Ex Parte Brace et alDownload PDFPatent Trial and Appeal BoardMay 15, 201712934282 (P.T.A.B. May. 15, 2017) Copy Citation 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 Copy with citationCopy as parenthetical citation