Ex Parte Chan

Patent Trial and Appeal Board

Oct 30, 2018

14051980 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
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.
14/051,980 10/11/2013 Timothy Chan 4047
7590 10/30/2018
Timothy Chan
EXAMINER
70 Battery Pl ANNIS, KHALED
621
New York, NY 10280 ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
10/30/2018 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
Exparte TIMOTHY CHAN 1
Appeal2018-001202
Application 14/051,980
Technology Center 3700
Before STEP AN ST AI CO VICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Timothy Chan ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's decision to reject claims 1-16. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION under 37 C.F.R. §41.50(b).
1 Appellant's Appeal Brief filed Aug. 15, 2016, hereinafter ("Br.") lists the
inventor, Timothy Chan, as the real party in interest (see Br. 1) and includes
Appellant's arguments, whereas Appellant's Response to Non-compliant
Appeal Brief, filed Aug. 16, 2017, hereinafter "Br. (Claims App.)" includes
Appellant's claims.
Appeal2018-001202
Application 14/051,980
CLAIMED SUBJECT MATTER
The claims are directed to a glove for use with touch interface
devices. Spec. 1: 21-22. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A glove comprising of a palm covering and a back
covering and at least one finger sheath with a closed tip wherein
at least one of the finger sheath with closed tip comprises of a
second integrated parallel sheath, wherein the second parallel
sheath has an unclosed tip and extend partially a length of the
finger sheath with closed tip, wherein the second parallel sheath
sharing at least one common wall with the finger sheath with
closed tip.
Br. (Claims App. 2)
Gold
REFERENCE RELIED ON BY THE EXAMINER
US 2004/0064870 Al Apr. 8, 2004
REJECTIONS 2
(I) Claims 8 and 9 are rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement.
(II) Claims 2-9 3 and 15 are rejected under 35 U.S.C. § 112(b ), as
indefinite.
2 The Examiner objects to the drawings under 37 C.F.R. § 1.83(a) and to the
Specification under 37 C.F.R. § 1.75(d)(l). See Final Act. 4---6 (mailed Apr.
27, 2016). An objection is a petitionable matter and not an appealable
matter and is not within the jurisdiction of the Board. See In re Mindick, 3 71
F .2d 892, 894 (CCP A 1967).
3 The Examiner's omission of claims 8 and 9 in the heading of Rejection (II)
appears to be a typographical error because claims 8 and 9 are discussed in
the body of the rejection.
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Application 14/051,980
(III) Claims 1-16 are rejected under 35 U.S.C. § 102(a)(l) as
anticipated by Gold.
OPINION
Rejection(!); Written Description
The Examiner finds that the claim 8 limitation "distending said open
ended parallel compartment and collapsing the closed tip portion of the
finger compartment" and the claim 9 limitation "distending said closed tip
portion of the finger compartment and collapsing the open ended parallel
compartment," which were added by amendment on April 4, 2016, fail to
comply with the written description requirement, because these "limitations
have no support in the disclosure as originally filed." Final Act. 7.
Appellant makes no arguments for the patentability of these claims.
See Br. 1-7. Thus, for the purposes of the Appeal, Appellant waived any
argument on this issue. Accordingly, we summarily affirm the rejection of
claims 8 and 9 as failing to comply with the written description requirement.
Rejection (11); Indefiniteness
The Examiner finds that the claim 2 limitation "close-fitting," the
claim 3 limitation "loose-fitting," the claim 4 limitation "distend
circumference," the claim 5 limitation "low profile," the limitation
"lips/ridges" in claims 6 and 15, the claim 7 limitation ""piles [sic] of
material," and the limitation "distending" in claims 8 and 9 are indefinite
because they are unclear as to "what the metes and bound the applicant is
claiming." Final Act. 7-8.
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Appellant asserts that because the terms are based on "industry
standard documentation" and are consistent with the common dictionary
definitions, "[a]nyone skilled in the art would be able to understand the
meaning for the cited words in conjunction with the specifications and glove
patterns in Figs. 3-8." Br. 3. Appellant's arguments are persuasive as to
claims 4 and 7-9, but are not persuasive as to claims 2, 3, 5, 6, and 15.
Claims 2 and 3 each separately depend from claim 1. That is, the
finger sheath in claim 2 is loose-fitting, whereas the finger sheath of claim 3
is close-fitting. These limitations are relative limitations. Although we
appreciate Appellant's assertion that the claims are used consistent with
"industry standard documentation," Appellant does not provide evidence in
support of any documentation. Nor does the Specification provide guidance
as to what would be considered by a skilled artisan as "loose-fitting" or
"close-fitting." Rather, the only portion of the Specification that relates to
these terms discloses, "[t]he pattern pieces of FIG.7 are for a looser fitting
glove." Spec. 6:4--5.
In determining whether a relative limitation is definite, the Federal
Circuit has found that a claimed limitation is definite if the limitation makes
a comparison to information that "could be easily obtained." Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). In
Orthokinetics, "the dimensions [permitting insertion of a wheelchair front
leg portion through the 'space between the doorframe of an automobile and
one of the seats thereof] could be easily obtained." Orthokinetics, 806 F.2d
at 1576. In this case, because finger shapes and sizes vary from individual
to individual, a loose-fitting finger sheath on one person might be close-
fitting on another person, and one of ordinary skill in the art would be unable
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Application 14/051,980
to determine whether the finger sheath was loose-fitting or close-fitting.
Unlike the specific dimensions in Orthokinetics, which were based on a
particular measurable characteristic of automobiles, a large, yet definable
group of objects, the instant invention is not defined in terms of interaction
with a particular finger. There is no per se rule prohibiting defining claimed
subject matter in terms of its interaction with some unclaimed subject
matter. However, limitations defining unclaimed subject matter interacted
with, like claim limitations generally, must make it clear to the potential
infringer what the claims encompass. The present claims do not satisfy that
requirement. Accordingly, we agree with the Examiner that claims 2 and 3
are indefinite.
Claim 4 recites, in part "wherein the second parallel sheath having a
distend circumference substantially equal to that of the finger sheath with
closed tip." Br. (Claims App. 2). Here, we agree with Appellant that use of
the term "distend" is consistent with the common dictionary definition
because, a common dictionary meaning of "distend" is ""to enlarge, expand,
or stretch out ( as from internal pressure) : swell." Merriam Webster Online,
Retrieved October 26, 2018, www.merriam-webster.com/dictionary/distend.
One of ordinary skill in the art would understand that placing a finger inside
the finger sheath and second parallel sheath will cause the finger sheath and
second parallel sheath to enlarge, or distend. One of ordinary skill in the art
would be able to measure the circumference of the finger sheath and the
parallel second sheath in the distended position and would be able to
determine whether the circumferences are substantially equal. Hence, claim
4 is not unclear. We do not sustain the rejection of claim 4.
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Claim 5 recites, in part, "wherein the second parallel sheath having a
low profile hook and loop type fastener." Appellant does not provide any
"industry standard documentation" that evidences what is considered a low-
profile hook and loop type fastener. The Specification also does not provide
guidance and only discloses that "it is possible to create a seal ... by using
low profile Velcro® (hook 845 or hook 833)." Spec. 5:11-13. The
Specification does not set forth what height or other characteristic is required
in order to be considered low profile. Accordingly, those skilled in the art
would not understand what is required by claim 5 when this claim is read in
light of the Specification. Therefore, we sustain the indefiniteness rejection
of claim 5.
As to claims 6 and 15, and the term "lips/ridges," Appellant does not
provide any specific arguments directed to these claims. See Ans. 6. Nor
does the Specification provide any guidance, and rather, mirrors the claim
language, disclosing "adding lips/ridges." Spec. 4:24. Turning to a common
and ordinary definition, Merriam-Webster defines "lip" as "a projecting
edge." Merriam Webster Online, Retrieved October 26, 2018,
www.merriam-webster.com/dictionary/lip. Based on these definitions, a lip
and a ridge are both raised structures, and could plausibly be considered as
having the same meaning. Alternatively, as the Examiner plausibly
suggests, these terms could have different meanings and be expressed as
"lips or ridges." Having the same meaning and different meanings are both
plausible. 4 As such, those skilled in the art would not understand what is
4 See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential)
("if a claim is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely define the
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required by claims 6 and 15. We, agree with the Examiner that claims 6 and
15 are indefinite.
Claim 7 recites, in part, "wherein the palm covering and the back
covering comprising of a plurality of plies of material." Br. 2 (Claims App.)
( emphasis added). The Examiner's position is that "piles of material" is
unclear. Claim 7 recites the term "plies," not "piles," as the Examiner states.
It is clear to the skilled artisan that that plies are layers. Hence, one of
ordinary skill in the art would understand what is being claimed. We do not
sustain the rejection of claim 7.
Claim 8 recites, in part, "distending said open ended parallel
compartment and collapsing the closed tip portion of the finger
compartment," and claim 9 recites, in part, "distending said closed tip
portion of the finger compartment and collapsing the open ended parallel
compartment." Br. (Claims App. 2-3). As discussed above with respect to
claim 4, one of ordinary skill in the art would understand that placing a
finger inside the finger sheath or finger compartment will cause the finger
compartment to enlarge or expand, i.e., distend. Likewise, because the
material of the compartment is fabric, animal hides, or other flexible
material (see Spec. 3 :23-24), retracting the finger from the finger
compartment will cause the finger compartment to go flaccid or collapse.
As such, because claim 8 recites "retracting at least a single finger tip out
from the closed tip portion of the finger compartment and slipping the finger
tip through an open ended parallel compartment ... to protrude the fingertip
through the open ended parallel compartment," one of ordinary skill in the
metes and bounds of the claimed invention by holding the claim ...
indefinite").
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art would understand that the recited finger tip movement would cause the
open ended parallel compartment to expand, or distend and would cause the
closed tip portion of the finger compartment to collapse.
In a like manner, one of ordinary skill in the art would understand that
"retracting the finger tip out from the open ended parallel compartment and
back into the closed tip portion of the finger compartment," as recited in
claim 9, would cause the open ended parallel compartment to collapse and
would distend the closed tip portion of the finger compartment. Hence,
claims 8 and 9 are not unclear. We do not sustain the rejection of claims 8
and 9.
Rejection (111); Anticipation
Claims 1-9
In rejecting the claims as anticipated, the Examiner finds, inter alia,
that Gold discloses a second integrated parallel sheath 562 having unclosed
tip 563. Final Act. 8.
Appellant argues that because Gold defines element 562 as a flap, this
element is not a sheath. Br. 4. Appellant asserts that a common dictionary
definition of sheath is "a close-fitting cover for something, esp. something
that is elongated in shape," whereas a flap is "a piece of something thin,
such as cloth, paper, or metal, hinged or attached only on one side, that
covers an opening." Id. According to Appellant, the Examiner's claim
analysis is inconsistent with how one of ordinary skill in the art would
understand the term sheath in view of the Specification. Br. 5.
The Examiner responds that Gold's flap is a close fitting cover that is
elongate in shape and thus, "can be interpreted as a sheath." Ans. 7.
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Appellant has the better position. During examination of a patent
application, pending claims are given their broadest reasonable construction
consistent with the Specification. In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). "While the Board must give the terms
their broadest reasonable construction, the construction cannot be divorced
from the specification and the record evidence." In re NTP, Inc., 654 F.3d
1279, 1288 (Fed. Cir. 2011). Here, the Specification depicts gloves 100 and
1 OOa having sheaths that fully cover or enclose the fingers. That is,
Appellant's finger sheath with closed tip fully encloses the finger, whereas
the second parallel sheath has an unclosed tip, and fully encloses the finger
except for the unclosed tip. Although we appreciate that Gold's flap covers
the slit of Gold, neither the Specification nor the figures present a sheath that
does not fully enclose the finger. In light of the Specification, we find the
Examiner's characterization of the word "sheath" as used in claim 1 to be
unreasonably broad. This overly broad definition led to the Examiner's
finding that flap 562 depicted in Figure 8 of Gold corresponds to the recited
second parallel sheath. Accordingly, we reverse the rejection of claim 1 and
claims 2-7 depending therefrom as anticipated by Gold.
Similar to claim 1, independent claim 8 requires "a plurality of finger
compartments with a closed tip ... and ... an open ended parallel
compartment." Br. (Claims App. 2).
In the rejection of claim 8, the Examiner makes similar findings with
respect to the teachings of Gold as those discussed above regarding claim 1.
See Final Act. 10-11. Specifically, the Examiner finds that "Appellant used
interchangeably the words 'sheath' and 'compartment."' Ans. 8. For the
same reasons discussed above with respect to claim 1, because we agree that
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Application 14/051,980
Appellant uses the terms sheath and compartment interchangeably, we do
not sustain the rejection of claim 8 and claim 9 depending therefrom as
anticipated by Gold.
NEW GROUNDS OF REJECTION
Claim 1
Notwithstanding that the Examiner's findings with regard to Gold for
claim 1 do not establish anticipation, we conclude that Gold anticipates
claim 1. Claim 1 requires a glove comprising of a palm covering and a back
covering. We agree with the Examiner that Gold discloses this limitation
because Gold depicts "a palm covering adjacent to the palm region of the
hand of the wearer and a back covering adjacent to the dorsal region of the
hand of the wearer when worn." Final Act. 8; see also Gold, Fig. 3. Gold
also discloses at least one finger5 sheath with a closed tip, namely, sheath
101 that extends from the palm of glove 100 to the closed tip. Gold, Fig. 3.
Gold also discloses that at least one of the finger sheaths with closed tip 101
comprises a second integrated parallel sheath, namely, the portion of sheath
101 that extends from the palm of the glove to where thumb 10 protrudes.
Id. The second parallel sheath has an unclosed tip, i.e. opening 202 ( opening
for thumb) and extends partially a length of the finger sheath with closed tip
101. Gold ,r 28; Fig. 3. Here, the first sheath extends the full length of the
thumb, whereas the second sheath only extends partway along the thumb.
The second parallel sheath shares at least one common wall with the finger
5 To the extent that a user's thumb is not considered a finger, Gold discloses
that the preferred embodiment is described with respect to the thumb, but
"similar access can be provided for other fingers." Gold ,r 26.
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Application 14/051,980
sheath with closed tip, namely, the back wall that does not include slit 201.
Gold, Fig. 3. The fact that Gold's opening is depicted as having a vertical
component, whereas Appellant's opening is shown as horizontal, relates to a
limitation that is not recited by claim 1.
Accordingly, for the reasons discussed above, we determine that Gold
anticipates claim 1 and enter a NEW GROUND of rejection on this basis.
With respect to claims 2-7, although we decline to reject every claim under
our discretionary authority under 37 C.F.R. § 4I.50(b), we emphasize that
our decision does not mean the remaining claims are patentable. Rather, we
merely leave the patentability determination of these claims to the Examiner.
See MPEP § 1213.02.
Claims 8 and 9
We agree with the Examiner that Appellant uses the terms "sheath"
and "compartment" interchangeably. See Ans. 8. Thus, consistent with the
above discussion, Gold anticipates claims 8 and 9 because Gold discloses a
method for using a glove 100 including a palm covering and a back covering
(front and rear portions of glove 100) and a plurality of finger compartments
with a closed tip 101 to operate a touch interface device. Gold ,r 26; Fig. 3.
Gold discloses retracting at least a single finger tip out from the closed tip
portion of the finger compartment and slipping the finger tip through an
open ended parallel compartment, namely, that portion of the compartment
that extends from the palm to opening 202. See Gold ,r 3 ("an opening on
the side of ... the glove ... allows ... the wearer's thumb to extend through
any insulation and outer shell of the glove and have direct access to a cell
phone."); Fig. 3. Gold's open ended parallel compartment is formed in a
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section of overlapping layers of the finger compartment, i.e., the shell and
insulation. Gold ,r,r 3 and 26. Gold protrudes the fingertip through the open
ended parallel compartment, distending the open ended parallel
compartment and collapsing the closed tip portion of the finger compartment
to interact with the touch interface device. See Gold ,r 7; Fig. 3 (a "standard
glove" finger compartment distends when a finger is inserted and collapses
when the finger is removed.). "[I]f a previously patented device, in its
normal and usual operation, will perform the function which an appellant
claims in a subsequent application for process patent, then such application
for process patent will be considered to have been anticipated by the former
patented device." In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986). For
claim 9, by reversing the process and returning the finger to the closed tip
compartment through the opening will cause the open ended parallel
compartment to collapse and the closed tip compartment to distend. See
Gold ,r 7 ("the performance of the glove with the opening closed is
unchanged from a standard glove."). Accordingly, we enter a NEW
GROUND of rejection of claims 8 and 9 as anticipated by Gold.
Claims 10---16
For the reasons discussed below, claims 10-16 are indefinite. We do
not sustain the rejections of these claims under 35 U.S.C. § 103 because to
do so would require speculation as to the scope of the claims. See In re
Steele, 305 F.2d 859, 862---63 (CCPA 1962) (holding that the Board erred in
affirming a rejection of indefinite claims under 35 U.S.C. § 103, because the
rejection was based on speculative assumptions as to the meaning of the
claims).
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Independent claim 10 recites, in part, "[at] least one finger
compartment with a closed tip with an opening disposed substantially at an
end of at least one of the finger compartment, wherein said opening is a
parallel passage formed between a section of two overlapping layers of the
palm face of the finger compartment." Br. (Claims App. 3).
The Examiner finds that Gold's opening 563 is a parallel passage.
Final Act. 11 ( citing Gold, Fig. 8.).
Appellant argues that "Gold discloses of an opening perpendicular to
finger," not a parallel opening. Br. 7. According to Appellant, the claimed
opening enables a user to "protrude his finger through the opening in the
same orientation as the finger was while inside the closed finger
compartment, whereas with Gold the user's finger would have to protrude
from the opening taught by Gold at angle perpendicular as clearly shown in
Fig. 3 of Gold." Id.
Appellant's arguments appear to require that a parallel passage is an
opening that allows a user's finger to point in the same direction it would be
inside the closed finger compartment. See Br. 7. However, claim 10 does
not specify what the claimed passage is parallel to, and Appellant does not
point to any portion of the Specification that provides support for
Appellant's assertion. Indeed, the only reference to "parallel" in the
Specification is with respect to "adding lips/ridges (parallel to the cut in the
finger of pattern piece 301)." Spec. 4:24. As such, the Specification does
not provide any guidance on how to interpret the term "parallel passage" in
claim 10.
Although the term "parallel" is also used in claims 1 and 8, in contrast
to claim 10, claims 1 and 8 imply that the sheath ( or compartment) is parallel
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to a previously recited sheath ( or compartment). Claim 1 recites, in relevant
part, "at least one of the finger sheath with closed tip comprises of a second
integrated parallel sheath." Claim 1 implies that the finger sheath and
parallel sheath continue in parallel so as to be coextensive. Claim 8 recites,
in relevant part, "retracting at least a single finger tip out from the closed tip
portion of the finger compartment and slipping the finger tip through an
open ended parallel compartment formed in a section of overlapping layers
of the finger compartment." Claim 8 implies that the open ended second
parallel compartment is a parallel continuation of the finger compartment so
as to be coextensive. In contrast, claim 10 does not include any other
limitation that provides context for determining what a "parallel passage" is
parallel to. Because those skilled in the art would not understand what is
required by claim 10, we reject claim 10 under 35 U.S.C. § 112(b), as
indefinite. For the same reasons, we also reject claims 11-16, which depend
from claim 10 and do not contain limitations that fully resolve the above-
noted deficiencies in claim 10, under 35 U.S.C. § 112(b).
DECISION
The Examiner's decision to reject claims 8 and 9 as failing to comply
with the written description requirement is affirmed.
The Examiner's decision to reject claims 2-9 and 15 as indefinite is
affirmed as to claims 2, 3, 5, 6, and 15, and is reversed as to claims 4 and 7-
9.
The Examiner's decision to reject claims 1-16 as anticipated by Gold
is reversed.
NEW GROUNDS OF REJECTION
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Claims 1, 8, and 9 are rejected under 35 U.S.C. § 102(a)(l) as
anticipated by Gold.
Claims 10-16 are rejected under 35 U.S.C. § 112(b) as indefinite.
FINALITY OF DECISION
This Decision contains new grounds of rejection pursuant to 37
C.F.R. § 41.50(b), which provides "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review."
37 C.F.R. § 4I.50(b) also provides:
When the Board enters such a non-final decision, Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new
ground[s] of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the [E]xaminer, in which event the prosecution will be
remanded to the [E]xaminer. The new ground of rejection is
binding upon the [E]xaminer unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the [E]xaminer, overcomes the new ground of rejection
designated in [this] decision. Should the Examiner reject the
claims, Appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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)(l )(iv).
AFFIRMED-IN-PART
37 C.F.R. § 4I.50(b)
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