and 23–25 under
35 U.S.C. § 103(a) as unpatentable over Figueredo (US 5,878,742, iss.
Mar. 9, 1999) and Oleson (US 4,888,831, iss. Dec. 26, 1989).
The Examiner rejects claims 6–9, 17, 20, and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Figueredo, Oleson, and Webb
(US 2007/0061946 A1, pub. Mar. 22, 2007).
Final Action 3–17.

ANALYSIS
Indefiniteness rejection
The Examiner rejects claims 1–14 as indefinite because “[c]laim 1
recites a ‘first adjustment device’ and a ‘second adjustment device.’ The
claimed limitation is unclear and indefinite. [The] [S]pecification fails to
provide support for the recitation of a first and a second adjustment device.”
Final Action 4. The Examiner further explains that “an ‘adjustment device’
can be construed as many diverse structures that provide for adjusting (i.e.[,]
straps, buttons, snaps, clips). Further, the language recited of ‘an adjustment
device’ is inconsistent with the disclosure since Applicant discloses
specifically a knob and not the broader recitation of an adjustment device.”
Answer 2.
A claim is indefinite if that claim, “read in light of the [S]pecification
. . . and the prosecution history, fail[s] to inform, with reasonable certainty,
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Application 12/201,185

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those skilled in the art about the scope of the invention.” Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). We determine that
one of ordinary skill in the art would have understood, based on the
Specification, that the knobs described therein correspond to the claimed
first and second adjustment devices. See Appeal Br. 6. Thus, we do not
sustain the indefiniteness rejection on this basis.
The Examiner further rejects claims 1, 16, and 23 as indefinite
because each of these claims “recite[s] the limitation ‘the head.’ There is
insufficient antecedent basis for this limitation in the claim[s].” Final
Action 4. However, inherent components of elements recited in the claims
have antecedent basis in the recitation of the elements themselves. See, e.g.,
Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359, (Fed. Cir 2001). In this case,
we conclude that the claimed recitation of “a wearer” provides antecedent
basis for “the head” of the wearer. Based on the foregoing, we do not
sustain the indefiniteness rejection on this basis either.
Obviousness rejections
Independent claim 1 recites “a flexible conduit comprising flexible
tubing configured to expand and contract along the curvature of the
headgear as the headgear is adjusted to fit the head of the wearer to enable a
circumferential adjustment of the headgear.” Appeal Br., Claims App. In
response to Appellants’ argument that the rejection is in error because
Figueredo does not show this limitation (see Appeal Br. 7), the Examiner
finds that “[t]he conduit, as claimed, is only recited to be ‘configured to
expand and contract along the curvature of the headgear[,]’ which is clearly
taught by Figueredo. The conduit [21] of Figueredo is corrugated/flexible
and wraps around following the curve of the headgear [27, 33]”
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Application 12/201,185

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(Answer 2–3). However, the Examiner fails to establish that Figueredo’s
conduit 21 is configured to expand or contract as either Figueredo’s bonnet
27 or helmet 33 is circumferentially adjusted to fit the head of a wearer, as
opposed to, for example, the conduit 21 being configured to expand or
contract to fit different sized bonnets or helmets. See Appeal Br. 7.
Based on the foregoing, we do not sustain the rejection of independent
claim 1. Inasmuch as each of the other independent claims recites similar
limitations, and the Examiner does not establish that another reference
discloses the claimed conduit, we also do not sustain any of the rejections of
claims 2–14, 16–21, and 23–25.

DECISION
We REVERSE the Examiner’s rejection of claims 1–14, 16–21, and
23–25.

REVERSED