Walter Gordon. Schulein et al.

Patent Trials and Appeals Board

Jul 22, 2019

11778340 - (D) (P.T.A.B. Jul. 22, 2019)

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.
11/778,340 07/16/2007 Walter Gordon Schulein 311386US 1258
22850 7590 07/22/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
MUROMOTO JR, ROBERT H
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
07/22/2019 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WALTER GORDON SCHULEIN,
NATHANIEL H. KOLMES, and FRED ELTON DRIVER
____________

Appeal 2017-010655
Application 11/778,3401,2
Technology Center 3700
____________

Before LINDA E. HORNER, STEFAN STAICOVICI, and
ANNETTE R. REIMERS, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

1 Supreme Elastic Corporation is identified as the real party in interest in
Appellants’ Appeal Brief (filed Jan. 31, 2017, hereinafter “Appeal Br.”).
Appeal Br. 1.
2 This is Appellants’ second appeal before the Patent Trial and Appeal
Board. In the first appeal (2012-003468, Decision mailed February 25,
2014) (hereafter “Decision”), the rejection under 35 U.S.C. § 103(a) of
claims 1–6, 9, 14, and 15 as unpatentable over Kolmes et al. (US 6,341,483
B1, iss. Jan. 29, 2002, hereinafter “Kolmes”) and Mellon et al. (US
5,784,720, iss. July 28, 1998, hereinafter “Mellon”) was affirmed. Decision
2, 8.

Appeal 2017-010655
Application 11/778,340

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STATEMENT OF THE CASE.
Walter Gordon Schulein et al. (“Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision in the Final Office Action (dated
Aug. 17, 2016, hereinafter “Final Act.”) rejecting claims 1–6, 9, and 14–22.3
Appellants’ representative presented oral argument on July 3, 2019.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

INVENTION
Appellants’ invention relates to a “lightweight protective fabric that is
cut, slash and/or abrasion resistant, and garments made therefrom.” Spec. 1,
ll. 8–9.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A shaped knit garment, consisting essentially of:
one or more fabric panels prepared from yarn
consisting of 100% cut, slash and/or abrasion resistant
yarn and prepared by shaped knitting,
wherein the shaped knit garment has a cut
resistance of from 2000 to 6200 (as measured by ASTM-
F1790-2005) and a fabric weight of no more than 27.9
ounces per square yard (OPSY),
wherein the one or more fabric panels are made by
a shaped knitting process by which one or more fabric
panels are formed directly during the shape knitting
process into the final shape of the garment or shapes

3 Claims 7, 8, and 10–13 are canceled. Appeal Br. 36 (Claims App.).
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needed for assembly into the final shape of the garment,
and form an entirety of the garment body and arms,
wherein the shaped knit garment is seamless as
directly formed or formed by joining the fabric panels
using cut, slash and/or abrasion resistant yarn,
wherein the garment has cuffs at an end of each
arm, wherein each cuff has a loop affixed to, and located
in, the inside of the cuff through which loop a wearer’s
thumb positioned entirely inside the cuff is placed to hold
the cuff in position,
wherein the garment is a jacket or a sweater, and
wherein the garment contains no metal grommets.

REJECTIONS
I. The Examiner rejects claims 1–6, 9, and 14–22 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written
description requirement.
II. The Examiner rejects claims 1–6, 9, and 14–22 under 35 U.S.C.
§ 103(a) as being unpatentable over Kolmes and Mellon.4

ANALYSIS
The Written Description Rejection
The Examiner finds that Appellants’ disclosure does not support the
“recitation of the loop being positioned only inside the cuff and that the
thumb is ‘completely inside the cuff’.” Final Act. 2.

4 Although claims 16–22 are not mentioned in the heading of this rejection,
they are discussed in the body of the rejection. See Final Act. 3, 13–15. We
consider the omission to be a mere typographical error.
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In response, Appellants point to page 9, lines 3–9 and page 10, lines
3–5, of the Specification for support. See Appeal Br. 7, 15. Appellants then
refer to the Decision and note that because the Board “concluded that a loop
affixed to the inside of the cuff need not be located entirely inside the cuff”
(see Decision 6), “the Board appeared to recognize that a loop affixed into
the inside of the cuff may be located entirely inside the cuff or partially
inside and partially outside the cuff.” Appeal Br. 17–18 (emphasis added);
see also id. at 8‒9. Thus, according to Appellants, because the Specification
describes the wrists of a user as protected by the garment cuffs, the thumbs
as holding the cuffs in position when placed through elastic loops (see Spec.
10, ll. 1–5), and the cuffs as lacking apertures through which the thumbs can
protrude (see id. at 9, ll. 3–9), a skilled artisan “reasonably would have
recognized from . . . [Appellants’] disclosure and drawings that the loops
must be located entirely inside the cuffs.” Appeal Br. 18 (emphasis added).
Appellants explain that “[w]hen the wearer’s thumb holding the cuff
in position is located entirely inside the cuff to protect it from potential
hazards, the loop will be affixed to, and located entirely in, the inside of the
cuff through which the thumb passes.” Id. at 7–8; see also id. at 15. As
such, Appellants conclude that when a garment has a tubular design without
apertures for appendages to protrude (see Spec. 9, ll. 3–9, Figs. 1, 2) “the
thumbs must [be] positioned entirely inside the cuffs (13), and each cuff
must have a loop (not shown) affixed to, and located entirely in, the inside of
cuff (13) through which loop the wearer’s thumb is placed in order to hold
the cuff in position.” Appeal Br. 17 (emphasis added).
To satisfy the written description requirement, the disclosure must
convey with reasonable clarity to skilled artisans that the Appellants were in
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possession of the claimed invention as of the filing date. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). While there is no in
haec verba requirement, when an explicit limitation in a claim is not present
in the written description it must be shown that a person of ordinary skill
would have understood that the description requires that limitation. Hyatt v.
Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998).
In this case, page 10, lines 1–5, of the Specification, describes placing
an “elastic loop fixed into the inside of the cuff . . . over the thumb . . . [to]
hold[] the cuff in position,” and, thus, eliminate exposing the area of the
wrist, when flexing the arm, between the cuff of the garment “and the cuff of
a glove” (emphasis added). As such, because a user employs a glove for
protection, neither the user’s thumb nor the loop though which the thumb
passes therethrough must be completely within the cuff in order to be
protected, as the glove would partially or entirely cover both the user’s
thumb and the loop. Even assuming arguendo a “substantially tubular knit
construction” that does not have apertures through which appendages could
protrude when wearing the garment, as per page 9, lines 3–9, of Appellants’
Specification, and Figures 1 and 2 of the Drawings, the user’s thumbs and
the respective loop through which each thumb passes therethrough may
extend from the cuff end and, thus, do not need to be entirely inside in the
cuff, as Appellants assert, because the glove would cover them to provide
protection.
As such, in light of Appellants’ cited portions of the Specification and
the Drawings, a skilled artisan would not have readily understood that in the
claimed invention “the thumbs are necessarily positioned entirely inside the
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cuffs and each cuff must have a loop affixed to, and located entirely in, the
inside of the cuff,” as Appellants assert. Appeal Br. 9 (emphasis added).
Accordingly, the Examiner is correct that Appellants’ Specification
and Drawings “do[] not support that the loop is ‘entirely inside the cuff’” or
that the thumb is completely inside the cuff. Examiner’s Answer (dated
June 15, 2017, hereinafter “Ans.”) 3. Therefore, we sustain the rejection of
claims 1–6, 9, and 14–22 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.

The Obviousness Rejection
Independent claim 1 recites, inter alia, “cuffs . . . wherein each cuff
has a loop affixed to, and located in, the inside of the cuff through which
loop a wearer’s thumb positioned entirely inside the cuff is placed to hold
the cuff in position.” Appeal Br. 35 (Claims App.).
The Examiner finds that Kolmes discloses most of the limitations of
independent claim 1, but fails to disclose a cuff and a loop, as called for by
independent claim 1. See Final Act. 3–11. Nonetheless, the Examiner finds
that Mellon discloses a cuff and a loop “affixed (sewn/stitched) to the inside
of the cuff and the proximal end of the loop is clearly located in the inside of
the cuff.” Id. at 12. According to the Examiner, “the portion of the element
30 . . . that is totally inside the cuff can be considered the newly claimed
loop that is only on the inside of the cuff.” Id. (citing Mellon, Fig. 3).
Appellants argue that Mellon does not support the Examiner’s
interpretation of the claimed “loop,” and, moreover, such an interpretation is
not consistent with the definition of loop as employed in the Decision.
Appeal Br. 22. According to Appellants, in the Decision, Mellon’s entire
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thumb sheath 30 was interpreted as the claimed “loop.” Id. (citing Decision
5–6).
In response, the Examiner takes the position that claim 1 “does not
require the loop itself to be ‘entirely inside the cuff’.” Ans. 2. According to
the Examiner, “placing the thumb inside the cuff is not the same as placing
the loop entirely inside the cuff.” Id. The Examiner specifically states that
“the claimed limitation that the loop be ‘entirely inside the cuff’ is new
matter.” Id. at 3.
As independent claim 1 requires “a wearer’s thumb [to be] positioned
entirely inside the cuff” and also be placed through a loop that is “located in,
the inside of the cuff,” Appellants are correct that “the loop through which
the thumb is placed to hold the cuff in place, and the thumb itself, are
located entirely inside the cuff.” Appeal Br. 20. As such, although we
appreciate the Examiner’s finding that “the portion of the element 30 . . . that
is totally inside the cuff” (see Final Act. 12) constitutes a “loop,” we agree
with Appellants that such an interpretation of Mellon’s thumb sheath 30 is
unreasonable. See Appeal Br. 22.
More specifically, we find that the Examiner has indiscriminately and
arbitrarily divided Mellon’s thumb sheath 30 to obtain a “loop” that is
located entirely within the cuff. To better understand the Examiner’s
position, we provide below Mellon’s Figure 3, as annotated by the Board:
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Mellon’s Figure 3, as annotated by the Board, illustrates sleeve 12, cuff 10,
and tubular thumb sheath 30, with the encircled portion of thumb sheath 30
that the Examiner considers to be the claimed “loop.”
We appreciate that Mellon’s tubular thumb sheath 30 includes a
portion that is “affixed to, and located in, the inside of the cuff,” and, that is
located entirely within the cuff. However, absent hindsight, we fail to see
why a person having ordinary skill in the art would choose to interpret a
portion of Mellon’s tubular thumb sheath 30 as a “loop.” Claim language
should be read in light of the Specification, as it would be interpreted by one
of ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260
(Fed. Cir. 2010). In this case, Appellants’ Specification describes “an elastic
loop fixed into the inside of the cuff to be placed over the thumb.” Spec. 10,
ll. 3–4.5 As such, according to the Specification, the “loop” constitutes a
unitary and integral structure and not merely a portion of such a structure, as

5 Although we look to this description in the Specification for interpretation
of the claimed term “loop” as referring to a unitary and integral structure, as
discussed above, we find insufficient support in this description to show
possession of the location of the loop inside the cuff so as to position a
wearer’s thumb “entirely inside the cuff,” as claimed.
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the Examiner finds. Hence, without further explanations from the Examiner
as to why a skilled artisan would interpret merely a portion of Mellon’s
tubular thumb sheath 30 as the claimed “loop,” the Examiner’s finding, in
essence, indiscriminately and arbitrarily divides Mellon’s tubular thumb
sheath 30 into a portion only to meet the claimed “loop.” Therefore, we do
not agree with the Examiner’s finding that a skilled artisan would reasonably
construe, in light of Appellants’ Specification, Mellon’s “portion of the
element 30 . . . that is totally inside the cuff” as the claimed “loop.” See
Final Act. 12.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of independent claim 1, or its dependent claims 2–6, 9, and 14–22, under
35 U.S.C. § 103(a), as unpatentable over Kolmes and Mellon.

SUMMARY
The Examiner’s decision to reject claims 1–6, 9, and 14–22 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement is affirmed.
The Examiner’s decision to reject claims 1–6, 9, and 14–22 under
35 U.S.C. § 103(a) as unpatentable over Kolmes and Mellon is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED