Ex Parte Parker

Board of Patent Appeals and Interferences

Aug 29, 2012

11651853 (B.P.A.I. Aug. 29, 2012)

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.
11/651,853 01/11/2007 Val Parker 2207
7590 08/30/2012
Val Parker
7 Squire Lane
Pittsford, NY 14534
EXAMINER
MORAN, KATHERINE M
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
08/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VAL PARKER
____________

Appeal 2010-003431
Application 11/651,853
Technology Center 3700
____________

Before GAY ANN SPAHN, WILLIAM V. SAINDON, and
PATRICK R. SCANLON, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Val Parker (Appellant) seeks our review under 35 U.S.C. § 134 of the
Examiner’s rejection of claims 25-30. Appellant cancelled claims 1-24. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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THE CLAIMED SUBJECT MATTER
Claim 25 (the sole independent claim), reproduced below, is
representative of the subject matter on appeal.
25. A disposable moisture absorbent glove
insert is made of moisture pervious material in the
form of a fingers glove arranged to be worn
directly on a wearer's hand between the hand and
any other type of glove to remove from the surface
of the skin sweat and the like produced by human
hands and be disposed off[1] thereafter.

THE REJECTIONS
The following Examiner’s rejections are before us for review.2
(1). Claim 29 is rejected under 35 U.S.C. § 112, second paragraph,
as indefinite for failing to particularly point out and distinctly claim the
subject matter which Appellant regards as the invention.
(2). Claims 25-28 and 30 are rejected under 35 U.S.C. § 102(b) as
anticipated by Schryver (US 6,269,487 B1, issued Aug. 7, 2001).
(3). Claims 25, 28, and 29 are rejected under 35 U.S.C. § 102(b) as
anticipated by Andrews (US 5,437, 621, issued Aug. 1, 1995).

OPINION
Rejection (1) – Indefiniteness under 35 U.S.C. § 112, second paragraph
Claim 29 depends from claim 28 which in turn depends from
independent claim 25. App. Br., Clms. App’x. Claim 28 calls for the glove

1 It appears that the word “off” should be changed to --of-- for proper
grammar.
2 We alter the order of the rejections as set forth in the Answer (see Ans. 3-
5) to facilitate our analysis.
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insert to comprise any one of or any combination of an outer shell made of
non-woven flexible material, an inner shell made of fluid pervious cover-
stock, and an absorbent core disposed between the inner and outer shell. Id.
Claim 29 calls for the glove insert to further comprise a fluid-acquisition
layer interposed between the core and the inner shell. Id.
The Examiner “interpret[s claim 28] as reciting a non-woven
material.” Ans. 5. Thus, the Examiner states that “the scope of claim 29 is
indefinite because it positively recites the core layer and cover-stock inner
layers.”
Appellant argues that claim 29 particularly points out and distinctly
claims the subject matter which Appellant regards as the invention. Reply
Br. 10.
We understand the Examiner to be saying that claim 29’s recitation of
“said core and cover-stock inner layer” lacks antecedent basis. However,
these terms appear to be in reference to the “absorbent core” and “inner shell
that is made of … cover-stock” of claim 28, respectively. The failure to
provide explicit antecedent basis for terms does not always render a claim
indefinite. If the scope of a claim would be reasonably ascertainable by
those skilled in the art, then the claim is not indefinite. See Energizer
Holdings Inc. v. Int'l Trade Comm'n, 435 F.3d 1366 (Fed. Cir. 2006); see
also Ex parte Porter, 25 USPQ2d 1144, 1145 (BPAI 1992). Here, the
Examiner has not persuasively set forth why a person of ordinary skill in the
art would not be able to reasonably ascertain the scope of claim 29.
Accordingly, we do not sustain the Examiner’s rejection of claim 29
under 35 U.S.C. § 112, second paragraph, as indefinite.
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Rejection (2) – Anticipation based on Schryver
Independent claim 25 and dependent claims 26, 27, and 30
Appellant argues claims 25-27 and 30 as a group and we select
independent claim 25 as the representative claim. See App. Br. 12-13 and
Reply Br. 4-6 and 8; see also 37 C.F.R. 41.37(c)(1)(vii) (2011). Claims 26,
27, and 30 stand or fall with claim 25.
The Examiner finds that Schryver teaches each and every limitation to
anticipate claim 25. Ans. 3-4. In particular, the Examiner finds that
“Schryver teaches a disposable moisture absorbent glove insert made of
moisture-pervious material (col. 2, lines 7-9),” because Schryver’s “water
absorbent material is considered to be moisture pervious.” Ans. 3-5.
Appellant sets forth four arguments. App. Br. 12-13; Reply Br. 4-6.
First, Appellant argues that “‘[t]he water absorbent liner’ (col.2, Lines7-9)
in the back of a palm portion of the Schryver tennis glove is not made of
moisture pervious material and . . . the entire tennis glove is not made to be
disposable water pervious article.” App. Br. 12.
As Appellant’s Specification does not assign or suggest a particular
definition to the claim term “moisture pervious,” it is appropriate to consult
a general dictionary definition of the word for guidance in determining the
ordinary and customary meaning of the claim term as viewed by a person of
ordinary skill in the art. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348
(Fed. Cir. 2010). The ordinary and customary meaning of the word
“moisture” is “a small quantity of liquid, especially water,” and the ordinary
and customary meaning of the word “pervious” is “admitting of passage or
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entrance; permeable.”3 Thus, a person of ordinary skill in the art would
understand a material that is “moisture pervious” to be a material through
which a small quantity of liquid, especially water, can pass.
Schryver discloses a glove 10 having a palm portion 12, the back of
which “can be lined with water absorbent material for absorbing
perspiration.” Schryver, col. 1, l. 55 and col. 2, ll. 7-9. A person of ordinary
skill in the art would find that Schryver’s water absorbent material for
absorbing perspiration is a material through which a small amount of liquid,
especially water, can pass and thus, meets the claim terminology of a
“moisture pervious material.” Appellant merely argues that Schryver’s
water absorbent material is not a moisture pervious material, but fails to
explain why. Consequently, we are not persuaded of error in the Examiner’s
rejection by Appellant’s first argument.
Second, Appellant argues that Schryver’s “sports glove [is] made to
be long lasting, liquid repellent, strong, and durable” in contrast to the
present Specification’s description of an “absorbent, thin, and eas[ily]
dispensable . . . disposable glove insert.” App. Br. 13.
We understand Appellant to be arguing that Schryver’s glove 10 is not
disposable. We agree with the Examiner’s response that “any glove is
considered to be disposable since the term does not lend any structure to the
glove which would define over the prior art.” Accordingly, we do not find
error in the Examiner’s rejection based upon Appellant’s second argument.

3 “moisture” and “pervious,” Dictionary.com Unabridged, accessed at
www.dictionary.reference.com, Random House, Inc., (last viewed: August
23, 2012).
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Third, Appellant argues that “[f]unctionality, design, and materials of
Schryver’s ‘Tennis glove’ have no common attributes that may characterize
it as a moisture absorbent disposable glove insert that is designed to be worn
between the hand and any other type of glove to remove from the surface of
the skin sweat of human hands” as called for in claim 25. Id.
Appellant merely recites some of the limitations set forth in claim 25
and baldly alleges that the cited reference does not teach these limitations.
App. Br. 16. This vague statement does not constitute a separate argument
for patentability of claim 25 pursuant to 37 C.F.R. § 41.37(c)(1)(vii). See In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board had
reasonably interpreted 37 C.F.R. § 41.37(c)(1)(vii) as requiring “more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art”). Appellant’s statement does not specifically address
the Examiner's findings and the teachings of Schryver (Ans. 3-4) or point
out why they are in error. Accordingly, we do not find error in the
Examiner’s rejection based upon Appellant’s third argument.
Finally, Appellant cites to 35 U.S.C. § 101 and argues that “the
composition of matter in terms of construction elements specified in the
application [is] significantly different from the composition of matter [as]
described in the Schryver et al. [patent].” Reply Br. 4-6.
We are not persuaded by Appellant’s last argument for the following
reasons. The Examiner has not made a rejection under 35 U.S.C. § 101. It
appears that Appellant refers to 35 U.S.C. § 101 in order to categorize the
claimed subject matter as a composition of matter, but the claimed subject
matter is not a composition of matter, but rather an article of manufacture.
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Moreover, the fact that Appellant defines materials in the Specification that
are different from the materials of Schryver is not dispositive since
Appellant’s claim 25 only recites a “moisture pervious material” and
Schryver’s water absorbent material satisfies this claim limitation.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 25, and claims 26, 27, and 30 dependent thereon, under
35 U.S.C. § 102(b) as anticipated by Schryver.
Dependent claim 28
Claim 28’s limitations are discussed supra.
The Examiner finds that “[t]he glove includes an outer shell 12
formed from non-woven flexible material (latex or leather) as well as a
moisture-pervious cover-stock lining the back of the palm portion 12. Ans.
4.
Appellant argues that Schryver’s glove cannot “be defined as a glove
insert that comprises of any individual or combination of therewith
elements: an outer shell that is made of non-woven flexible material, an
inner shell that is made of fluid pervious cover-stock, and an absorbent core
interposed therebetween.” App. Br. 13.
We do not agree with Appellant’s argument, because statements
baldly submitting that limitations are not present in the prior art are not
persuasive as to error on the part of the Examiner when the Examiner has
specified portions of the prior art that describe those limitations. See Lovin,
652 F.3d at 1357 (“[T]he Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.”). Indeed, since the Examiner has specified that
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the front of Schryver’s palm portion 12 being made of latex or leather
constitutes the claimed “outer shell that is made of non-woven flexible
material” and that the back of Schryver’s palm portion 12 being made of a
moisture absorbent material constitutes the claimed “inner shell that is made
of fluid pervious cover-stock,” we sustain the Examiner’s rejection of claim
28 under 35 U.S.C. § 102(b) as anticipated by Schryver.
Rejection (3) – Anticipation based on Andrews
Independent claim 25
The Examiner finds that Andrews teaches each and every limitation to
anticipate claim 25. Ans. 4. In particular, the Examiner finds that Andrews
discloses his “glove comprises an outer shell made from non-woven material
54, an inner shell formed from fluid pervious cover stock 50, and absorbent
core 52 interposed therebetween.” Id.
Appellant notes that Andrews’s “inner layer 50 comprises a porous,
non-adherent polyethylene film which enable[s] moisture to be wicked
away,” “the middle layer 52 comprises an absorbent needle-punched
material for absorbing any moisture from the inner layer 50,” and the “outer
layer 54 comprises a flexible, waterproof and breathable material such as
polyurethane film which protects the injury from exposure to contaminants.”
App. Br. 13-14 (citing to Andrews, col. 3, ll. 38-42 and 62-64, and col. 4, ll.
8-9). Appellant also notes that the Specification indicates that the outer shell
6 is formed of a flexible material such as non-woven spunbond-meltblown-
spunbond (SMS) material sold under the trade designation polypropylene
and the absorbent core 8 is made of any suitable construction such as
cellulosic fiber. App. Br. 14 (citing to Spec. 3, ll. 13-17 and 20). Based on
Andrews’s disclosure and the Specification’s disclosure, Appellant argues
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that the chosen fabrics in each case demonstrate significant differences in
application of the article. App. Br. 14-15.
We are not persuaded by Appellant’s argument. Appellant appears to
be arguing the intended use of the glove insert and “[i]t is well settled that
the recitation of a new intended use for an old product does not make a claim
to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997) (citations omitted). Therefore, regardless of the manner or
method in which the glove is to be utilized, it is not germane to the issue of
patentability of the glove itself. See In re Casey, 370 F.2d 576, 580 (CCPA
1967). In other words, a term that “is merely a statement of intended use…
does not qualify or distinguish the structural apparatus claimed over the
reference.” In re Sinex, 309 F.2d 488, 492 (CCPA 1962).
Appellant also argues that “the invention contains unique features that
makes it essentially different from . . . Andrew[s’s] medical dressing” and
then Appellant quotes from the Specification at page 3, lines 23-28. App.
Br. 15.
We are not persuaded by Appellant’s argument because Appellant is
arguing disclosure from the Specification, but it is the language of the claims
that must patentably distinguish the invention from the prior art. See In re
Vamco Machine and Tool, Inc. 752 F.2d 1564, 1577 n.5 (Fed. Cir. 1985).
As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998), “the name of the game is the claim.” It is well established
that limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
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Appellant also argues that “any elimination of layers or substitution of
fabrics in Andrews patented article can result in deadly consequences.”
App. Br. 15.
We understand Appellant to be arguing that modifying Andrews’s
medical dressing glove to eliminate layers or substitute fabrics would make
the glove unfit for its intended purpose. We are not persuaded by this
argument because the Examiner has applied Andrews as an anticipatory
reference and thus, the Examiner is not modifying Andrews.
Appellant also argues that “Andrews[’s] article is not designed to be
disposable[,] e.g.[,] worn [once] and thrown away,” but instead “was
designed to be worn for considerable period[s] of time during which ‘ . . .
treating medical clinician [may easily] inspect or treat the injured hand’
(col. 4, Line 68 – col. 5, Lines 1-2).” App. Br. 15.
We are not persuaded by Appellant’s argument. Appellant has no
special definition of the claim term “disposable,” such as worn once and
then thrown away, in the Specification. Further, as stated by the Examiner
and discussed supra, “any glove is considered to be disposable since the
term does not lend any structure to the glove which would define over the
prior art.” Ans. 5.
Appellant argues that “[f]unctionality, design, and [materials] of
Andrews’[s] ‘Medical dressing of a multilayered material’ have no
common attributes that may characterize it as a moisture absorbent
disposable glove insert that is designed to be worn between the hand and any
other type of glove to remove from the surface of the skin sweat of human
hands” as called for in claim 25. App. Br. 15-16.
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Appellant merely recites some of the limitations set forth in claim 25
and baldly alleges that the cited reference does not teach these limitations.
App. Br. 15-16. This vague statement does not constitute a separate
argument for patentability of claim 25 pursuant to 37 C.F.R. §
41.37(c)(1)(vii). See Lovin, 652 F.3d at 1357 (holding that the Board had
reasonably interpreted 37 C.F.R. § 41.37(c)(1)(vii) as requiring “more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art”). Appellant’s statement does not specifically address
the Examiner's findings and the teachings of Andrews (Ans. 3-4) or point
out why they are in error. Accordingly, we do not find error in the
Examiner’s rejection based upon this argument of Appellant.
Finally, Appellant cites to 35 U.S.C. § 101 and argues that “the
composition of matter in terms of construction elements specified in the
application [is] significantly different from the composition of matter [as]
described in the Andrews et al. [patent].” Reply Br. 7-8.
We are not persuaded by Appellant’s last argument for the following
reasons. The Examiner has not made a rejection under 35 U.S.C. § 101. It
appears that Appellant refers to 35 U.S.C. § 101 in order to categorize the
claimed subject matter as a composition of matter, but the claimed subject
matter is not a composition of matter, but rather an article of manufacture.
Moreover, the fact that Appellant defines materials in the Specification that
are different from the materials of Andrews is not dispositive since
Appellant’s claim 25 only recites a “moisture pervious material” and
Andrews’s water absorbent material satisfies this claim limitation.
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In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 25 under 35 U.S.C. § 102(b) as anticipated by Andrews.
Dependent claim 28
Claim 28 has been discussed supra.
The Examiner finds that Andrews’s “glove comprises an outer shell
made from non-woven material 54, an inner shell formed from fluid
pervious cover stock 50, and absorbent core 52 interposed therebetween.”
Ans. 4.
Appellant argues that “[c]ontrary to Andrews et al. which requires
“. . . a material having at least three layers” (col.8, Line[s] 62-63) “. . . with
definite correlation between layers" (col.8, Line 65 - col.9, Line 12), claim
28 in the absorbent disposable article further describes “. . . a disposable
absorbent glove insert comprises of any individual or combination of
therewith elements.” App. Br. 15. More particularly, Appellant argues that
Schryver’s glove cannot “be defined as a glove insert that comprises of any
individual or combination of therewith elements: an outer shell that is made
of non-woven flexible material, an inner shell that is made of fluid pervious
cover-stock, and an absorbent core interposed therebetween.” App. Br. 16.
We do not agree with Appellant’s argument, because statements
baldly submitting that limitations are not present in the prior art are not
persuasive as to error on the part of the Examiner when the Examiner has
specified portions of the prior art that describe those limitations. See Lovin
at 1357 (“[T]he Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”). Since the Examiner has specified that Andrews’s
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outer layer 54, being made of polypropylene (see col. 4, ll. 10-15),
constitutes the claimed “outer shell that is made of non-woven flexible
material,” we sustain the Examiner’s rejection of claim 28 under 35 U.S.C. §
102(b) as anticipated by Andrews.
Dependent claim 29
Claim 29 has been discussed supra.
The Examiner finds that “Andrews’[s] glove could be interpreted as
having a fluid-acquisition layer 52 interposed between a core 54 and cover-
stock inner shell 50,” and “[i]n this configuration, layer 54 is considered
absorbent since it would absorb water vapor.” Ans. 4-5.
Appellant argues that Andrews does not “comprise a fluid-acquisition
layer interposed between said core and cover-stock inner layer” as defined in
claim 29. App. Br. 16.
As stated supra, statements baldly submitting that limitations are not
present in the prior art are not persuasive as to error on the part of the
Examiner when the Examiner has specified portions of the prior art that
describe those limitations. See Lovin at 1357 (“[T]he Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”). Since the
Examiner has specified portions of the prior art that describe those
limitations, we sustain the Examiner’s rejection of claim 28 under 35 U.S.C.
§ 102(b) as anticipated by Andrews.

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DECISION
We reverse the Examiner’s rejection of claim 29 under 35 U.S.C.
§ 112, second paragraph, as indefinite.
We affirm the Examiner’s rejections of: claims 25-28 and 30 under
35 U.S.C. § 102(b) as anticipated by Schryver; and claims 25, 28, and 29
under 35 U.S.C. § 102(b) as anticipated by Andrews.
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)(1)(iv).

AFFIRMED

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