Ex Parte Bottcher

Board of Patent Appeals and Interferences

Sep 20, 2010

11280885 (B.P.A.I. Sep. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/280,885 11/15/2005 Paul L. Bottcher 13786-00355USPT 9548
82566 7590 09/20/2010
Nixon Peabody LLP
300 S. Riverside Plaza
16th Floor
Chicago, IL 60606
EXAMINER
MORAN, KATHERINE M
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
09/20/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PAUL L. BOTTCHER
____________________

Appeal 2009-013817
Application 11/280,885
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, STEVEN D.A. MCCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-013817
Application 11/280,885
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1-9 and 21-29. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to disposable gloves. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A disposable glove comprising a first area including a hand
area and a second area, the hand area including a palm area and
a plurality of finger-receiving receptacles, the second area
including a wrist-forearm area, the wrist-forearm area including
a beaded cuff and a cuff portion, the disposable glove having at
least one coating on an interior surface of the disposable glove,
the coating on the interior surface of the disposable glove
covering the first area and a portion of the second area such that
the beaded cuff and the cuff portion are uncoated and resistant
to glove cuff roll-down, and wherein the interior surface
comprises the surface that contacts a hand when the disposable
glove is worn by a user.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ansell
Barnett
Tebbe
US 3,397,265
US 4,536,890
US 5,922,336
Aug. 13, 1968
Aug. 27, 1985
Jul. 13, 1999
Modha US 2005/0127552 A1 Jun. 16, 2005

REJECTIONS
Claims 1-5, 8, 21-25, 28, and 29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Barnett and Ansell. Ans. 3.
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Claims 6 and 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barnett, Ansell, and Modha. Ans. 4.
Claims 7 and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barnett, Ansell, and Tebbe. Ans. 4.

OPINION
We have carefully reviewed the rejections on appeal in light of the
arguments of the Appellant and the Examiner. As a result of this review, we
have reached the determination that the applied prior art establishes the
obviousness of claims 1-8 and 21-29. Therefore the rejections on appeal are
affirmed. Our reasons follow.
We adopt as our own the Examiner’s findings of fact with respect to
the Barnett reference found on pages 3 and 4 of the Answer. Although not
necessary for the rejection, we do note that Barnett teaches that the internal
lining or coating of flocking makes it easier to put on and take off a glove.
Col. 1, ll. 24-28.
Ansell discloses that it was known in the prior art before the date of
Ansell’s invention to provide a bead or other reinforced edge on the cuff
portion of a thin rubber glove to prevent tearing of the glove when placing
the glove on one’s hand, as well as to provide a tighter grip over the cuff of
one’s gown. Col. 1, ll. 56-60. Thus Ansell is a disclosure of providing
increased durability to rubber gloves by providing a bead on the cuff thereof.
In our view, it would have been obvious to provide a bead on the cuff
of the glove of Barnett as the use of a known technique to improve a similar
device such as another glove. We note that the use of the bead to improve
durability has a result that is entirely predictable.
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Turning to Appellant’s argument, it appears that Appellant is under
the impression that the reference disclosures must be combined for the
reasons contemplated by the inventor. This is not the case. “[T]he law does
not require that the references be combined for the reasons contemplated by
the inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) citing In
re Kronig, 539 F.2d 1300, 1304 (CCPA 1976) and In re Lintner, 458 F.2d
1013, 1016 (CCPA 1962). As the Supreme Court recently stated in KSR,
International, Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) “any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” Thus arguments that Barnett and Ansell are not
concerned with glove cuff roll-down issues are not convincing as long as the
combination of references teaches the structure of Appellant’s invention as
claimed. For this same reason, arguments directed to the idea that the focus
of the Barnett patent is different from the goals or results Appellant has in
mind are unavailing.
Appellant pays lip service to KSR by admitting that KSR rejects a rigid
reliance on teaching, suggestion or motivation in the prior art for the
combination of references under § 103. However, Appellant further argues
that there is no teaching, suggestion, or motivation for making the
Examiner’s proposed combination. Corrected App. Br. 14. Not only has the
Examiner provided a specific rationale for the combination of references, but
our reviewing court has stated that implicit motivation is also present when
the combination is predicated on the increased durability of a product.
Indeed, we have repeatedly held that an implicit motivation to
combine exists, not only when a suggestion may be gleaned
from the prior art as a whole, but when the ‘improvement’ is
technology-independent and the combination of references
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results in a product or process that is more desirable, for
example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient.

DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006) (emphasis added).
Appellant further argues that the phrases in the claim directed to
“glove cuff roll-down resistance” render these claims patentable over the
applied prior art. In our view, these claim recitations are directed merely to a
result or goal Appellant has in mind and are not tied to any structure not
found in the prior art references. See Corrected App. Br. 15.
Appellant further argues that the references themselves do not suggest
any reason for making the proposed combination. Corrected App. Br. 15.
This is not the case. As we have previously determined, Ansell specifically
discloses the use of a beaded cuff to improve product durability.
Appellant further argues that Barnett is not directed to a medical
glove. Corrected App. Br. 16. Appellant’s claims are broad and do not
specify a medical glove.
Appellant also argues that Ansell is concerned with different problems
than Appellant’s claimed gloves. Corrected App. Br. 16. As noted supra the
references do not have to be combined based on Appellant’s contemplated
reasons.
On page 17 of the Brief, Appellant again argues that there is no
teaching, suggestion or motivation to make the claimed combination. This
argument has not been credited, supra.
On page 18 of the Corrected Appeal Brief, Appellant waives separate
argument with respect to claims 6 and 26, and claims 7 and 27. Accordingly,
these claims fall with the claims from which they depend.
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Appellant has also provided a declaration of the inventor as to the
nonobviousness of the claimed invention. We note that the declaration is not
directed to secondary considerations, so we will consider the declaration as
relevant to the case of prima facie obviousness. Initially, we must note that
“an expert’s opinion on the legal conclusion of obviousness is neither
necessary nor controlling.” Avia Group, Int’l, Inc. v. L.A. Gear Cal., Inc.,
853 F2d 1557, 1564 (Fed. Cir. 1988). The question is not whether the
combination was obvious to the patentee, but whether the combination was
obvious to a person with ordinary skill in the art. KSR, 550 U.S. at 420. Thus
declarations by inventors or other factual experts are generally irrelevant to
the issue of obviousness, which is a question of law. The declaration by the
inventor is also unavailing in that obviousness is an objective test and does
not depend on subjective evidence from any one person in the field of
endeavor, expert or not.
We acknowledge that Bottcher is an expert in the field of glove
productions. Decl. para. 2. Paragraph 4 of the Declaration states that, in Mr.
Bottcher’s opinion, it is not obvious to combine Barnett and Ansell. As
noted above, the inventor’s opinion on obviousness is entitled to little
weight. In paragraph 7, Bottcher states that Barnett does not recognize or
address the problems associated with glove cuff roll-down. As previously
noted, the references do not have to be combined based on the problems
contemplated by the inventor. We further note that Bottcher does not state
that the beaded cuff taught by Ansell would categorically not increase the
durability of the Barnett glove. Bottcher does state that the beaded cuff
might add costly, unnecessary or wasteful design changes. Decl. para. 11.
Indeed, Ansell does discuss the expense of the beaded cuff. See col. 2, ll. 21-
26. However, with this “costly design change” the durability of the glove is
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also increased. For these reasons, the declaration of Bottcher is entitled to
but little weight.
In the Reply Brief, Appellant presents several new arguments, stating
for the first time that the combination of Barnett and Ansell would render the
glove of Barnett unsatisfactory for its intended purpose and that the
references teach away from the combination. Reply Br. 5-8. While we
believe that these arguments are not responsive to arguments made by the
Examiner in the Answer, in the interest of completeness, we will consider
them now. First, Appellant provides an annotated drawing on page 6 of the
Reply. Appellant is reminded that patent drawings are not scale drawings
and that arguments based on dimensions gleaned from the drawings are
therefore entitled to little weight. Appellant argues that the hand portion of
Barnett is thicker than the cuff portion due to the coating or lining therein.
Appellant also argues that it is a feature of Ansell to try to make the surgical
glove as thin as possible in the finger region. However, it is clear that Ansell
makes the cuff portion of his glove thicker for durability purposes and to
avoid the manufacture of the beaded edge. The thickness of the cuff portion
of Ansell is thus a stand-in or substitute for the beaded edge. Therefore, we
find nothing contradictory in the combination of Barnett and Ansell.
Moreover, the Examiner has not addressed or combined the cuffs of Ansell
and Barnett. The Examiner depends only on the beaded edge of the prior art
that Ansell discusses and suggests using this beaded edge to improve the
durability of the Barnett glove. As a practical matter, Appellant’s argument
has it backwards. That Barnett has a thinner cuff area is a reason that a
beaded cuff edge is needed to improve the durability thereof. Therefore, far
from teaching away from the combination, the fact that Barnett is thinner in
the cuff provides an additional motivation or factor in their combination.
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We have carefully reviewed all the arguments of the Appellant but
find nothing therein that would dissuade us from the legal conclusion that
the subject matter of claims 1-8 and 21-29 are prima facie obvious from the
disclosures of Barnett and Ansell.

DECISION
The rejections of claims 1-8 and 21-29 are 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

nlk

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