Ex Parte MountfortDownload PDFPatent Trial and Appeal BoardMay 14, 201812851022 (P.T.A.B. May. 14, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/851,022 08/05/2010 20988 7590 05/14/2018 NORTON ROSE FULBRIGHT CANADA LLP 1, Place Ville Marie SUITE 2500 MONTREAL, QC H3B IRI CANADA FIRST NAMED INVENTOR Anna-Maria MOUNTFORT 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. 55497871-lUS JR/as 1952 EXAMINER HADEN, SALLY CLINE ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 05/14/2018 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 ANNA-MARIA MOUNTFORT Appeal2017-008951 Application 12/851,022 1 Technology Center 3700 Before ANTON W. PETTING, MICHAEL C. ASTORINO, and CYNTHIA L. MURPHY, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the Examiner's decision rejecting claims 1-8, 10-12, 14--19, and 24--26. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We REVERSE. 1 According to the Appellant, "[t]he real party in interest in this matter is Anna-Maria MOUNTFORT." Br. 2. Appeal2017-008951 Application 12/851,022 STATEMENT OF THE CASE Claimed Subject Matter Claims 1 and 14 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A pair of mittens adapted to be worn by a child and adapted to protect at least the child's hands and wrists from adverse winter conditions, each mitten of the pair of mittens comprising: a hand-receiving mitten portion adapted to cover the child's hand, the mitten portion being composed of a first, water- resistant material; and an elastically extendable cuff connected to the mitten portion and being composed of a second, elastic material different from the first material of the first, water-resistant material, the elastically extendable cuff being fastened to an aft end of the mitten portion at a transversely extending seam interconnecting the mitten portion and the elastically extendable cuff, the elastically extendable cuff having a circumferentially uninterrupted tubular body and a double welt disposed at an aft end of the elastically extendable cuff, the double welt circumscribing an opening at the aft end of the elastically extendable cuff through which the child's hand is adapted to be received, the double welt having an outer circumferential surface facing radially outwardly and an inner circumferential surface facing radially inwardly, the elastically extendable cuff is both longitudinally and circumferentially stretchable from an un- stretched configuration to a stretched configuration. Rejections Claims 1-8, 10-12, and 25 stand rejected under (pre-AIA) 35 U.S.C. § I03(a) as unpatentable over Holmes (US 2009/0100561 Al, pub. Apr. 23, 2009), Kurtz (US 2010/0186139 Al, pub. July 29, 2010), and Coble (US 4,843,653, iss. July 4, 1989). Claims 14--19, 24, and 26 stand rejected under (pre-AIA) 35 U.S.C. § I03(a) as unpatentable over Holmes and Coble. 2 Appeal2017-008951 Application 12/851,022 ANALYSIS Independent Claim 1 and Dependent Claims 2---8, 10-12, and 25 The Examiner finds that the connection between Holmes' hand/palm covering 3 5 and elongated sleeve 3 3 corresponds to claim 1 's requirement that a seam interconnects a mitten portion and a cuff portion. Final Act. 2-3 ( citing Holmes ,r 34, Fig. 5). Additionally, the Examiner determines that Holmes' paragraph 34 use of the term "cut and sew" is "an obvious disclosure of a seam." Final Act. 3. The Appellant argues that the Examiner's finding is inadequately supported because Holmes' disclosure, particularly at paragraph 34, does not necessarily disclose a seam between Holmes' hand/palm covering 35 and elongated sleeve 33. See Br. 9, 10 (citing Declaration of David Rushton under 37 C.F.R. § 1.132 ,r 29 ("Rushton Deel.")). The Appellant points out that the Holmes reference "does not use the words 'seam', 'joint', or their equivalents." See Br. 9; Rushton Deel. ,r 30. And, although Holmes' paragraph 34 uses the term "sew," this term may include seamless connections between adjacent segments. See Br. 10 (citing Kurtz ,r,r 7, 9, 43). In response, the Examiner determines that "Holmes disclosure of 'sew' with respect to the segments of the mitten is a sufficient disclosure of a seam as defined by Appellant to include 'various means known in the art, for example, knitting, sewing, etc."' Ans. 3 ( quoting Spec. ,r 15). Here, the Examiner relies on the Appellant's Specification at paragraph 15 as evidence that a seam is created by sewing. However, the Appellant's Specification does not provide clarity as to the meaning of "sew" in Holmes paragraph 34. 3 Appeal2017-008951 Application 12/851,022 Although we appreciate that sewing two adjacent segments together may include a seam, such is not always the case. As explained by the Appellant - and not contradicted by the Examiner - sewing two adjacent segments together may include a seamless connection. As such, we determine that the Examiner does not adequately support - with evidence or technical reasoning - how Holmes, particularly paragraph 34, expressly, implicitly, or inherently discloses a seam between hand/palm covering 35 and elongated sleeve 33. See also Manual of Patent Examining Procedure ("MPEP") § 2112, Requirements of Rejection Based on Inherency; Burden of Proof (9th ed., rev. 8, Jan. 2018) ("The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. [§§] 102 or 103."). Additionally, the Examiner does not rely on the teachings of Kurtz or Coble to disclose a seam between adjacent segments. Thus, we do not sustain the Examiner's rejection of independent claim 1, and its depending claims, as unpatentable over Holmes, Kurtz, and Coble. Independent Claim 14 and Dependent Claims 15-19, 24, and 26 Claim 14, similar to claim 1, requires a seam that interconnects a hand or foot receiving portion and a cuff portion. See Br. 15-16 (Claims App.). The Examiner's findings for claim 14 are similar to claim 1. See Final Act. 12-13. As such, the Examiner's rejection relies on an inadequately supported finding that Holmes discloses a seam between hand/palm covering 35 and elongated sleeve 33. Additionally, the Examiner does not rely on the teachings of Coble to disclose a seam between adjacent segments. Thus, we 4 Appeal2017-008951 Application 12/851,022 do not sustain the Examiner's rejection of independent claim 14, and its depending claims, as unpatentable over Holmes and Coble. DECISION We REVERSE the Examiner's decision rejecting claims 1-8, 10-12, 14--19, and 24--26. REVERSED 5 Copy with citationCopy as parenthetical citation