Ex Parte Flather et al

Patent Trial and Appeal Board

Nov 20, 2017

11639017 (P.T.A.B. Nov. 20, 2017)

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.
11/639,017 12/14/2006 Michael Flather A0013-01CT 4069
99653 7590 11/22/2017
Moser TahnaHa / An sell T imiterl
EXAMINER
1030 Broad Street HADEN, SALLY CLINE
Suite 203
Shrewsbury, NJ 07702 ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
11/22/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@mtiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL FLATHER and PAUL SAUNDERS
Appeal 2016-000062
Application 11/639,017
Technology Center 3700
Before LYNNE H. BROWNE, JILL D. HILL, and
NATHAN A. ENGELS, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael Flather and Paul Saunders (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 53—55,
60-63, 69, 70, 72 and 74—81.1 We have jurisdiction under 35 U.S.C. § 6(b).
Appellants’ representative presented oral argument on October 24, 2017.
We AFFIRM.
1 In an Amendment dated April 2, 2015, Appellants canceled claims 64 and
71. Appeal Br. 21 (Claims App.).
Appeal 2016-000062
Application 11/639,017
BACKGROUND
Independent claim 53 reproduced below, illustrates the claimed
invention.
1. A glove suitable for providing wet grip, the glove
comprising:
an outer textured latex layer, and
laminated thereon and interior thereto a liquid repellent
latex layer,
wherein an outer surface of the outer layer has a textured
surface that comprises (a) thin, distinct ridges and (b) cavities
that have perimeters, which cavities (i) are surrounded, over
substantially their full perimeters, by such ridges and (ii) have
interior cavity shapes conforming to exterior shapes and sizes
of salt particles of diameter in a range of 50 microns to 2000
microns as would be the case if the salt particles were
impressed into the cavities.
REJECTIONS
I. Claims 72, 74, and 81 stand rejected under 35 U.S.C. § 112(a)
as failing to comply with the written description requirement. Final Act. 5.
II. Claims 53—55, 60—63, 70, 73—76, 79, and 802 stand rejected
under 35 U.S.C. 112(b) as indefinite. Id.
III. Claims 53, 60—63, 69, 70, 75, and 76 stand rejected under 35
U.S.C. § 102(b) as anticipated by De Laney et al. (US 2,434,035, iss. Jan. 6,
1948). Id. at 7.
IV. Claims 54 and 55 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over De Laney. Id. at 18.
2 The Examiner’s statement of the rejection contains a typographic error in
listing canceled claims as rejected. Claims 64—68 have been canceled.
Appeal Br. 22 (Claims App.). Further, claims 75, 76, 79, and 80 are
discussed in the body of the rejection. Final Act. 6.
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Application 11/639,017
V. Claims 72 and 74 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over De Laney and Crawley (US 5,948,707, iss. Sept. 7, 1999).
Id. at 20.
VI. Claims 77—80 stand rejected under 35 U.S.C. 103(a) as
unpatentable over De Laney and Bell (US 3,869,726, iss. Mar. 11, 1975).
Id. at 21.
VII. Claim 81 stands rejected under 35 U.S.C. 103(a) as
unpatentable over De Laney, Bell, and Crawley. Id. at 25.
ANALYSIS
Rejection I— Claims 72, 74, and 81
The Examiner determines that dependent claims 72, 74, and 81
contain subject matter that was not described in the Specification in such a
way as to reasonably convey to one skilled in the relevant art that the
inventors, at the time the application was filed, had possession of the cavities
having “four rectangular ridge sides.” Final Act. 5.
Appellants argue that “Fig. 6C clearly shows the cavities with
rectangular ridge sides, annotated with five-pointed stars.” Appeal Br. 9.
The Examiner responds that Appellants’ Specification is silent
regarding the number and shape of the cavities’ sides, because the number
and shape cannot be ascertained from the original figures alone. Ans. 2.
Appellants reply that the four rectangular sides were visible in
originally-filed Figure 1, and are now identified in the Specification’s Figure
6. Reply Br. 2—3.
The Examiner has the better argument. The sides of the cavities
shown in Figure 1 and reproduced in Figure 6A, as well as the enlargement
of a portion of Figure 1 shown in Figures 6B and 6C, do not appear to form
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Application 11/639,017
any particular ridge side shape. Even those cavities identified in Figure 6C
with five-pointed stars do not appear to form rectangular ridge sides as
claimed. Thus, even if we were to assume that new Figures 6A—6D are not
directed to new matter, lacking description in the Specification, they do not
provide support for the claimed “four rectangular ridge sides,” as they do not
render this limitation readily apparent from a review of the drawings. We
sustain Rejection I.
Rejection II— Claims 53—55, 60—63, 70, 73—76, 79, and 80
The Examiner determines that the cavities having “interior cavity
shapes conforming to exterior shapes and sizes of salt particles of diameter
in a range of 50 microns to 2000 microns as would be the case if the salt
particles were impressed into the cavities” in independent claim 53 is
indefinite because it is unclear (1) whether Appellants are claiming the salt
particles, and (2) whether the salt particles are ever “impressed into the
cavities.” Final Act. 6. According to the Examiner, using the term “if’
renders the claim indefinite, because it cannot be determined whether the
recitation following the term “if’ is positively recited —such that the metes
and bounds of the claim cannot be determined. Id.
Appellants argue that the Specification teaches that “salt. . . upon
contact with a liquid latex used in the present invention, immediately
destabili[z]es the latex to form a wet gel, and hence ‘freezes’ that shape of
the salt particle in the surface of the rubber” forming a cavity within the
recited range. Appeal Br. 10-11 (citing Spec. 116 (emphasis omitted)).
The salt is then removed by dissolution, capturing a “reverse image of the
discrete particles ... in the surface layer.” Id. at 12 (citing Spec. 125
(emphasis omitted)). According to Appellants, the Specification thus makes
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Application 11/639,017
clear that the salt is no longer present, but the salt-shape is “frozen into
place.” Id. at 11 (emphasis omitted). Appellants contend that one skilled in
the art would understand that “the size of the cavities will be coextensive
with the size of particles,” such that the claim language is definite. Id.
The Examiner responds that the claim recitation “as would be the case
if the salt particles were impressed into the cavities” does not make clear that
salt ever was, or still is, present. Ans. 2 (emphasis added). The Examiner
further responds that the recitation of the diameter and shape of salt particles
is not the same as a recitation of the diameter and shape of cavities formed
therefrom. Id.
Appellants reply that the Specification states that the salt “creates a
reverse image, such that the diameter of the salt particles is the same as the
diameter of the cavities.” Reply Br. 3.
While paragraph 16 of Appellants’ Specification indeed states that the
glove’s surface texture is a reverse image of salt particles (when salt
particles are employed), the Specification does not likewise state that the
cavities therefore have the same diameters as respective salt particles.
Further, Appellants have not persuaded us that the language “as would be
the case if the salt particles were impressed into the cavities” makes clear to
one skilled in the art a suitably definite size and shape of the outer surface
cavities, regardless of the somewhat imprecise disclosure in the original
Specification that the glove’s textured surface is produced by embedding
discrete particles (e.g., salts) that are removed by dissolving (e.g., with
water), leaving impressions (e.g., reverse images) where the discrete
particles were embedded. We discern no error in the Examiner’s
determination of indefiniteness. Accordingly, we sustain Rejection II.
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In addition, regarding claims 60, 61, 75, 76, 79, and 80, which each
recite “pinch test” results for the claimed glove, the Examiner determines
that the claims are drawn to an apparatus, but the “pinch test” suggests a
method of use, which renders the claim indefinite because a single claim
which claims both an apparatus and the method steps of using the apparatus
is indefinite under 35 U.S.C. § 112(b). Final Act. 6, Ans. 3.
Appellants argue that the “pinch test” limitation is permissible
functional language rather than impermissibly creating a single claim
including both an apparatus and a method. Appeal Br. 11. Appellants thus
argue that claims 60, 61, 75, 76, 79, and 80 could be rewritten as “wherein
the textured surface of the glove is operable to provide a [specified] grip
force using a [specified] weight.” See Reply Br. 3^4.
The Examiner does not address Appellants contention that the
language is functional. Claims 60, 61, 75, 76, 79, and 80, however, are
indefinite because they depend from an indefinite base claim.
Further, regarding claim 62, which recites the cavities having
diameters “correspondent to the [salt] particles having a mean particle size
of about 400 microns,” the Examiner determines that the claim is indefinite
because it is unclear whether Appellants are claiming that the cavities have a
diameter of 400 microns or just the particles that formed the cavities have a
diameter of 400 microns.
We agree with the Examiner. It is unclear whether Appellants are
claiming that the cavities have a diameter of 400 microns or just the particles
have a diameter of 400 microns. Thus, claim 62 is indefinite for this
additional reason.
Rejection III— Claims 53, 60—63, 69, 70, 75, and 76
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Application 11/639,017
Claims 53, 62, 64, 69, and 71
Appellants argue claims 53, 62, 64, 69, and 71 as a group. We select
independent claim 53 as representative. Claims 62, 64, 69, and 71 stand or
fall with claim 53. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that De Laney discloses gloves suitable for
providing a wet grip, comprising an outer textured layer 12 and a liquid
repellant latex layer 13 laminated interior thereof. Final Act. 7 (citing De
Laney 2:47-49, 4:34 (“two dips of solid latex”)). According to the
Examiner, the outer surface of De Laney’s outer layer is textured with “thin,
distinct ridges,” and cavities having perimeters surrounded by ridges and
“interior cavity shapes conforming to exterior shapes and sizes of salt
particles of diameter in a range of 50 microns to 2000 microns as would be
the case if the salt particles were impressed into the cavities.” Final Act. 8.
The Examiner considers the “conforming” limitation to be a product-by­
process recitation, noting that the determination of patentability must be
based on the product itself, and not on its process of production. Id.
According to Appellants, the surface texture in De Laney is created by
bursting of bubbles in air, which forms a cellular layer 12 having an “open or
lacy character” and including “cells or pits” 11. Appeal Br. 13 (citing De
Laney cols. 3—4, Figs. 2 and 3). Appellants argue that De Laney’s figures
show only two pits 11 without “a ridge about the complete circumference”
thereof, and “De Laney informs us that ‘as viewed under the microscope, the
edges of these pits are somewhat broken or ragged as a result of [the]
explosion of gas [bubbles].’” Id. at 13—14 (emphasis omitted) (citing De
Laney 2:37-41). According to Appellants, De Laney’s exploding foam
texture does not provide “the cleanly rimmed cavities claimed.” Id.
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Appellants contend that De Laney therefore does not disclose the limitations
of independent claims 53 and 69. Id. (“The lines of De Laney can just as
easily indicate the boundaries of depressions. Maybe thick lines in De
Laney are ridges (who knows?) - if so they clearly do not substantially
surround the pits.).
The Examiner responds that a ridge about the complete circumference
has not been claimed; rather, claim 53 recites the cavities’ being surrounded
by ridges “over substantially their full perimeters.” Ans. 3. Likewise, claim
53 does not recite clean (or non-broken) cavity rims. Id.
We agree with the Examiner. To the extent that the disclosure of De
Laney’s figures is less informative than Appellant’s own figures regarding
the existence and extent of cavity ridges, the argued differences between De
Laney’s and Appellants’ ridges are not recited in the claims. The claims do
not recite the ridge surrounding a complete circumference of the cavities or
the cavities being cleanly rimmed. We therefore are not persuaded that the
Examiner’s findings and determinations are in error.
Claims 63 and 70
Regarding dependent claims 63 and 70, which recite channels
between the ridges surrounding the cavities, Appellants argue that De
Laney’s exploding foam would not provide elongated channels between the
pits 11, and that De Laney’s figures provide “no instruction as to the
meaning of its shadings beyond a notation (‘11’) of two pits,” and that the
Examiner’s finding the De Laney discloses a channel is insufficient because
the alleged channel “is not even between the pits identified in Fig. 2 of De
Laney, as would be required by the current claims.” Appeal Br. 14.
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Application 11/639,017
The Examiner responds that, although De Laney does not use the term
“channel,” De Laney’s Figure 3 shows various heights and valleys, the
heights being ridges and the valleys being understandable as cavities or
channels. Ans. 3.
We agree with the Examiner. To the extent that the disclosure of De
Laney’s figures is less informative than Appellants’ figures, Appellants
provide no definition of the term “channel” that would not be met by the
areas between the ridges surrounding De Laney’s cavities; nor have
Appellants persuaded us that such areas do not exist in De Laney. We
therefore are not persuaded that the Examiner’s findings are in error.
Claims 60, 61, 75, and 76
Regarding dependent claims 60, 61, 75, and 76, which recite “pinch
test” results for the claimed glove, Appellants argue that the Examiner erred
in discounting this limitation as an intended use limitation. Appeal Br. 15—
16. Appellants admit, however, that “De Laney likely teaches a structure
that, while otherwise being very distinct from that now claimed, is at least
somewhat suitable for providing wet grip.” Id. at 12 n. 1.
Appellants have claimed a device and, although functional limitations
are permitted, the limitations must be directed to structure. Because it is
unclear precisely what structure provides the claimed pinch test results, we
are not persuaded that the claimed pinch test results are not an intended use
of Appellants’ device. Appellants have not explained how a particular
deference between Delaney’s structure and their own structure would cause
pinch test results to vary. We therefore sustain the Examiner’s rejection.
Rejection IV— Claim 54 and 55
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Appellants make no argument that claims 54 and 55 are patentable if
claim 53 is not patentable. We therefore sustain Rejection IV.
Rejection V— Claim 72 and 74
Claims 72 and 74 recite the cavities having a bottom and “four
rectangular ridge sides.” The Examiner finds that Crawley discloses a glove
with multi-faceted cavities having “a bottom (12A) and four rectangular
ridge sides (21 and 22).” Final Act. 20, 21 (citing Crawley 1:20—25, Fig. 2).
The Examiner concludes that it would have been obvious to one skilled in
the art provide De Faney’s cavities with Crawley’s rectangular ridge sides to
provide a “desired shape for the end use (e.g., increased resistance to
slippage in one direction while allowing a greater amount of slippage in
another direction.” Id. (citing Crawley 7:30-35).
Appellants argue that “nothing in the drawings of De Faney teach or
suggest cavities that have . . . four rectangular ridge sides.” Appeal Br. 17.
De Faney, however, is not relied on for disclosing rectangular ridge sides;
rather, the Examiner finds that Crawley discloses the rectangular ridge sides.
Final Act. 20. Appellants do not argue that this finding, regarding Crawley,
is in error. Appellants also argue that De Faney’s pit edges “are somewhat
broken or ragged as a result of what seems to be an effect of explosion of
gas,” which differs from “the clean geometry of four rectangular ridge sides
of cavities 40’.” Appeal Br. 17. This argument is not persuasive, because
such “clean geometry” is not recited in the pending claims. Id.
Appellants further argue that the printed grid lines of Crawley’s Fig. 2
“do not enable cavities of diameter in a range of 50 to 2000 microns that
have a bottom and four rectangular ridge sides.” Id. This argument is not
persuasive because De Faney, not Crawley, is relied on for disclosing
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cavities having a diameter in a range of 50 to 2000 microns, and Appellants
fail to explain why the Examiner errs in finding that Crawley discloses
rectangular ridge sides.
Moreover, Appellants argue that “one of skill reading the current
specification would understand cavities providing a textured surface to mean
dispersed cavities,” such that Crawley’s grid “does not provide cavities.” Id.
at 18. The Examiner responds that “dispersed cavities” is not recited in the
claims. Ans. 3. To the extent that Appellants argue that the term “cavities”
should be construed to mean “dispersed cavities,” Appellants have failed to
provide any evidence or reasoning to support such an argument, making the
argument unpersuasive. Id.
Rejection VI
Appellants make no argument that claims 77—80 are patentable if
rejection III is sustained. We therefore sustain Rejection VI.
Rejection VII
Appellants make no argument that claim 81 is patentable if rejection
V is sustained. We therefore sustain Rejection VII for the reason set forth
above regarding Rejection V.
DECISION
We AFFIRM the rejection of claims 72, 74, and 81 under 35 U.S.C. §
112(a) as failing to comply with the written description requirement.
We AFFIRM the rejection of claims 53—55, 60-63, 70, 73—76, 79, and
80 under 35 U.S.C. § 112(b) as indefinite.
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We AFFIRM the rejection of claims 53, 60—63, 69, 70, 75, and 76
under 35 U.S.C. § 102(b) as anticipated by De Laney.
We AFFIRM the rejection of claims 54 and 55 under 35 U.S.C. §
103(a) as unpatentable over De Laney.
We AFFIRM the rejection of claims 72 and 74 under 35 U.S.C. §
103(a) as unpatentable over De Laney and Crawley.
We AFFIRM the rejection of claims 77—80 under 35 U.S.C. § 103(a)
as unpatentable over De Laney.
We AFFIRM the rejection of claim 81 under 35 U.S.C. § 103(a) as
unpatentable over de Laney, Bell, and Crawley.
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.
§ 41.50(f).
AFFIRMED
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