Ex Parte Hatfield

Patent Trial and Appeal Board

Mar 28, 2017

12869827 (P.T.A.B. Mar. 28, 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.
12/869,827 08/27/2010 Michelle Renee Hatfield COHE-0001 8588
37013 7590 03/30/2017
Rossi, Kimms & McDowell LLP
20609 Gordon Park Square
Suite 150
Ashburn, VA 20147
EXAMINER
SZAFRAN, BRIE ANNA TARAH LARELL
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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):
mail@rkmllp.com
EOfficeAction@rkmllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHELLE RENEE HATFIELD
Appeal 2015-004197
Application 12/869,827
Technology Center 3700
Before MICHAEL L. HOELTER, JEFFREY A. STEPHENS, and,
ERIC C. JESCHKE, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s Final rejection of claims 16, 18, 19, 21, 22, 24—26, and 28. Final
Act. 2; see also App. Br. 6. Claims 1—15, 17, 20, 23, and 27 have been
canceled. Final Act. 2; see also App. Br. 6. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-004197
Application 12/869,827
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a glove for operating an
electronic device, particularly a device with a touchscreen.” Spec. 12.
Claim 28 is the sole independent claim, is illustrative of the claims on
appeal, and is reproduced below.
28. A glove comprising a plurality of fingertips with an outer
surface and an inner surface,
wherein the fingertips comprise a pad, a back, at least
one side, and a distal-most tip, arranged such that the pad of the
fingertip is contiguous to the at least one side of the fingertip,
the pad is further contiguous to the distal-most tip of the
fingertip and the distal-most tip of the fingertip is contiguous to
the back of the fingertip,
wherein at least one of the fingertips comprises an
embroidered area that comprises conductive thread that
establishes a conductive pathway from the inner surface of the
fingertip to the outer surface of the fingertip,
and wherein said embroidered area forms a substantially
continuous conductive region covering at least a portion of the
pad and at least a portion of the distal-most tip of the at least
one of the fingertips and the embroidered area covering at least
a portion of the distal-most tip of the at least one of the
fingertips has a narrower width than the embroidered area on
the pad of the at least one of the fingertips.
REFERENCES RELIED ON BY THE EXAMINER
Vaughn US 385,154 June 26, 1888
Dolenak US 2008/0109933 A1 May 15, 2008
Hotani JP 2008-81896 A April 10,2008
(“Hotani/Santo”)1
1 Both the Examiner and Appellant identify this reference as “Hoya/Santo.”
The named inventors are Katsumi Hotani and Kiichi Santo. We employ
“Hotani/Santo” instead.
2
Appeal 2015-004197
Application 12/869,827
I Heart Switch, Stay warm and keep in touch by iPod proofing your
gloves this winter, Switch Blog,
http://www.iheartswitch.com/blog/stay-warm-and-keep-touch-ipod-
proofmg-your-gloves, last visited March 2017.
Clemens Winkler, Digital Traces, Industrial Design, School of Art
and Design, Winter Term 2008, http://clemenswinkler.com/skin, last
visited March 2017 (hereinafter “ClemensWinkler.com”).
THE REJECTIONS ON APPEAL
Claims 16, 21, 25, 26, and 28 are rejected under 35 U.S.C. § 102(b) as
anticipated by Hotani/Santo.
Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hotani/Santo, Switch Blog, and Vaughan.
Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hotani/Santo and ClemensWinkler.com.
Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hotani/Santo and Dolenak.
ANALYSIS
The rejection of claims 16, 21, 25, 26, and 28
as anticipated by Hotani/Santo
Appellant argues these claims together. App. Br. 11—17. We select
independent claim 28 for review, with the remaining dependent claims
standing or falling with claim 28. See 37 C.F.R. 41.37(c)(l)(iv).
Claim 28 includes the limitation that the conductive, embroidered area
on the glove covers “at least a portion of the pad and at least a portion of the
distal-most tip of the at least one of the fingertips.” The Examiner finds that
this is disclosed in Hotani/Santo via embroidered area 11, particularly noting
“index finger (14).” Final Act. 7. Appellant disagrees stating,
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Appeal 2015-004197
Application 12/869,827
“[Hotani]/Santo only teaches application of its ‘conductor’ on the pad of the
fingertip, and not the distal-most tip of the fingertip.” App. Br. 12.
To better explain the Examiner’s findings and the Appellant’s
disagreement therewith, we replicate the Examiner’s annotation of Figure 1
of Hotani/Santo below.
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Application 12/869,827
The above Figure 1 of Hotani/Santo has been annotated by the
Examiner to identify a glove whose index finger 14 includes a pad, an
embroidered area (11) and a distal-most tip. Final Act. 8; see also App. Br.
13.
As indicated by the Examiner, the focus is on index finger 14, which,
according to the Examiner, teaches the above claim limitation. Final Act. 6—
7; see also Ans. 3^4. As also indicated above, Appellant disputes that the
embroidered area 11 can be said to “cover [] at least a portion of the distal-
most tip” as claimed. App. Br. 12.
The focus, thus, is what figure 1 of Hotani/Santo can be said to teach,
and more specifically, the index finger illustrated therein.2 This is because
we note that the other, non-index finger depictions show embroidered area
11 recessed somewhat from the distal-most tip (i.e., “below the distal-most
tip”). App. Br. 14; see also Reply Br. 5. However, with respect to index
finger 14, this area 11 is depicted as extending to its distal-most tip.
Appellant does not explain how area 11 associated with index finger 14, and
which is shown as extending to the distal-most tip of index finger 14, fails to
teach the limitation regarding such area covering “at least a portion of the
distal-most tip” of the index finger. Ans. 4. In view of this depiction of
Hotani/Santo’s glove, we disagree with Appellant that “Figure 1 of
[Hotani]/Santo shows conductors 11 positioned only on the pads of
fingertips 13, 14, 15, 16, and 17 of glove 12.” App. Br. 13 (emphasis
added).
2 We have been instructed, “[description for purposes of anticipation can be
by drawings alone as well as by words.” In re Mraz, 455 F.2d 1069, 1072
(CCPA 1972) {quoting In re Bager, 47 F.2d 951 (CCPA 1931)).
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Application 12/869,827
Appellant further contends, “the [EJxaminer confuses the top of the
pad of the fingertips, which is covered by the conductor [] with the distal-
most tip of the fingertips.” App. Br. 14. We disagree. Appellant’s
Specification employs the claim term “distal-most” as meaning “where the
distal portion of fingertips [] are located.” Spec. 18, 24. Employing such
an understanding, Appellant does not explain how area 11 shown with
respect to index finger 14 of figure 1 of Hotani/Santo is not at the distal
portion of that fingertip. Ans. 4.
Appellant also contends that the claimed distal-most tip area “is in a
different plane than that of the pad” and that there is no teaching of this in
Hotani/Santo. App. Br. 14—16; see also Reply Br. 4—5. The Examiner,
however, correctly states that this feature (i.e., the tip and the pad being in
different planes) is not claimed. Ans. 4. Although Appellant seeks to limit
the claim language to such an arrangement (App. Br. 14—16; see also Reply
Br. 4—5), we cannot read unclaimed features from the Specification into the
claims, or limit the claims to particular embodiments, if the claim language
is broader. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993);
SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).
Appellant further contends that Hotani/Santo “fails to disclose the
more specific shape of Applicant’s claimed ‘continuous conductive region.’”
App. Br. 16; see also Reply Br. 6. We note, however, that the only
limitation directed to a shape is that the embroidered area at the distal-most
tip “has a narrower width than the embroidered area on the pad” of the
fingertip. On this point, the Examiner again references the annotated
drawing stating, “an edge of the circular region . . . would have a narrower
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Application 12/869,827
width than that of the diameter of the circular region as indicated as the
‘pad.’” Ans. 4. Appellant does not explain how the width of a chord of a
circle spaced adjacent its perimeter (i.e., at the “distal-most tip”) is not
narrower than the width of the circle’s diameter (at the glove’s “pad”).
Appellant further contends that even if the embroidered area 11 of
Hotani/Santo “were considered to cover at least a portion of the distal-most
tip of the fingertip, at least part of the wider portion would also cover part
of the distal-most tip of the fingertip.'1'’ App. Br. 16; see also Reply Br. 6
(emphasis added). Presuming for the sake of argument that the distal-most
tip contains multiple portions of different widths, nevertheless, each such
portion at this distal-most tip would still be narrower than the diameter of the
circle located at the glove’s pad.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 16, 21, 25, 26, and 28 as being anticipated by
Hotani/Santo.
The rejection of claims 18 and 19
as unpatentable over Hotani/Santo, Switch Blog, and Vaughan
Appellant does not address the additional limitations of dependent
claims 18 and 19, but instead repeats allegations regarding parent claim 28
(which have been previously addressed). See App. Br. 19-20; see also
Reply Br. 8. When Appellant addresses the additional references to Switch
Blog and Vaughan, it is with respect to limitations different from the
limitations identified by the Examiner that these additional references teach.
App. Br. 20-21; see also Reply Br. 7; Final Act. 11—13. For example,
Appellant contends that Switch Blog fails to teach an embroidered area
covering at least a portion of the distal-most tip that is narrower than the
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Application 12/869,827
embroidered area on the pad. App. Br. 20; see also Reply Br. 7. The
Examiner did not rely on Switch Blog for this limitation. See Final Act. 11;
see also Ans. 7. Also, regarding Vaughan, Appellant seeks to incorporate
the depicted style of stitching into the cited combination of Hotani/Santo,
Switch Blog, and Vaughan, thereby concluding that such stitching “raise[s]
the fabric away from the nails” rendering the combination unsuitable. Reply
Br. 7; see also Reply Br. 8. Vaughan was cited for teaching that the
embroidered area can be extended to include a back side of the fingertip.
Final Act. 12; see also Ans. 7. Hence, Appellant’s attempt to bodily
incorporate actual structure from Vaughan, and not its teaching of being able
to extend the conductive area to the back of the fingertip, is not persuasive of
Examiner error.3
Accordingly, based on the record presented, we sustain the
Examiner’s rejection of claims 18 and 19 as being obvious over
Hotani/Santo, Switch Blog, and Vaughan.
The rejection of claim 22
as unpatentable over Hotani/Santo and ClemensWinkler.com
Here, rather than address the additional limitations recited in
dependent claim 22, Appellant reiterates the argument that “[Hotani]/Santo
fails to teach or suggest certain limitations of [parent] claim 28.” App. Br.
23; see also App. Br. 24. When addressing the additional reference to
3 Appellant asserts that “none of the three cited references” (including
Vaughan) teaches that the embroidered area can extend “to include at least a
portion of the back of the at least one of the fingertips.” App. Br. 21. We
are not certain how Appellant can make such statement in view of
Vaughan’s figures, which depict embroidered areas fully around or
circumnavigating the fingertips. See Vaughn Figs. 1—3.
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Application 12/869,827
ClemensWinkler.com, again, Appellant contends that this reference does not
disclose a limitation in claim 28, for which it was not referenced. App. Br.
24; see also Final Act. 14. Accordingly, we are not persuaded the Examiner
erred or that “[Hotani]/Santo and ClemensWinker.com fail to teach or
suggest all of the limitations of independent claim 28” as asserted by
Appellant. App. Br. 25. We sustain the Examiner’s rejection of claim 22.
The rejection of claim 24
as unpatentable over Hotani/Santo and Dolenak
Similar to the above, rather than address the additional limitations
recited in dependent claim 24, Appellant reiterates the argument that
“[Hotani]/Santo fails to teach or suggest certain limitations of [parent] claim
28.” App. Br. 26; see also App. Br. 27. When addressing the additional
reference to Dolenak, again, Appellant contends that this reference does not
disclose a limitation in claim 28, for which it was not referenced. App. Br.
27—28; see also Final Act. 14. Accordingly, we are not persuaded the
Examiner erred or that “[Hotani]/Santo and Dolenak fail to teach or suggest
all of the limitations of independent claim 28” as asserted by Appellant.
App. Br. 28. We sustain the Examiner’s rejection of claim 24.
DECISION
The Examiner’s rejections of claims 16, 18, 19, 21, 22, 24—26, and 28
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)(l)(iv).
AFFIRMED
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