Ex Parte Shapiro

Board of Patent Appeals and Interferences

Jun 4, 2012

11569027 (B.P.A.I. Jun. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID D. SHAPIRO
____________________

Appeal 2010-004405
Application 11/569,027
Technology Center 3700
____________________

Before: JOHN C. KERINS, PHILLIP J. KAUFFMAN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/569,027

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

THE INVENTION
Appellant’s claimed invention “relates to surgical gloves, and more
particularly to surgical gloves of elastomeric material having improved
comfort and stress relief to the user, particularly at the wrist area.” Spec.
1:1-3. Claims 1, 17, and 19 are the independent claims on appeal, and claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A surgical glove adapted to be worn by a user, said glove
comprising a portion at an underside of and extending across a
wrist area to include a portion of a palm and forearm of the
glove on either side of the wrist area which is expandable,
whereby said portion of the glove provides relief from pressure
to a wrist area of the user wearing the glove.

REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 1-13, 17, and 18 under 35 U.S.C. § 102(b) as anticipated by Flick
(U.S. 5,579,539; iss. Dec. 3, 1996). Ans. 3.
2. Claims 1, 14-16, 19, and 20 under 35 U.S.C. § 102(b) as anticipated by
Chen (U.S. 4,809,365; iss. Mar. 7, 1989). Ans. 4.

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OPINION
Claim Construction
Independent claims 1, 17, and 19 are each directed to a surgical glove.
The claims call for an expanded portion (claim 1), an enlarged portion
(claim 17), or a plurality of pleats (claim 19), positioned, “at an underside of
and extending across a wrist area to include a portion of a palm and forearm
of the glove on either side of the wrist area,” and these portions “provide
relief from pressure to the wrist area of the user wearing the glove.”
The Specification describes that tight fitting gloves are likely to cause
wrist-stress related problems, and the claimed invention includes a portion
that provides relief by eliminating pressure to the wrist above the carpal
tunnel and palmar carpal ligament of the wearer of the glove. Spec. 2:12-
3:25; App. Br. 2.
The context of independent claims 1, 17, and 19 is that “palm” refers
to the palm of the glove, and not the position of the glove with regard to the
wearer. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005)
(“the claims themselves provide substantial guidance as to the meaning of
particular claim terms,” and “the context of the surrounding words of the
claim also must be considered in determining the ordinary and customary
meaning of those terms”) (quoting Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582 (Fed. Cir. 1996) and ACTV, Inc. v. Walt Disney Co., 346
F.3d 1082, 1088 (Fed. Cir. 2003)); see also Rapoport v. Dement, 254 F.3d
1053, 1059 (Fed. Cir. 2001); see also Reply Br. 8-11; contra. Ans. 3.
The Specification does not provide a lexicographical definition of the
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Application 11/569,027

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claim term “palm.”1 We find that the ordinary definition of the palm of a
glove is the part of the glove that covers the inner surface of the hand
between the wrist and the fingers.2 We discern nothing in the Specification
inconsistent with this ordinary meaning.
Consequently, independent claims 1, 17, and 19 each call for an
expandable/enlarged portion or a plurality of pleats to be positioned to
include a portion of the palm of the glove (the part of the glove that covers
the inner surface of the hand between the wrist and the fingers), whereby
that portion provides relief from pressure to the wrist area of user wearing
the glove.

Claims 1-13, 17, and 18 as anticipated by Flick
Protrusion 100 of Flick’s surgical glove 30 is located in a mid-portion
of the cuff 108, and no part of protrusion 100 is positioned on the part of the
glove that covers the inner surface of the hand between the wrist and the
fingers (i.e. the palm of the glove) as called for in independent claims 1 and
17. Flick, col. 7, ll. 44-45; figs. 9-12; contra. Ans. 5-6.
The Examiner also found that Flick’s surgical glove is comprised of
an elastomeric material, and “therefore, any portion of the glove, including
the portion at the underside of and extending across the wrist area is

1 We agree with the Examiner that the Specification does not set forth a
definition of the claim term “palm” with “reasonable clarity, deliberateness,
and precision” for Appellant to be his own lexicographer. See Ans. 5-6; see
also In re Paulson, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
2 Palm: the part of a glove that covers the palm of the hand, n., def. 1.c.
Palm: the inner surface of the hand between the wrist and the fingers, on
which the fingers close, n. def. 1.a. Oxford English Dictionary (1989)
available at www.OED.com. The Examiner provides no citation for their
proffered definition. Ans. 5-6.
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expandable” as called for in claims 1 and 17. Ans. 3, 6. This finding
ignores that the expandable/enlarged portion is required to eliminate
pressure to the wrist area of the user wearing the glove. We do not discern,
nor does the Examiner point to any disclosure in Flick that any portion of
elastomeric glove 30 relieves pressure to the wrist. Flick, col 7, l. 29;
passim. Given this, we cannot find there is a sound basis for the Examiner’s
belief that Flick’s elastomeric glove 30 relieves pressure as called for in
claims 1 and 17. 3
Accordingly, we cannot sustain the rejection of independent claims 1
and 17 and their respective dependent claims 2-13 and 18.

Claims 1, 14-16, 19, and 20 as anticipated by Chen
Chen’s expandable portion/plurality of pleats (ribs 19 and longitudinal
flute 20) are located on cuff portion 18 of glove 10 to facilitate ease of
removal of glove 10, and no part of Chen’s expanded portion/plurality of
ribs (ribs 19 and longitudinal flute 20) is located on the palm of the glove as
called for in independent claims 1 and 19. Chen, col. 1, ll. 58-60; col. 1, l.
65-col. 2, l. 1; col. 2, ll. 8-11; col. 5, ll. 6-17; figs. 1-3; contra. Ans. 4.
Further, we do not discern, nor does the Examiner point to, any
disclosure in Chen that any portion of glove 10 relieves pressure to the wrist.
Chen, passim. Thus, the Examiner failed to establish a sound basis for the
belief that Chen’s glove 10 relieves pressure as called for in claims 1 and 19.

3 Appellant’s Specification describes that elastomeric gloves create pressure
in the wrist area. Spec. 1:5-2:20. This suggests that an elastomeric glove
such as Flick’s would create rather than relieve pressure to the wearer’s
wrist. See Reply Br. 5-6.
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Accordingly, we cannot sustain the rejection of independent claims 1
and 19 and their dependent claims 14-16 and 20.

DECISION
We reverse the Examiner’s decision to reject claims 1-13, 17, and 18
under 35 U.S.C. § 102(b) as anticipated by Flick
We reverse the Examiner’s decision to reject claims 1, 14-16, 19, and
20 under 35 U.S.C. § 102(b) as anticipated by Chen.

REVERSED

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