Ex Parte Tulloch

Patent Trial and Appeal Board

Oct 19, 2018

13374127 (P.T.A.B. Oct. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/374, 127 12/13/2011 Kabede B. Tulloch
28230 7590 10/19/2018
H. JAY SPIEGEL- H. JAY SPIEGEL & ASSOCIATES
P.O. BOX 11
MOUNT VERNON, VA 22121
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.
KABEDE-1 1882
EXAMINER
QUINN, RICHALE LEE
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
10/19/2018 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 KABEDE B. TULLOCH
Appeal2017-001364
Application 13/374,127 1
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM V. SAINDON, and
BRANDON J. WARNER, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Kabede B. Tulloch ("Appellant") appeals under 35 U.S.C. § 134(a) from the
Examiner's decision in the Non-Final Office Action (dated Sept. 28, 2015,
hereinafter "Non-Final Act.") rejecting claims 1-6, 8-12, 14, and 15. 2 Appellant's
representative presented oral argument on September 20, 2018. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
1 According to Appellant's Appeal Brief (filed Feb. 29, 2016 hereinafter "Br."),
the inventor, Kabede B. Tulloch, is the real party in interest. Br. 1.
2 Claims 7, 13, and 16-20 are canceled. Appellant's Amendment 3 (filed Apr. 4,
2014).
Appeal2017-001364
Application 13/374, 127
We AFFIRM.
SUMMARY OF DECISION
INVENTION
Appellant's invention is directed to "finger jackets for ... human fingers."
Spec., para. 1.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A set of finger jackets comprising:
a) five separate finger jackets, unconnected with one another,
each separately sized to cover and configured for covering one of a
user's thumb and forefinger, middle finger, ring finger and pinkie
finger;
b) each finger jacket including a palmar facing portion and a
back portion joined adjacently to said palmar facing portion at
fourchettes on each side thereof;
c) each back portion being made of a porous stretchable,
breathable elastic material chosen from the group consisting of woven
polyester, knit polyester, spandex, lycra, and polypropylene, said
material having an inner surface configured for engaging respective
back portions of said thumb and respective fingers;
d) each palmar facing portion being made of an anti-slip
material that has an inner surface configured for engaging respective
palmar facing portions of said thumb and respective fingers.
REJECTIONS
I. The Examiner rejects claims 1, 2, and 12 under 35 U.S.C. § I03(a) as being
unpatentable over Burden (US 1,358,824, issued Nov. 16, 1920) and McLin
(US 2005/0155134 Al, published July 21, 2005).
2
Appeal2017-001364
Application 13/374, 127
II. The Examiner rejects claims 3 and 6 under 35 U.S.C. § I03(a) as being
unpatentable over Burden, McLin, and Wanzenried (US 6,243,868 Bl,
issued June 12, 2001).
III. The Examiner rejects claims 4 and 5 under 35 U.S.C. § I03(a) as being
unpatentable over Burden, McLin, and Peters (US 4,654,895, issued Apr. 7,
1987).
IV. The Examiner rejects claims 8-11, 14, and 15 under 35 U.S.C. § I03(a) as
being unpatentable over Burden, McLin, and Lakusiewicz (US 5,991,926,
issued Nov. 30, 1999). 3
ANALYSIS
Rejection I
Claim 1
The Examiner finds that Burden discloses, inter alia, a set of five separate
and unconnected finger jackets 13 having releasable fasteners 25, as called for by
claim 1, but does not disclose "fourchettes on each side of the palm and back
portions and is silent with respect to the materials." Non-Final Act. 4.
Nonetheless, the Examiner finds that McLin discloses finger jackets having palm
and back portions 12, 16 "joined adjacently" at fourchettes 17. Id. ( citing McLin,
Fig. 1). The Examiner further finds that "each back portion [ofMcLin's finger
3 As claim 11 depends from claims 8 and 10, and the limitations of claims 8-11 are
discussed in the body of this rejection, we view the Examiner's omission of claim
11 from the heading of the rejection as a harmless typographical error. See Non-
Final Act. 6 ("The modified device of Burden [ and McLin] ... discloses ... a
layer with a surface covered with exposed fiber." "The device [ofJ Lakusiewicz
discloses ... a palm portion ... made from a plurality of layers ... wherein one of
said layers is a silicone grip enhancing coating (column 10, lines 35-40)")
( emphases added); see also Br. 11.
3
Appeal2017-001364
Application 13/374, 127
jackets is] ... made of a porous stretchable, breathable elastic material chosen
from the group consisting of woven polyester, knit polyester, spandex, lycra and
polypropylene" and "each palmar portion ... [is] made of an anti-slip material."
Id. at 4--5 (citing McLin, paras. 26, 27, Figs. 1, 2). Thus, the Examiner concludes,
It would have been obvious to a person having ordinary skill in the art
at the time the invention was made to utilize the fourchettes and
materials taught by Mc Lin in order to provide a snug fit (para 002 7)
and a palm with anti-slip features (para 004), and a back portion that
provides improved flexibility (para 0027).
Id. at 5.
Appellant argues that, in contrast to Burden's device,
[T]he central features of the present invention ... are ( 1) direct
contact between the inner surfaces of the finger jackets and the
fingers and thumb of the wearer, and (2) the absence of a palmar
portion facilitating direct contact between the palm of the hand of the
wearer and objects handles by the wearer's hands.
Br. 14--15 (citing Spec., paras. 49, 52) (emphases added). As such, according to
Appellant, Burden's stalls 13, 14 "do not engage the fingers of the wearer, rather,
they engage the outer surface of a glove." Id. at 16. In other words, Appellant
contends that the Examiner has "ignored the fact that independent [ c ]laim 1
requires the finger jackets to contact the wearer's fingers," which is not the case
with Burden's glove 10, where stalls 13, 14 "never directly contact the fingers or
thumb of the wearer." Id. at 17 (emphasis added).
We appreciate Appellant's description of the invention noted supra.
However, we do not agree with Appellant that "independent [ c ]laim 1 requires the
finger jackets to contact the wearer's fingers." Id. at 17 (emphasis added). We
must be careful not to read a particular embodiment appearing in the written
description into the claim if the claim language is broader than the embodiment.
4
Appeal2017-001364
Application 13/374, 127
See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004). Although we appreciate that the Specification should be used to interpret
the meaning of a claim, it is improper to confine the claims to the embodiments
found in the Specification. In re Trans Texas Holdings Corp., 498 F. 3d 1290,
1299 (Fed. Cir. 2007) ( citations omitted).
In this case, we agree with the Examiner that the scope of claim 1, requires
neither "direct contact" between the claimed finger jackets and the fingers or
thumb of the wearer, nor the absence of a palm region. See Ans. 2-3. Claim 1
recites "five separate finger jackets ... each separately sized to cover and
configured for covering one of a user's thumb and forefinger, middle finger, ring
finger and pinkie finger." See Br. 24 (Claims App.) (emphases added). An
ordinary and customary meaning of the term "to cover" is "to lay or spread
something over."4 As such, because Burden's glove 10 is laid over a user's
fingers, and reinforcing members 13, 14 are laid over the fingers of glove 10,
reinforcing members 13, 14 are laid over the user's fingers as well, that is, are
"configured for covering one of a user's" fingers, as called for by claim 1.
Nonetheless, we appreciate that claim 1 recites, "each back portion ... [is]
made of a porous, stretchable, breathable elastic material . .. having an inner
surface configured for engaging . .. thumb and respective fingers." Br. 24 (Claims
App.) ( emphasis added). Claim 1 further recites, "each palmar facing portion ...
[is] made of an anti-slip material . .. [having] an inner surface configured for
engaging . .. thumb and respective fingers." Id. (emphasis added). However, "[a]
claim must be read in accordance with the precepts of English grammar." In re
Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983). In this case, the recitation "configured
4 See https://www.merriam-webster.com/dictionary/cover (last visited Sept.
17, 2018)
5
Appeal2017-001364
Application 13/374, 127
for engaging" limits the "inner surface" of the material used to make each the
"back portion" and the "palmar facing portion" of the claimed finger jackets, rather
than the location relative to the skin of the "back portion" and the "palmar facing
portion" themselves. As the Examiner correctly finds that McLin discloses the
claimed materials used to make each of the "back portion" and the "palmar facing
portion" of the claimed finger jackets, the combined teachings of Burden and
McLin teach limitations (c) and (d) of claim 1 discussed supra. See Non-Final
Act. 4--5 (citing McLin, paras. 26, 27).
Furthermore, with respect to Appellant's Specification, we note that it uses
different terminologies to describe the level of contact between inside surface 11 of
finger jackets 10 and a user's fingers, and outside surface 12 of finger jackets 10
and an object handled by the user. The Specification employs the narrower phrase
"physical contact" to describe the state of contact between outside surface 12 and
an object handled by the user, but uses the broader term "against" when describing
the contact state between inside surface 11 and a user's fingers. See Spec., para.
52. Accordingly, as the term "against" does not necessarily require "physical
contact," claim 1, when read in light of Appellant's Specification, does not exclude
finger jackets that lay over a gloved finger, as taught by Burden.
Additionally, we could not find any portion of claim 1 that recites "the
absence of a palmar portion," as argued by Appellant. See Br. 15, 24 (Claims
App.). As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998), "the name of the game is the claim." It is well established that
limitations not appearing in the claims cannot be relied upon for patentability. In
re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellant further argues that, because each of Burden and McLin discloses
"gloves including palms," these references "teach away from the claimed
6
Appeal2017-001364
Application 13/374, 127
invention," which requires "finger jackets devoid of a palm." Br. 1 7. Hence,
Appellant asserts that "[t]here can be no suggestion to combine Burden and McLin
since both references teach away from each other and from the present invention as
claimed." Id. at 17-18.
We are not persuaded by Appellant's arguments because they are premised
on the faulty proposition that claim 1 requires the finger jackets to "directly
contact" the wearer's fingers and be devoid of a palm region. As discussed supra,
the scope of claim 1, requires neither "direct contact" between the claimed finger
jackets and the fingers of the wearer, nor the absence of a palm region. The
Examiner is correct in that the "claim language [ of claim 1] does not recite any
language that precludes the presence of a glove or palmar region." Ans. 3. As
such, we do not agree with Appellant that (1) Burden and McLin "teach away"
from the claimed invention and (2) that in order for the combination of Burden and
McLin to meet the terms of claim 1 is to eliminate Burden's glove 10. See Br. 17-
18.
Furthermore, we note the Examiner's reliance on McLin "to teach
fourchettes and specific claimed materials." Ans. 3; see Non-Final Act. 4--5.
Appellant's assertion that there is "no suggestion or motivation to modify Burden
in view of McLin" (see Br. 18) ignores and fails to point out the error in the
reasoning provided by the Examiner, namely, "to provide a snug fit ... a palm
with anti-slip features ... and a back portion that provides improved flexibility."
Non-Final Act. 5. Given that McLin discloses "that the construction of fourchettes
along with the anti-slip material provides the user with a snug fit and improved
grip and flexibility," the Examiner's reasoning has a rational underpinning. See
Ans. 4 ( citing McLin, paras. 4, 27). Appellant has not persuasively shown error in
the Examiner's findings or reasoning.
7
Appeal2017-001364
Application 13/374, 127
Moreover, even though McLin discloses a glove having fourchettes between
the finger portions of the glove (see McLin, Fig. 1), this does not mean that a
person of ordinary skill would provide the McLin's fourchettes only on the glove
of Burden. Obviousness does not require that the features of the secondary
reference be bodily incorporated into the primary reference. In re Keller, 642 F.2d
413, 425 (CCP A 1981 ). After all, "[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton." KSR Int'!. Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007). Here, the skilled artisan would readily provide the fourchettes of
Mc Lin on Burden's finger jackets 13, as the Examiner reasons, because the finger
jackets, not the glove, come into contact with objects gripped by the user, and,
thus, would benefit from "a snug fit" as taught in McLin. See Non-Final Act. 5;
Ans. 4.
In conclusion, for the foregoing reasons, we sustain the rejection of claim 1
under 35 U.S.C. § 103(a) as unpatentable over Burden and McLin.
Claims 2 and 12
In regard to claims 2 and 12, Appellant recites the limitations of these claims
and relies on the arguments discussed supra with respect to the rejection of claim
1. Br. 18-19. Therefore, for the reasons discussed above, we likewise sustain the
rejection of claims 2 and 12 over the combined teachings of Burden and McLin.
Rejection II
In addition to the arguments discussed supra that we did not find persuasive,
Appellant further argues that the Examiner's reliance on Wanzenried's hook and
loop fasteners 42, 46 to replace the slit and button fastening arrangement 25, 26 of
8
Appeal2017-001364
Application 13/374, 127
Burden, as modified by McLin, in glove 10, is not possible because "[t]he present
invention has no glove." Br. 19.
We are not persuaded because, as discussed above, the "claim ... does not
recite any language that precludes the presence of a glove." Ans. 3. Accordingly,
we also sustain the rejection of claims 3 and 6 under 35 U.S.C. § 103(a) as
unpatentable over Burden, McLin, and Wanzenried.
Rejection III
Appellant argues that "zippers 3 of Peters are not used as fasteners." Br. 20.
According to Appellant, "zippers 3, 9 [of Peters] ... are intended to provide
openings in the finger portions of the Peters glove 1," which is in contrast with
"the fasteners ... and zippers ... of the present invention which ... are intended to
allow securing the finger jackets about the fingers ... of the wearer." Id.
(comparing Peters, Fig. 5 with Spec., Fig. 4). Appellant explains that the zippers
of Peters "do not provide a fastening function," but rather "facilitate opening the
backs of the finger portions of the Peters glove 1." Id. at 21.
We are not persuaded by Appellant's arguments because the Examiner is
correct in that "the intended function of the fasteners that is being argued in the
appeal brief' has not been claimed. See Ans. 5. Claim 4 merely requires a
"releasable fastener" that is a "zipper" and claim 5, which depends from claim 4,
merely adds that "each zipper is located on a respective back portion"; the claims
do not set forth any particular structural arrangement or functional capability for
the zipper aside from it being "releasable" according to claim 2. See Br. 24
(Claims App.). Hence, we agree with the Examiner's findings that Peters's zipper
3 constitutes a "releasable fastener" that is located on a back portion of a finger of
a wearer's hand. See Non-Final Act. 6 (citing Peters, Fig. 5).
9
Appeal2017-001364
Application 13/374, 127
Furthermore, as presently claimed, the Examiner is correct in that whether
the zipper of Peters secures the finger jacket to a user's finger or allows the user's
finger to extend through the finger jacket represents an intended use feature. See
Ans. 5. "It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable." In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990). Here, we agree with the Examiner that Appellant
does not provide adequate evidence or persuasive reasoning that zipper 3 of Peters
would not be capable of performing the intended use or function of securing the
finger jackets of Burden, as modified by McLin. See Ans. 5; see also In re
Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). The Examiner is also correct
in that the intended use "must result in a structural difference between the claimed
invention and the prior art in order to patentably distinguish the claimed invention
from the prior art." Ans. 5.
In conclusion, for the foregoing reasons, we likewise sustain the rejection of
claims 4 and 5 over the combined teachings of Burden, McLin, and Peters.
Rejection IV
In addition to the arguments discussed supra that we did not find persuasive,
Appellant further argues that, because Lakusiewicz discloses silicone coating for
stiffening finger sleeves 7, 8, 10, 11, Lakusiewicz teaches away from the
Examiner's combination because it "would ... result in stiffening of the finger
jackets which are clearly recited as being made of a stretchable elastic material."
Br. 22 ( citing Lakusiewicz, col. 10, 11. 13-16).
We are not persuaded by Appellant's arguments because they are not
commensurate with the Examiner's rejection. Specifically, the Examiner is correct
in that the silicone coating of Lakusiewicz is not applied to the back portion of
10
Appeal2017-001364
Application 13/374, 127
Burden's finger jackets, as modified by McLin, but rather is applied to the palmar
portion, which requires "an anti-slip material," not a "stretchable, breathable elastic
material." Ans. 5 (citing Lakusiewicz, Figs. 5, 6); see also Br. 24--25 (Claims
App.). We agree with the Examiner's finding that the silicone coating of
Lakusiewicz improves gripping. Id. at 6 (citing Lakusiewicz, Abstract, col. 3, 11.
59---64). Appellant has not persuasively shown error in the Examiner's findings or
reasonmg.
Therefore, for the foregoing reasons, we also sustain the rejection of claims
8-10, 14, and 15 under 35 U.S.C. § 103(a) as unpatentable over Burden, McLin,
and Lakusiewicz.
SUMMARY
The Examiner's decision to reject claims 1---6, 8-12, 14, and 15 under
35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
11