Halloween Prior Art Appeal at PTAB

In a recent PTAB decision this year (sn 13/815,305), an applicant for a solar hear film was faced with prior art and enablement rejections. The invention related to a plurality of black strips with white material. One of the pieces of prior art was a Halloween "how to" costume on the internet found via the wayback machine (https://web.archive.org/web/20100610082643/http://www.mahalo.com/how-to-make-a-referee-halloween-costume).

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The Examiner was asserting that the referee t-shirt rendered the limitations relating to black material be applied to both sides of a white material obvious. The PTAB was unconvinced, explaining that the Examiner had not explained how the costume would show applying black strips to both the inside and outside of the shirt. From the opinion:


While the PTAB's decision is correct here, the decision could have gone the other way had the Examiner spent just a little effort in explaining how the claims could be interpreted to cover a left and right side of the shirt. The claims required the sides to be opposite of one another, but left and rights sides could meet that requirement. 

Moving on, the Examiner had also rejected the claims for lack of enablement. The issue, according to the Examiner, was that the claims required converting solar rays into flowing heat, and that the specification did not teach one skilled in the art how to achieve this. The PTAB was unconvinced, noting that the Examiner did not explain how a lack of understanding of how heat was flowing would place undue effort on forming the claimed strips facing one another on both sides of a white sheet of material. 

In the end, however, the Examiner had a rejection that was sustained by the PTAB and so the case was affirmed.