Ex Parte Brace et al

Patent Trial and Appeal Board

May 15, 2017

12934282 (P.T.A.B. May. 15, 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.
12/934,282 09/24/2010 Thomas J Brace 64129US004 6401
32692 7590 05/17/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
QUINN, RICHALE LEE
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
05/17/2017 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS J. BRACE, SEAN R. KILMER,
ALAN J. SOLYNTJES, and STEVEN W. STAVOS
Appeal 2015-004791
Application 12/934,2821
Technology Center 3700
Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1, 2, 4—7, 9—11, and 20-22. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, “[t]he real party in interest is 3M Company
(formerly known as Minnesota Mining and Manufacturing Company) of
St. Paul, Minnesota and its affiliate 3M Innovative Properties Company of
St. Paul, Minnesota.” Appeal Br. 2.
Appeal 2015-004791
Application 12/934,282
STATEMENT OF THE CASE
Claimed Subject Matter
The Appellants’ invention is directed to a lens seal for an article of
headgear, such as a respirator system. Spec., Title, 119. More specifically,
a lens seal that follows the contours of a face shield and head-covering
article, and “readily forms a curved shape and/or . . . sealingly conforms to a
curved surface.” Spec. 119, 35; see, e.g., id. at Figs. 3^4 (seal 85).
Claims 1 and 20 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. An article of headgear comprising:
a head-covering article;
a lens moveably attached to the head-covering article by a
frame; and
a seal attached to the lens, the seal comprising a first
polymeric material and a second polymeric material, the first
polymeric material having a greater tensile modulus than the
second material;
wherein the lens is moveable from a first, lowered position to a
second, raised position, and
when in the first, lowered position, the seal engages the head
covering article.
Rejections
Claims 1, 5—7, 11, and 20-22 are rejected under 35 U.S.C. § 102(b) as
anticipated by Marwitz (US 4,070,712, iss. Jan. 31, 1978).
Claims 2 and 4 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Marwitz and Matsumoto et al. (US 7,549,180 B2, iss. June 23, 2009)
(hereinafter, “Matsumoto”).
Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Marwitz and Finken et al. (US 2,903,700, iss. Sept. 15, 1959)
(hereinafter, “Finken”).
2
Appeal 2015-004791
Application 12/934,282
ANALYSIS
Independent claims 1 and 20 each recite “[a]n article of headgear” and
require a seal that comprises first and second polymeric materials, where
“the first polymeric material ha[s] a greater tensile modulus than the second
[polymeric] material.” Appeal Br., Claims App.
The Appellants argue that the Examiner’s finding that Marwitz’s filler
strip 16 and elastic mounting support 7b correspond with the claimed first
and second polymeric materials, respectively, lacks adequate support
because Marwitz fails to disclose filler strip 16 as having greater tensile
modulus than elastic mounting support 7b. See Appeal Br. 4—6; Reply
Br. 2-4. The Appellants’ argument is persuasive.
In response to the Appellants’ argument, the Examiner points to filler
strip 16 of Figure 6 and frame 110 of Figure 3 and finds that these structures
are made of the same material because, as shown, the hatching (i.e. shading
by lines) of each structure are the same. See Ans. 3. Thereafter, the
Examiner applies disclosure directed to the material of frame 110 to the
material of filler strip 16 and determines that filler strip 16 has a greater
tensile modulus than elastic mounting support 7b. Ans. 3; see Marwitz,
col. 2,1. 62 —col. 3,1. 5.
The Appellants correctly point out that filler strip 16 of Figure 6 is not
described as being made of the same material as frame 110 of Figure 3.2
Reply Br. 3. First, we note that although the hatching of filler strip 16 and
frame 110 are similar, it is unclear if they are the same. See id. Indeed, the
2 Figures 3 and 6 are cross-sectional views of different embodiments of
Marwitz’s protective helmet. See Marwitz, col. 2,11. 20—31.
3
Appeal 2015-004791
Application 12/934,282
hatching of filler strip 16 is shown as solid parallel lines broken only by the
darker outline of filler strip 16, whereas the hatching of frame 110 is shown
as a series of two solid and two broken parallel lines. See Marwitz, Figs. 3,
6. Second, for the purposes of this appeal only, even if the hatching can be
considered the same, the Appellants persuasively assert that the Examiner
fails to “provide[] any indication that Marwitz describes that shading in the
figures [] signify any specific material properties, or signify use of the same
material.” Reply Br. 3. Third, the Appellants also assert that “frame 110
and filler strip 16 do not appear to be described as [the same or] related
components.” See id. Indeed, frame 110 of the embodiment shown in
Figures 2 and 3 corresponds with frame 11 — rather than filler strip 16 — of
the embodiment(s) shown in Figures 1 and 4—7. See Marwitz, col. 3,11. lb-
17. As such, we agree with the Appellants that the hatchings of frame 110,
and the disclosure associated with frame 110, does not support the
Examiner’s finding that filler strip 16 has a greater tensile modulus than
elastic mounting support 7b. Appeal Br. 5.
Further, we note that the Examiner also cited to Marwitz’s disclosure
of filler strip 16 forcing legs 15 of seal 7b apart as evidence of filler strip 16
having a greater tensile modulus than elastic mounting support 7b. Final
Act. 2 (citing Marwitz, col. 3,11. 50-55). However, we agree with the
Appellants that this disclosure does not support the Examiner’s finding that
filler strip 16 has a greater tensile modulus than elastic mounting support 7b.
Appeal Br. 5.
Thus, we do not sustain the Examiner’s rejection of independent
claims 1 and 20, and dependent claims 5—7, 11,21, and 22, as anticipated by
Marwitz.
4
Appeal 2015-004791
Application 12/934,282
The remaining rejections based on Marwitz in combination with
Matsumoto or Finken rely on the same inadequately supported finding
discussed above. The inadequately supported finding is not otherwise cured
by the additional findings and reasoning of the remaining rejections. As
such, we do not sustain the rejections under 35 U.S.C. § 103(a) of: claims 2
and 4 as unpatentable over Marwitz and Matsumoto; and claims 9 and 10 as
unpatentable over Marwitz and Finken.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1, 2, 4—7, 9—
11, and 20-22.
REVERSED
5