Ex Parte Grilliot et al

Patent Trial and Appeal BoardMay 31, 2013

11375735 (P.T.A.B. May. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WILLIAM L. GRILLIOT, MARY I. GRILLIOT, and THOMAS STACHLER ____________ Appeal 2011-000228 Application 11/375,735 Technology Center 3600 ____________ Before LINDA E. HORNER, STEFAN STAICOVICI, and SCOTT A. DANIELS, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON REHEARING STATEMENT OF THE CASE William L. Grilliot et al. (Appellants) request that we reconsider our decision of February 25, 2013 (“Decision”), in which we affirmed1 the Examiner’s decision rejecting claims 1-8 under 35 U.S.C. § 103(a) as being unpatentable over the helmet of Appellants’ prior art Figures 1 and 2. 1 We designated our affirmance as a new ground of rejection pursuant to 37 C.F.R. § 41.50. Appeal 2011-000228 Application 11/375,735 2 Appellants argue that the Decision hinges upon an erroneous factual determination that one of ordinary skill in the art had a finite number of predictable solutions to the problem of the badge being bent backwardly due to foreign objects entering the recess. Req. for Reh’g 1. We agree with Appellants that the Record on appeal lacked adequate evidentiary support for the finding of a finite number of predictable solutions. As such, we grant Appellants’ request for rehearing to reconsider our Decision. We vacate the original Decision in its entirety and substitute the following decision in its place. As a result of this rehearing, we reverse the Examiner’s rejection of claims 1-8 under 35 U.S.C. § 103(a). The decision that follows replaces the Board’s Decision of February 25, 2013. THE INVENTION Appellants’ claimed invention “pertains to a protective helmet of a type worn by a firefighter or by an emergency worker, as equipped with a mounting device, by which a badge is mounted to the protective helmet.” Spec. 1, ll. 4-6. Claims 1 and 5 are independent. Claim 5, reproduced below, is illustrative of the subject matter on appeal. 5. A protective helmet of a type worn by a firefighter or by an emergency worker, wherein the protective helmet is equipped with a mounting device, by which a badge having a front face bearing indicia is mounted to the protective helmet, wherein the mounting device comprises a fitment, which is mounted to the protective helmet and which has a recess opening downwardly and receiving an upper portion of the badge, the upper portion comprising an upper end of the badge, and wherein the mounting device comprises a blade, which is mounted to the protective helmet and which has a portion extending upwardly along a back face of the badge and is received in the recess. Appeal 2011-000228 Application 11/375,735 3 Independent claim 1 is directed to a protective helmet substantially similar to claim 5 except that claim 1 also calls for the portion of blade extending upwardly along a back face of the badge to extend “as far as the upper edge of the badge, or farther.” PRINCIPLES OF LAW “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). ISSUE The Examiner found that prior art Figures 1 and 2 teach a protective helmet as called for in independent claims 1 and 5 except for the blade extending into the recess or as far as the upper edge of the badge, or farther. Ans. 4-6. The Examiner determined that it would have been obvious to extend the front portion of the prior art blade at least the entire length of the badge or to the upper edge of the badge and into the recess “to provide more support for the badge by supporting a larger surface area of the back surface or the entire length of the back surface of the badge.” Ans. 5-6. Appellants argue that the rejection should be reversed because it is “based upon a conclusory and unsupported assertion” that it would have been obvious to extend the front portion of the blade as called for in claims 1 and 5. App. Br. 5. Appellants further argue that the proposed modification to the blade of the prior art is more than an obvious change in size. Reply Br. 3-4. Appeal 2011-000228 Application 11/375,735 4 The issue presented by this appeal is whether the Examiner adequately articulated reasoning based on rational underpinning as to why one of ordinary skill in the art would have been led to extend the prior art blade upwardly along the back face of the badge such that the blade extends into the recess or as far as the upper edge of the badge, or farther as called for in the claims. ANALYSIS We are persuaded by Appellants’ argument that the Examiner’s articulation of a reason to modify the prior art blade, i.e., to provide more support for the badge, is insufficient because the Examiner pointed to “no evidence of record that anyone skilled in the art at the time of the invention believed that ‘more support for the badge’ was a desirable or needed improvement to the prior art figures 1 and 2.” App. Br. 5. The Examiner’s response (Ans. 8) that the proposed modification is “a mere change in size or length of the blade” and that such a modification would have been obvious “as a matter of design and to provide a means to more securely retain the badge on the blade” is equally unavailing. The Examiner relies on In re Rose, 220 F.2d 459 (CCPA 1955) for the proposition that “[a] change in size is generally recognized as being within the level of ordinary skill in the art.” Ans. 8. The Examiner’s reliance on In re Rose is misplaced. In the present case, the Examiner proposes to change one component of the helmet (the blade) but not others. In Rose, the appellant argued that the claimed “lumber package” was large and required a lift truck for handling, whereas the prior art packages (a package of relatively small pieces of lumber and a package of window screen frames) could be lifted by hand. Rose, 220 F.2d at 463. Appeal 2011-000228 Application 11/375,735 5 The court held that “this limitation [(i.e., size and weight of the package)] is [not] patentably significant since it at most relates to the size of the article under consideration which is not ordinarily a matter of invention.” Id. (citation omitted). The court in Rose did not address a modification in which the size of a particular component of the article is modified without a respective size change in the remaining components. The Examiner’s proposed modification in the present appeal is more than simply a change in size of the article under consideration (i.e., the helmet). CONCLUSION The Examiner failed to adequately articulate reasoning based on rational underpinning as to why one of ordinary skill in the art would have been led to extend the prior art blade upwardly along the back face of the badge such that the blade extends into the recess or as far as the upper edge of the badge, or farther as called for in the claims. DECISION We GRANT the Request for Rehearing and REVERSE the decision of the Examiner to reject claims 1-8. GRANTED; REVERSED msc