Ex Parte Sumpter et al

Patent Trial and Appeal BoardMar 16, 2018

13961295 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/961,295 08/07/2013 26646 7590 03/20/2018 ANDREWS KURTH KENYON LLP ONE BROADWAY NEW YORK, NY 10004 FIRST NAMED INVENTOR Euphemia SUMPTER 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. 15959/1 5802 EXAMINER STEITZ, RACHEL RUNNING ART UNIT PAPER NUMBER 3776 NOTIFICATION DATE DELIVERY MODE 03/20/2018 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): uspto@kenyon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EUPHEMIA SUMPTER and ANNAGJID TAYLOR 1 Appeal2017-002938 Application 13/961,295 Technology Center 3700 Before JOHN G. NEW, TA WEN CHANG, and TIMOTHY G. MAJORS, Administrative Patent Judges. CHANG, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) involving claims to a ponytail extension device, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. STATEMENT OF THE CASE The Specification states that "[p ]onytail extension devices are generally applied to natural hair, in order to provide additional length, volume, color highlights, and other aesthetic effects." (Spec. i-f 2.) The Specification further states that 1 Appellants did not identify a Real Party in Interest in the briefs. Appeal2017-002938 Application 13/961,295 a need has been recognized for a ponytail extension device and method that is easy to apply, adjust, remove, reapply, and does not require specialized tools or the assistance of a hair stylist professional, and does not cause damage to the natural hair, and does not fall out unexpectedly. In addition, a need has been recognized for a ponytail extension device which is obscured by the natural hair so that it is invisible to an observer. (Id. ii 5.) According to the Specification, [i]n a non-limiting embodiment of the present invention, a ponytail extension device is provided, comprising a material layer having a center opening; and a plurality of hair strands attached to a band, wherein the band is attached to the material layer to spiral out, around the center opening, from an interior point of attachment of the band to the material layer to an exterior point of attachment of the band to the material layer, so that the plurality of hair strands extend away from the material layer in concentrically arranged layers. (Id. ii 6.) For purposes of illustrating the relationship between the material layer and band in the above-described embodiment, Figure 3 of the Specification is reproduced below: FIG. 3 2 Appeal2017-002938 Application 13/961,295 (Id. at Fig. 3.) The Specification explains that Figure 3 "illustrates [an] embodiment of [an] exemplary spiraling band [30] attached to [a] material layer [20] ... , shown with a center opening [22], in accordance with the ... invention." (Id. i-fi-127, 36.) Claims 1-11 and 19-21 are on appeal. 2 Claim 1 is illustrative and reproduced below with key limitations emphasized: 1. A ponytail extension device, comprising: a material layer forming a flat surface and having a center opening; and a plurality of hair strands attached to a band, wherein the band is attached to the material layer in a single plane to spiral out in a flat spiral shape, around the center opening, from an interior point of attachment of the band to the material layer to an exterior point of attachment of the band to the material layer, so that the plurality of hair strands extend away from the material layer in concentrically arranged layers. (Appeal Br. Claims App. (emphasis added).) The Examiner rejects claims 1, 2, 6-11, and 19-21under35 U.S.C. Â§ 103 as being unpatentable over Desell3 and Park. 4 (Ans. 2.) The Examiner rejects claims 3-5 under 35 U.S.C. Â§ 103 as being unpatentable over Desell, Park, and Park '368. 5 (Ans. 3.) 2 Claims 12-18 have been withdrawn from consideration. (Appeal Br. 1.) 3 Desell, U.S. Patent No. 3,750,683, issued Aug. 7, 1973. 4 Park, US 2009/0065022 Al, published Mar. 12, 2009. 5 Park, US 2011/0036368 Al, published Feb. 17, 2011. 3 Appeal2017-002938 Application 13/961,295 Issue DISCUSSION The Examiner rejects claims 1, 2, 6-11, and 19--21 as obvious over Desell and Park, and rejects claims 3-5 as obvious over Desell, Park, and Park '368. The same issues are dispositive for these rejections; we thus discuss them together. The Examiner finds that Desell teaches a ponytail extension device meeting most of the limitations of claim 1, except that Desell does not disclose "the plurality of hair strands attached to a band and the band attached to the material in a spiral shape around the center opening." (Ans. 2.) The Examiner finds, however, that Park suggests this limitation. (Id. at 2-3.) The Examiner concludes that it would have been obvious for a skilled artisan to "have the hair of Desell be attached to the material with a band in a spiral shape as taught by Park to help simulate the whirl of hair on a human head." (Id. at 3.) Appellants contend that the cited prior art combination does not suggest a material layer forming a flat surface or a band attaching to the material layer in a single plane to spiral out in a flat spiral shape, as required by claim 1. (Appeal Br. 2.) The issue with respect to this rejection is whether a preponderance of evidence supports the Examiner's finding that the cited prior art combination suggests "a material layer.forming a flat surface" and "[a] band . .. attached to the material layer in a single plane to spiral out in a flat spiral shape." (Id.) 4 Appeal2017-002938 Application 13/961,295 Findings of Fact 1. Desell teaches [a] crowned annular-shaped hairpiece having an inner diameter dimensioned to fit around and expose the area in which hair growth radiates from the center of the crown of the human scalp, an outer diameter of skull cap dimension, and a covering of hair or other stranded material, arranged to radiate away from the center of the annulus .... (De sell Abstract.) 2. Desell teaches that, in a representative embodiment, the crowned annular-shaped hairpiece is made of flexible sheet material such as fabric with a plurality of strands of material, such as natural or artificial hair, affixed around the inner periphery of the annulus, and a plurality of said strands of material covering the outer surface of the annulus and radially extending to a concentric circular fringe beyond the outer diameter of the annulus. (Id. at 1 :41--49; see also id. at 2:20-22 (describing "ring-shaped coif ... of fabric or other thin, pliable, preferably ventilative material, bearing hair").) 3. Figure 3 of Desell is excerpted below: FIG.3 Figure 3 of Desell depicts "a section in elevation of [an] embodiment of the invention," comprising "a ring-shaped coif 12 of fabric or other thin, pliable, preferably ventilative material, bearing hair 14 sewn, cemented or otherwise suitably attached to it." (Id. at 1:20-23, 2:67---68; see also id. at Fig. 8, 3: 14-- 3 8 (depicting a further embodiment of the invention and stating that, "[ s ]ince 5 Appeal2017-002938 Application 13/961,295 there is no base in the [central] area [of the hairpiece], ventilation is excellent and even more importantly, natural hair ... can easily and gently be led up through the piece").) 4. Figure 7 of Desell is excerpted below: 0 Figure 7 of Desell depicts a back view of its invention when used at a wearer's nape, wherein "[t]he piece 10 is secured at the wearer's nape around a loose pony-tail arrangement of natural hair N." (Id. at 2:8-9, 3:6- 8.) Desell explains that"[ c ]risp, well supported and directed hair or hair like material is particularly well adapted for securance around natural hair in this manner. For this reason the individual hairs are best affixed in the radial direction." (Id. at 3:7-11.) 5. Park teaches that objectives of its invention are to "provide a decorative hair assembly system" that is "less costly and less labor intensive" and "more natural looking and secure on the user's head." (Park i-fi-16-7; see also id. i-f 15.) 6. Park teaches that, in order to achieve the objectives of its invention, its decorative hair system comprises a base net and base decorative hair that is attached to the base net where the base net comprises a base mesh net that is adapted to 6 Appeal2017-002938 Application 13/961,295 be fixed to the hair of the user. The base decorative hair comprises a plurality of hair strands and a hair-fixing strip to which ends of the hair strands are attached. A predetermined length of the hair-fixing strip is attached to the base mesh net by sewing the hair-fixing strip to the base mesh net. The hair-fixing strip is sewn onto the base mesh net in a spiral pattern. (Id. i-f 8.) Park's hair system further comprises a top hair piece adapted to be attached to the top portion of the base net. (Id. at i-f 10.) Park teaches that [ t ]he top hair piece, which is adapted to simulate the top portion of a human head, comprises a top hair net and top decorative hair attached to the top hair net. The top decorative hair comprises a plurality of hair strands and a hair-fixing strip to which ends of the hair strands are attached. The hair-fixing strip is sewn onto the top hair net. In a preferred embodiment of the present invention, the top hair piece is adapted to simulate the whirl of hair on a human head. The main motivation behind making a top decorative hair and a base decorative hair is that it is difficult and impractical to affix a single hair-fixing strip to begin from the elastic strip and end all the way up to the apex of the base mesh net. In addition, it is easier to make the top whirl look more natural and realistic using a separate top hair piece. In top hair piece comprises a hair-fixing strip sewn onto the top hair net in a spiral shape. (Id. i-fi-111-13; see also id. i-f 40 (stating that "[t]he top hair piece is adapted to simulate the whirl of hair on a human head" and that "the hair-fixing strip 20 is sewn to the top hair net 30 in a spiral shape").) 7 Appeal2017-002938 Application 13/961,295 7. Figures 7 and 8 of Park are excerpted below: Figures 7 and 8 of Park depict, respectively, a plane and elevation view of the top hair piece. (Id. i-fi-124--25.) 8. Figures 9 and 10 of Park are excerpted below: ~~ IG. iO rÂ·: H-i''' . .+-.i,Â·Â·:--Â·i . : +'>\ .t.-j-l Â· .+' . Figures 9 and 10 depict, respectively, an elevation and plane view of the base hair piece. (Id. i-fi-126-27 .) Analysis With respect to the obviousness rejection over Desell and Park, Appellants do not separately argue the claims. We therefore limit our analysis to claim 1. 37 C.F.R. Â§ 41.37(c)(l)(iv). We agree with the Examiner that the cited combination renders obvious claim 1. Desell discloses a ring-shaped coif of fabric or other thin, 8 Appeal2017-002938 Application 13/961,295 pliable material (i.e., "a material layer forming a flat surface and having a center opening") that may be used as a ponytail extension device. (FF3, FF4.) Desell teaches that the ring-shaped coif bears hair "sewn, cemented or otherwise suitably attached to it." (FF3.) While Desell does not explicitly teach attaching hair to the ring- shaped coif by attaching hair strands to a band and then attaching the band to the material layer, Park teaches this limitation. (FF6 (attaching hair to a hair-fixing strip that is then attached to the material layer (i.e., the mesh net of a base net or top hair piece).) We find that it would be obvious for a skilled artisan to attach hair strands to a band, as taught by Park, before attaching the band to Desell' s ring-shaped coif, since Desell suggests hair may be attached to the coif in any suitable manner. Likewise, while Desell does not teach attaching hair to the material layer in a spiral pattern, Park teaches attaching the hair-fixing strip to the mesh net/material layer in a spiral pattern. (Id.) Both Desell and Park also teach attaching hair strands in such a way that the strands "extend away from the material layer in concentrically arranged layers." (FF2, FF3, FF7, FF8.) We agree with the Examiner that it would have been obvious for a skilled artisan to attach the hair-fixing strip taught by Park to Desell's ring-shaped coif in a spiral pattern in order to better "simulate the whirl of hair on a human head." (Ans. 3.) Moreover, the combination of familiar elements according to known methods, such as the combination of Desell's ring- shaped coif and Park's spiral arrangement of the hair-fixing strip, 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). 9 Appeal2017-002938 Application 13/961,295 Appellants argue that Park's base mesh net forms "a curved or bent surface" rather than a flat surface as required by claim 1. (Appeal Br. 3.) We are not persuaded. As the Examiner explained, Desell teaches "a material layer (12) forming a flat surface having a center opening forming a single plane." (Ans. 3; FF1-FF3 (describing annular-shaped hairpiece).) "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. . . . [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants also argue that the hair-fixing strip 20 of Park is attached to the base mesh net in at least two planes (as it travels from bottom to top) to spiral in a helical spiral shape. In contrast, claim 1 of the present invention requires that the 'band is attached to the material layer in a single plane to spiral out in a flat spiral shape' (i.e., not a helical spiral shape)." (Appeal Br. 3.) Appellants further argue that, if Park's base mesh net "were to be flattened, the flattened base mesh net 16 would result in overlaps of the material layer (i.e. not a single plane) and/or base decorative hair 14 not extend[ing] awayfrom the material layer in concentrically arranged layers (as required by claim 1)." (Id.) We remain unpersuaded. As the Examiner explained and as discussed above, the rejection is based on the finding that a skilled artisan would find it obvious to "create the spiral shape [of the hair-fixing strip] as taught by Park onto the flat, single plane material layer of Desell" (Ans. 4); thus, Appellants' attack on Park individually does not establish non-obviousness. Merck, 800 F.2d at 1097. To the extent Appellants' argument is that the 10 Appeal2017-002938 Application 13/961,295 exact helical spiral shape described in Park cannot be flattened in the manner claimed, we also note that "[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, we find that the combined teachings of Desell (teaching a material layer forming a flat surface) and Park (teaching hair-fixing strip attached to a material in a spiral shape) would suggest to those of ordinary skill in the art the attachment of a hair-fixing strip to a flat material layer in a flat spiral shape, as recited in claim 1. In the Reply Brief, Appellants further argue that a skilled artisan would not "add any additional hair strands to the coif 12 of Desell" because "[a ]ddition of further hair strands beyond the presently shown construction of the hairpiece of Desell would further cover the surface of the coif 12, thereby reducing the effectiveness of this ventilation." (Reply Br. 2.) We are not persuaded. As discussed above, obviousness does not require the "bodily incorporat[ion]" (i.e., addition) of Park's hair-fixing strip onto Desell's unmodified coif. In re Keller, 642 F.2d at 425. Rather, the combination of Desell and Park suggests a modification of how hair is arranged on Desell's ring-shaped coif (e.g., in a spiral versus in concentric circles) without necessarily adding more hair strands. Appellants also argue in the Reply Brief that "the Examiner failed to identify any disclosure in either Park or Desell describing a flat spiral shape for attachment of the band to the material layer." (Reply Br. 2.) We are not persuaded. Obviousness does not require that "the claimed invention ... be 11 Appeal2017-002938 Application 13/961,295 expressly suggested in any one or all of the references." In re Keller, 642 F.2d at 425. For the reasons already discussed above, we find that the combination of Desell and Park would have suggested a flat spiral shape for attachment of the band to the material layer, which is all that is required for obviousness. Id. (explaining that the test for obviousness is "what the combined teachings of the references would have suggested to those of ordinary skill in the art"). Finally, Appellants argue that a skilled artisan "would not have been motivated to make a flat spiral shape of the band from the helical spiral hair fixing strip of Park because if Desell and Park were to be combined, one would not use a band to connect hair stands to the material layer." (Reply Br. 2.) Appellants argue that [i]t would have been counter intuitive, if not impossible, for one of ordinary skill in the art to use the hair fixing element 20 of Park to connect any additional hair strands to the coif when Desell connects the hair strands directly to the coif 12. Therefore, one of ordinary skill in the art had no reason to make a flat spiral shape of the band shown in Park. (Appeal Br. 2-3.) We are not persuaded. The rejection is not based on the addition of a band attaching a plurality of hair strands to Desell's coif having hair strands already connected directly to the coif. Rather, the rejection is based on the finding that it would have been obvious to a skilled artisan to modify Desell's coif so that strands of hair is attached to a hair-fixing strip before being attached to the coif, rather than attached directly to the coif. As discussed above, Desell suggests that hair strands may be attached to the ring-shaped coif by any suitable means, and Park suggests that using the 12 Appeal2017-002938 Application 13/961,295 claimed band (i.e., the hair-fixing strip) is one such suitable means. (FF3, FF6.) Accordingly, we affirm the Examiner's rejection of claim 1 as obvious over Desell and Park. Claims 2, 6-11, and 19--21, which were not separately argued, fall with claim 1. 37 C.F.R. Â§ 41.37(c)(l)(iv). Finally, Appellants made no additional arguments with respect to the rejection of claims 3-5 over Desell, Park, and Park '368. We thus affirm this rejection for the same reasons discussed above. Ex parte Borden, 2010 WL 191083 at *2 (BP AI 2010) (informative) ("Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived."). SUMMARY For the reasons above, we affirm the Examiner's decision rejecting claims 1-11 and 19--21. TIME PERIOD FOR RESPONSE 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). AFFIRMED 13