14052209 (P.T.A.B. Sep. 27, 2018)

Ex Parte Lefrancois

Patent Trial and Appeal BoardSep 27, 2018

14052209 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/052,209 10/11/2013 3017 7590 09/28/2018 BARLOW, JOSEPHS & HOLMES, LTD. 101 DYER STREET 5THFLOOR PROVIDENCE, RI 02903 FIRST NAMED INVENTOR Michael P. Lefrancois JR. 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. L052 P02609-US2 2944 EXAMINER SUTTON, ANDREW W ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 09/28/2018 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 Ex parte MICHAEL P. LEFRANCOIS JR. Appeal2017-008540 Application 14/052,209 Technology Center 3700 Before CHARLES N. GREENHUT, JAMES P. CALVE, and JEFFREY A. STEPHENS, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Empial III, LLC ("Appellant") 1 seeks our review under 35 U.S.C. Â§ 134(a) from the Examiner's Final Office Action ("Final Act.") rejecting claims 1--4 and 7-10, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 Appellant is the applicant pursuant to 37 C.F.R. Â§ 1.46. The real party in interest is identified as Empial, LLC. Br. 1. Appeal2017-008540 Application 14/052,209 Claimed Subject Matter Claims 1 and 10 are independent. Claim 1, reproduced below, illustrates the claimed subject matter. 1. A disposable protective cover for use on a user's finger while said user is eating, the cover comprising: a flexible sheet having a front surface, a rear surface, and an elongated central body portion; the central body portion having an upper end, a lower end, a left side, and a right side; the elongated central body portion having approximately the same length and width as the finger; said flexible sheet further having an upper tab extending longitudinally from the upper end of the central body portion; a lower tab extending longitudinally from the lower end of the central body portion; a left tab extending from the left side of the central body portion; a right tab extending from the right side of the central body portion; a pressure sensitive adhesive covering at least one adhesive region on the rear surface of the flexible sheet; and a release sheet received over the pressure sensitive adhesive, said front surface of said flexible sheet being a grease resistant surface for repelling grease and sauces from food being handled by the user, said cover being configured and arranged to be donned on the user's finger with the release sheet removed from the rear surface to expose the adhesive, the user's finger is placed onto the central body portion with a fingertip adjacent the upper end thereof and the lower tab extending onto a palm of the user, the upper tab folded over the fingertip, and the left and right tabs wrapped circumferentially around the finger, said pressure sensitive adhesive adhering the central body portion and the respective tabs to the finger to maintain the cover on the finger. 2 Appeal2017-008540 Application 14/052,209 Rejection Claims 1--4 and 7-10 stand rejected under pre-AIA 35 U.S.C. Â§ I03(a) as unpatentable over Blette (US 2004/0010217 Al, published Jan. 15, 2004) and Coubetergues (US 2011/0137269 Al, published June 9, 2011). Final Act. 2-6. DISCUSSION The Examiner finds Blette teaches a finger cover meeting all limitations of claim 1 except for an upper tab extending longitudinally from the upper end of the central body portion and a lower tab extending longitudinally from the lower end of the central body portion. Id. at 2-3. The Examiner finds Coubetergues teaches an upper and lower tab on a finger cover, and that "[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to modify the teaching of Blette with the [teachings ofJ Coubetergues in order to fully enclose the finger providing further protection from injury." Id. at 4. Appellant argues "this modification would be inconsistent with Blette because [the cover] would then cover critical sensory and tactile portions of the user's finger, especially the finger tip," and Blette teaches the purpose of the invention disclosed therein is to enhance tactile acuity. Br. 7 ( citing Blette para. 26). Blette teaches a fingertip gripping pad "for enhancing the frictional interface between a portion of the user's appendage (i.e., a finger) and an article being manipulated by the user." Blette para. 25. Blette states that the invention "does not cover the entire hand or even an entire finger (like a typical finger cot or glove), thereby allowing some finger exposure for tactile feel of a tool or ball." Id. at para. 26. 3 Appeal2017-008540 Application 14/052,209 In light of Blette' s teachings highlighted above, we are persuaded that the Examiner's reasoning for combining Blette with Coubetergues, namely "in order to fully enclose the finger providing further protection from injury," Final Act. 4, is insufficient in this case. The Examiner's finding in the Answer that "adding the functional pad 18 to the tip of the finger would provide more area for the tactile acuity to be enhanced," Ans. 2, contradicts Blette' s teaching in paragraph 26 that tactile feel depends on finger exposure and is preserved by not covering the entire finger. Although Appellant does not dispute that one of ordinary skill in the art would have wanted to prevent injury by enclosing the finger, we agree with Appellant that Blette's teachings would have undermined the motivation to cover the entire finger. See Br. 7. Because the Examiner's reasoning and Blette's teachings contradict to some extent, and we do not discern in the record findings or reasoning as to how one of ordinary skill in the art might have weighed the advantage of preserving Blette' s tactile acuity against adding further protection from injury, we do not sustain the rejection of claim 1 under 35 U.S.C. Â§ 103(a) as unpatentable over Blette and Coubetergues. See Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another."). In view of the foregoing, we do not sustain the rejection of claim 1. The rejection of independent claim 10 is based upon the same findings and reasoning. See Final Act. 4--6. Thus, for the same reasons as claim 1, we do not sustain the rejection of claim 10 and dependent claims 2--4 and 7-9. 4 Appeal2017-008540 Application 14/052,209 DECISION We reverse the Examiner's decision to reject claims 1--4 and 7-10 under 35 U.S.C. Â§ 103(a). REVERSED 5