Federal Circuit disposition — 20-2274

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: THOMAS VOTEL, ANDREW OLSON,
DOMINIQUE ARIS,
Appellants
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2020-2274
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 14/552,584.
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Decided: May 10, 2021
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RANDALL THOMAS S KAAR , Skaar Ulbrich Macari, P.A.,
Minnetonka, MN, for appellants.
M AUREEN D ONOVAN Q UELER, Office of the Solicitor,
United States Patent and Trademark Office, Alexandria,
VA, for appellee Andrew Hirshfeld. Also represented by
M AI-TRANG D UC D ANG , THOMAS W. K RAUSE , AMY J.
NELSON , F ARHEENA Y ASMEEN R ASHEED .
______________________
Before D YK , LINN , and O’M ALLEY, Circuit Judges.
PER C URIAM.
Patent applicants Thomas Votel, Andrew Olson, and
Dominique Aris (collectively “appellants”) appeal a
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IN RE: VOTEL 2
decision of the United States Patent Trial and Appeal
Board (“Board”) affirming the Examiner’s rejection of their
application under 35 U.S.C. § 103. We affirm.
BACKGROUND
On November 25, 2014, appellants filed U.S. Patent
Application No. 14/552,584 (the “’584 application”). The
’584 application is directed to protective eyewear with
vents cut into the temple pieces of the frame. The vents
are intended to both allow airflow and receive a “clip key,”
so that the wearer may attach accessories such as ear plugs
or a strap. This appeal centers on claim 1, the only inde-
pendent claim, which the Board found illustrative. Appel-
lants raise no separate arguments as to the other claims.
Claim 1 recites:
Protective eyewear comprising:
a frame;
the frame containing two protective lens [sic];
two rigid temple pieces;
each rigid temple piece being connected to an oppo-
site end of the frame by a hinge;
each rigid temple piece having an opening adjacent
the hinge;
each opening being partitioned into at least two
vents;
each of the at least two vents configured to allow
air flow therethrough;
each of the at least two vents configured to receive
a key;
a clip having a protruding key configured to be re-
ceived by any one of the at least two vents; and,
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IN RE: VOTEL 3
wherein when the clip key is engaged in any one of
the at least two vents, the remaining vents in the
rigid temple remain open to allow air flow
therethrough.
J.A. 2.
On January 11, 2018, the Examiner issued a final re-
jection of the ’584 application, finding all claims unpatent-
able as obvious. With respect to claim 1, the Examiner’s
analysis relied on two prior art references, both of which
are directed to eyewear: U.S. Patent No. 6,513,925
(“Bonacci”) and U.S. Patent No. 7,419,260 (“Wang”). The
Examiner concluded that Bonacci discloses each limitation
of claim 1 except for the clip key, which is taught by Wang,
and that it would have been obvious to combine the vents
of Bonacci with the clip structure of Wang. Similarly, in its
review, the Board found motivation to combine insofar as a
person of ordinary skill would have readily inferred that a
vent in Bonacci could be modified to accommodate the clip
key in Wang.
Appellants appealed to the Board. The Board affirmed
the rejections under § 103. Appellants appealed to this
court. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
D ISCUSSION
A patent may not be granted “if the differences between
the claimed invention and the prior art are such that the
claimed invention as a whole would have been obvious be-
fore the effective filing date of the claimed invention to a
person having ordinary skill in the art to which the claimed
invention pertains.” 35 U.S.C. § 103. We review the
Board’s legal determinations de novo and its underlying
factual findings for substantial evidence. In re Elsner, 381
F.3d 1125, 1127 (Fed. Cir. 2004).
“During examination, claim terms are given their
broadest reasonable interpretation consistent with the
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IN RE: VOTEL 4
specification as understood by those of ordinary skill in the
art.” In re Hodges, 882 F.3d 1107, 1115 (Fed. Cir. 2018).
Appellants first argue that the Board did not properly
construe the term “vents,” and that under the proper con-
struction, Bonacci does not disclose “vents” in the temple
pieces of the eyewear. Bonacci claims a design for floating
eyewear in which openings are cut into the temple pieces
of the frame; float pads made of “closed cell foam sponge”
are then fitted into the openings to allow the eyewear to
float. See J.A. 421, col. 7, ll. 11–12. Appellants argue that
the openings in Bonacci are not “vents” because they are
plugged with sponge material that does not allow airflow.
The Board, for its part, noted that the ’584 application
does not define or limit the term “vent,” and explained that
“it is common knowledge that vents often have filters lo-
cated therein or even covers/shutters.” J.A. 4. The Board
further determined that the foam float pads in Bonacci
would still likely allow some airflow when fitted into the
openings. And the Board observed that the “vents” in the
’584 application are themselves designed to have a clip key
inserted into them, thereby obstructing airflow. The Board
thus concluded that the openings in Bonacci constitute
“vents” within the meaning of claim 1. Appellants concede
that “there is no evidence of record” that “closed cell foam”
would not allow airflow and rely only on “the somewhat ob-
vious implication” of the term. Appellants’ Br. at 7. We see
no error in the Board’s determination.
As to Wang, Appellants concede that Wang discloses a
clip key structure for attaching an accessory to the frame
but argue that the clip key in Wang is not configured to be
inserted into a vent. The Board explained that the open-
ings of Bonacci may be of any number and shape and that
not all of the openings need be filled with buoyant material.
The Board concluded that a person of ordinary skill “would
have readily inferred that openings in Bonacci may also be
configured to receive a key of a clip for an eyewear
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IN RE: VOTEL 5
accessory, as Wang exemplifies.” J.A. 5–6. We see no error
in the Board’s determination that this combination is
within the scope of “the inferences and creative steps that
a person of ordinary skill in the art would employ.” See
KSR Int’l Co v. Teleflex Inc., 550 U.S. 398, 418 (2007). We
affirm the Board’s decision that claim 1 would have been
obvious over the combined teachings of Bonacci and Wang.
AFFIRMED
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