Ex Parte Holley

Patent Trial and Appeal BoardApr 20, 2016

12589142 (P.T.A.B. Apr. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/589, 142 10/19/2009 76773 7590 04/21/2016 JT HOLLIN, ATTORNEY AT LAW, PC 110 HABERSHAM DRIVE SUITE 144 FAYETTEVILLE, GA 30214 FIRST NAMED INVENTOR Jimmy Don Holley 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 ATTORNEY DOCKET NO. CONFIRMATION NO. HOLLEY_0809 7965 EXAMINER PAUL, DISLER ART UNIT PAPER NUMBER 2655 MAILDATE DELIVERY MODE 04/21/2016 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 JIMMY DON HOLLEY Appeal2014-005581 Application 12/589,142 Technology Center 2600 Before ROBERT E. NAPPI, NORMAN H. BEAMER, and JOHN D. HAMANN, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) from the Final Rejection of claims 1 through 6. We affirm. INVENTION Appellant's invention is directed to headgear with audio recording and playback capability that can capture the sound of the voice of the wearer or other sounds in the vicinity of the headgear. Abstract. Appeal2014-005581 Application 12/589,142 Claim 1 is illustrative of the invention and is reproduced below: 1. An item of apparel, being a hat or headgear, having audio recording, audio track storage, and audio playback components, further compnsmg; a crown; a brim grid having an upper and a lower surface, said brim grid attached to said crown, wherein said brim grid internally houses a) a multi-purpose recording module b) microphone, c) speaker, d) lithium button cell batteries, e) wire leads, f) push- button recording switch, g) push-button playback switch, h) erase button, i) recording microchip, j) pre-recorded material microchip; an upper brim cover attached to the upper portion of said brim grid; and a lower brim cover removably attached to lower portion of said brim grid, wherein said device may be programmed and operated to capture the sound of the voice of the wearer of the device or other sounds proximate the wearer of the device, record and store said sound or sounds, and audibly transmit said recorded sound or sounds so as to be audible to the wearer or other persons nearby. REJECTION AT ISSUE The Examiner has rejected claims 1through6 under 35 U.S.C. Â§ 103 over Peng (US 5,510,961; Apr. 23, 1996), Lopez (US 2002/0191801 Al; Dec. 19, 2002), and Seade (US 2008/0304682 Al; Dec. 11, 2008). Final Office Action 6-18. 1 ANALYSIS We have reviewed the Examiner's rejections in light of Appellant's contentions that the Examiner has erred. Further, we have reviewed the 1 Throughout this opinion we refer to the Appeal Brief filed November 30, 2012; Final Office Action mailed May 4, 2012; and the Examiner's Answer mailed on February 28, 2013. 2 Appeal2014-005581 Application 12/589,142 Examiner's response to Appellant's arguments. We disagree with Appellant's arguments and we incorporate herein and adopt as our own: the findings and reasons set forth by the Examiner in the Final Office Action and the reasons and rebuttals set forth in the Examiner's Answer (Ans. 2-7). We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. We, however, highlight and address specific findings and arguments below for emphasis. Initially, we note Appellant's arguments generally are not directed to a single claim but rather critique the Examiner's rejection. Thus, we select claim 1 to focus and highlight Appellant's arguments so that we can address specific findings and arguments more clearly. Appellant's arguments on pages 11 through 12 of the Answer address the Examiner's findings that Lopez teaches the pushbutton recording switch, pushbutton playback switch, and erase switch. Specifically, Appellant's provide an analysis that the operations of the buttons of Lopez creates a more complicated operation as compared to the operations of Appellant's invention. See Answer 11-12. We are not persuaded by these arguments of error in the Examiner's rejection. While Appellant's Specification may describe a simpler operation than taught by Lopez, as identified by the Examiner, on pages 2 and 3 of the Answer, these operations are not claimed and as such Appellant's argument is not commensurate with the scope of the claim. Appellant argues the Examiner misconstrued the law as the size, dimension, and weight are important considerations, not design preferences as the device must fit with the brim of headgear. Answer 12-13. We are similarly not persuaded of error by this argument. The Examiner has 3 Appeal2014-005581 Application 12/589,142 presented evidence, Ping and Seade, which shows it was known to incorporate audio electronic devices within the brim of a hat. Thus, the Examiner has provided ample evidence to show that it was known and the skilled artisan would incorporate audio electronics into the brim of a hat. Further, Appellant has not shown that making the electronic circuits of Lopez to fit within the brim of a hat is "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Appellant argues Peng's sound pickup is not a recording module with a recording microchip, as there is no possibility of long term retention of recorded sounds or storage of audio tracks. App. Br 12-14. The Examiner provided a comprehensive response to these arguments. Answer 4--5 (citing Peng Fig. 3 and col. 2, 11. 1-25). We concur with the Examiner's findings. Additionally, we note that claim 1 does not recite a limitation directed to long term retention of sounds and as such Appellant's argument is not commensurate with the scope of claim 1. Appellant argues that Seade does not teach a form fitting brim grid. Br. 15. In response, the Examiner identifies that Peng, not Seade, was cited as teaching the claim limitation directed to the brim grid. Ans. 5. Thus, Appellant's argument is not persuasive of error in the Examiner's rejection as it does not address the Examiner's findings directed to this limitation. Further, we note the claim merely recites the brim grid as having two surfaces (with covers), attached to the crown of the hat and housing 4 Appeal2014-005581 Application 12/589,142 components, as such the arguments directed to "form fitting" are not commensurate with the scope of the claim. 2 Finally, Appellant argues none of the references disclose a multipurpose recording module, microchip, or a pre-recoded microchip. Br. 15. Specifically, Appellant asserts: there can be no suggestion or motivation derived from the Seade device, for any combination of the Seade device with any of the other references set forth. This is criticality true, since the Applicant's device relies strictly, in its entirety, on pre-recorded music material or device-actuated recordations of user-selected audio or music sounds, for its means and nodes of sound playback. Br. 15. This argument has not persuaded us of error in the Examiner's rejection. As discussed above, we are not persuaded by Appellant's argument that the combination of the references does not teach the recording module or microchip. Further, the Examiner has taken Official Notice, which has not been challenged, that use of a microchip with pre-recorded material is well known in the art. Final Office Action 6, 9. 3 Further, the Examiner finds that Seade was relied upon to teach the brim covers the brim grid and electrical wiring between components in a hat. Final Office Action 10 and Answer 6. Based upon these teachings and the teachings of Peng and 2 While the Examiner did not rely upon Seade to teach the claimed brim grid, it appears from Seade Fig 8 and accompanying discussion item 17 a meet Appellant's claimed brim grid as it has two covers, is attached to the crown and houses an audio electrical component, speaker 14. 3 This noticed finding appears to be supported by Lopez's discussion of pre- recorded questions, paragraph 19, and Seade' s discussion of reproducing music from MP3 players. 5 Appeal2014-005581 Application 12/589,142 Lopez, the Examiner finds the combination is nothing more than the combination of known elements to produce a predictable result. Final Office Action 14. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). As Appellant's arguments have not persuaded us of error in the Examiner's rejection of claim 1 and these arguments also relate to the other claims on appeal, we sustain the Examiner's rejection of claims 1 through 6 under 35 U.S.C. Â§ 103. DECISION We affirm the Examiner's rejection of claims 1 through 6 under 35 U.S.C. Â§ 103. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 6