Ex Parte GOINS et al

Patent Trial and Appeal Board

Nov 15, 2018

12061068 (P.T.A.B. Nov. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/061,068 04/02/2008 Matthew GOINS
22465 7590 11/19/2018
PITTS & LAKE P C
PO BOX 51295
KNOXVILLE, TN 37950-1295
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.
33651.00 7862
EXAMINER
LOCKETT, KIMBERL YR
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
11/19/2018 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@pl-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW GOINS and ALLEN GOINS
Appeal2017-002861
Application 12/061,068
Technology Center 2800
Before JOHN P. PINKERTON, JON M. JURGOVAN, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Non-Final
Rejection of claims 1-17. An oral hearing was held on November 7, 2018.
A transcript of the hearing will be made of record in due course. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 According to the Appeal Brief, the real parties in interest are the inventors,
Matthew Goins and Allen Goins. Br. 3.
Appeal2017-002861
Application 12/061,068
BACKGROUND
THE INVENTION
According to Appellants, the invention relates to "a pick for
strumming, picking, and plucking a stringed instrument." Spec. ,r 3.
Exemplary independent claim 1 is reproduced below.
1. A pick for use with a stringed instrument, said pick being
constructed of a material comprising:
a polyimide material characterized by a ring-shaped
molecular structure containing nitrogen.
REFERENCES AND REJECTIONS
1. Claims 3, 13, and 17 stand rejected under 35 U.S.C. § 112, first
paragraph (pre-AIA), as failing to comply with the written description
requirement. Non-Final Act. 2.
2. Claims 1, 2, 4--12, and 14--16 stand rejected under 35 U.S.C.
§ I03(a) over Rios (US 2007/0148409 Al, June 28, 2007) and Kishimoto
(JP 2000-104083 A; Apr. 11, 2000). 2 Non-Final Act. 2-5.
DISCUSSION
REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
Claims 3, 13, and 17 recite "poly-oxydiphenylene-pyromellitimide."
The Examiner finds "poly-oxydiphenylene-pyromellitimide" is not found in
the original Specification and, thus, concludes the Appellants did not have
2 The statement of rejection in the Non-Final Office Action indicates that
claim 3 is rejected under 35 U.S.C. § I03(a). See Non-Final Act. 2. The
Examiner, however, does not address claim 3 under 35 U.S.C. § I03(a).
Therefore, we treat the inclusion of claim 3 in the rejection under 35 U.S.C.
§ I03(a) as error.
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Application 12/061,068
possession of the invention as claimed at the time of filing the application.
Non-Final Act. 2.
Appellants argue that the original Specification does support the
recitation of "poly-oxydiphenylene-pyromellitimide" because the original
Specification discloses "Vespel®, Meldin®, and Plavis®" which, according
to Appellants, are trademarks referring to materials containing ring-shaped
polyimides, including "poly-oxydiphenylene-pyromellitimide." Br. 12.
Appellants submit an affidavit3 supporting the contention that Vespel®,
Meldin®, and Plavis® refer to materials fabricated from poly-
oxydiphenylene-pyromellitimide. Matthew Goins Aff. ,r 10.
The Examiner was "unable to locate any technical information that
indicates that the trademarks recited in the originally recited claims are
defined as poly-oxydiphenylene-pyromellitimide" and, therefore, maintains
the rejection. Ans. 8.
We are persuaded by Appellants' argument. The Examiner
erroneously gives little to no weight to the affidavit submitted by Appellants,
which provides support for the fact that the trademarks Vespel®,
Meldin®, and Plavis® associated with materials that include poly-
oxydiphenylene-pyromellitimide.
Accordingly, we do not sustain the Examiner's rejection of claims 3,
13, and 17.
3 Affidavit of Matthew Goins, filed under 37 C.F.R. § 1.132 (dated Sept. 8,
2011) ("Matthew Goins Aff.").
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Appeal2017-002861
Application 12/061,068
REJECTIONS UNDER 35 U.S.C. § 103(a)
Claims 1, 7-12, and 14-16
The Examiner finds Rios discloses a guitar pick constructed of a
plastic material that can include a polyimide material. Non-Final Act. 3
( citing Rios ,r,r 86, 119).
Appellants argue:
Rios does not disclose the use of a guitar pick which is
constructed of a plastic material, as is stated in the Office Action.
Rather, Rios is directed to a silicone grip pad consisting of a
silicone film layer which, when combined with an adhesive
backing layer, can be adhered to nearly any surface to increase
the gripping characteristics of the surface.
Br. 16. According to Appellants, Rios' s discussion of polyimide film refers
to the backing layer of the silicone grip and "has nothing to do with the
manufacture or use of a guitar pick." Br. 17; see also Br. 17-18 ("The
disclosure of Rios is completely unrelated to the manufacture, composition,
or use of guitar picks, and Rios only mentions 'guitar picks' as an example
of an object on which a silicon grip pad may be attached.").
We are unpersuaded by Appellants' argument. Claim 1 recites a "pick
being constructed of a material comprising: a polyimide material .... "
Claims 12 and 16 similarly recite a "pick being constructed of a polyimide
material." These claims, however, do not require the picks to be made
solely or integrally of a polyimide material. Rios discloses a silicon grip
with a backing layer that comprises polyimides. See Rios ,r 80. The backing
layer is not simply an adhesive layer. Rios discloses that the backing layer
can enhance the mechanical strength, toughness, moldability, tear resistance
and other properties of the silicone layer. Rios ,r 79. The backing layer
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Appeal2017-002861
Application 12/061,068
remains an integral part of the silicone grip. 4 Thus, by disclosing a guitar
pick with Rios' s silicone grip, we agree with the Examiner that Rios
discloses a guitar pick constructed of a material comprising a polyimide
material.
Accordingly, we sustain the Examiner's rejection of claims 1, 12, and
16 under 35 U.S.C. § 103(a). Appellants do not argue claims 7-11, 14, and
15, separately; thus, we also sustain the Examiner's rejection of these claims
under 35 U.S.C. § 103(a).
Claims 2 and 5
Although Appellants argue claims 2 and 5 separately, they rely on
largely the same arguments presented for claims 1, 12, and 16 that we
addressed above. See Br. 18-19. We do not find these arguments to be
persuasive. Thus, we sustain the Examiner's rejection of claims 2 and 5.
Claim 4
Claim 4 depends from claim 1 and recites "wherein said pick is
constructed of a material additionally comprising graphite."
The Examiner does not present any findings regarding claim 4' s
requirement that the pick additionally comprises graphite. See Non-Final
Act. 4--5. Thus, we do not sustain the Examiner's rejection of this claim.
4 At the hearing, Appellants argued that the backing layer of Rios's silicone
grip is a layer that is peeled off when the grip is attached to the guitar pick.
This argument was not made in the briefs and is, thus, waived. We note,
however, that Appellants' argument is not consistent with Rios's disclosure.
Rios does not indicate that the backing layer is peeled off. Instead it is the
"release layer" that is removable. See Rios Fig. 4, ,r 78.
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Application 12/061,068
Claim 6
Claim 6 depends from claim 1 and recites "wherein said pick is
constructed of a material additionally comprising molybdenum disulfide."
The Examiner finds "the use of molybdenum disulfide ( claim 6) is
conventional and well known filler." Non-Final Act. 4. Appellants argue
the Examiner "has provided no substantial evidence to support the assertion
that 'the use of molybdenum disulfide ( claim 6) is conventional and well
known filler."' Br. 20. We agree with Appellants that the Examiner has not
supported the rejection with sufficient evidence or reasoning.
Accordingly, we do not sustain the Examiner's rejection of claim 6.
DECISION
The Examiner's rejection of claims 3, 13, and 17 under 35 U.S.C.
§ 112, first paragraph, is reversed.
The Examiner's rejections of claims 1, 2, 5, 7-12, and 14--16 under 35
U.S.C. § 103(a) is affirmed.
The Examiner's rejection of claims 4 and 6 under 35 U.S.C. § 103(a)
is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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