2020006568 (P.T.A.B. May. 25, 2021)

Coley Creative LLC

Patent Trials and Appeals BoardMay 25, 2021

2020006568 (P.T.A.B. May. 25, 2021)

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. 14/928,477 10/30/2015 Ann D. Coley 2072-003 9881 96056 7590 05/25/2021 Florek & Endres PLLC 552 Seventh Avenue, Suite 601 New York, NY 10018 EXAMINER YABUT, DANIEL D ART UNIT PAPER NUMBER 3656 NOTIFICATION DATE DELIVERY MODE 05/25/2021 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): docket@feiplaw.com kflorek@feiplaw.com mendres@feiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANN D. COLEY ____________ Appeal 2020-006568 Application 14/928,477 Technology Center 3600 ____________ Before STEFAN STAICOVICI, JEREMY M. PLENZLER, and CARL M. DeFRANCO, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (dated June 4, 2019, hereinafter “Final Act.”) rejecting claims 1, 5–12, 14, 15, and 18–21.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Coley Creative LLC is identified as the real party in interest in Appellant’s Appeal Brief (filed Nov. 2, 2019, hereinafter “Appeal Br.”). Appeal Br. 1. 2 Claims 2–4, 13, 16, and 17 are canceled. Appeal Br. 14–15 (Claims App.). Appeal 2020-006568 Application 14/928,477 2 SUMMARY OF DECISION We REVERSE and enter a NEW GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). INVENTION Appellant’s invention relates “to the field of disposable steering wheel covers used to protect against the transfer of germs between the surface of the steering wheel and the driver.” Spec. 1, ll. 5–6. Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. A disposable steering wheel cover, comprising, an annular member comprising a single, coated or multi- layer material selected from the group consisting of a medical weight tissue, a spun or nonwoven polymer material and combinations thereof, said annular member having a length dimensioned for extending around an outer diameter of a steering wheel and a width dimensioned for wrapping around at least a portion of a grip circumference of the steering wheel, an elastic member running longitudinally along at least a portion of at least one side edge of the annular member for radial distension around the outer diameter of the steering wheel, to hold the annular member in place around the steering wheel, and one or more non-slip elements on at least a portion of an interior of the annular member to prevent sliding of the steering wheel cover on the steering wheel, wherein the at least a portion of at least one side edge of the annular member contracts and gathers when the elastic member is released and the steering wheel cover is collapsible to a compacted state for storage in bulk and dispensing when not on the steering wheel. Appeal Br. 14 (Claims App.). Appeal 2020-006568 Application 14/928,477 3 REJECTIONS I. The Examiner rejects claim 21 under 35 U.S.C. § 112(b) as being indefinite. II. The Examiner rejects claims 1, 5–10, 14, and 18–21 under 35 U.S.C. § 102(a)(1) as being anticipated by Horn.3 III. The Examiner rejects claims 1, 6–12, 14, 15, and 19–21 under 35 U.S.C. § 103 as being unpatentable over Kong4 and Horn. IV. The Examiner rejects claims 5 and 18 under 35 U.S.C. § 103 as being unpatentable over Kong and Horn.5,6 ANALYSIS Rejection I The Examiner determines that the phrase “scrunched relaxed state” in claim 21 is indefinite. See Final Act. 2. According to the Examiner, “the terms ‘scrunched’ and ‘relax’ contradict each other.” Id. at 3. The Examiner explains that “the plain meaning of the term ‘scrunch’ includes ‘to 3 Horn, DE 27 53 174 A1, published June 7, 1979. We derive our understanding of this reference from the machine-generated English language translation contained in the image file wrapper of this application. All references to the text of this document are to portions of the translation, whereas references to the Figures are to the German language publication. 4 Kong et al., US 2015/0217794 Al, published Aug. 6, 2015. 5 As claims 5 and 18 depend from independent claim 1, we view the omission of Horn from this rejection as a typographical error. See Final Act. 12. 6 The rejection of claims 16 and 17 is moot as these claims were canceled in Appellant’s After-Final Amendment, filed Nov. 2, 2019, and entered in an Advisory Action, mailed Nov. 15, 2019. Appeal 2020-006568 Application 14/928,477 4 draw or squeeze together tightly’ . . . which implies a state of being that is antithetical to a ‘relaxed state.’” Id. at 2–3 (citing Merriam-Webster.com, last visited Feb. 5, 2018). Moreover, the Examiner notes that the term “scrunched” is not defined in Appellant’s Specification. Id. at 2. Appellant responds that “when the elastic member is not tensioned it moves to a ‘relaxed’ state where it exerts a force on the material of the annular member to gather or pucker the material together into a ‘scrunched’ condition.” Appeal Br. 7 (citing Spec. 5, ll. 1–2 (“releasing the elastic members contracts and gathers the edges of the annular member so that the steering wheel cover hugs the rim of the steering wheel for a secure fit.”)) (emphasis added). Thus, according to Appellant, “the force created by the relaxed elastic member gathering the annular member into a scrunched state” defines the claimed “scrunched relaxed state.” Id. In response, the Examiner notes that “the features upon which Appellant relies (i.e., ‘puckering’ of the material) are neither recited in the rejected claim(s) nor in the original disclosure.” Examiner’s Answer (dated July 22, 2020, hereinafter “Ans.”) 13. The Examiner contends that “nowhere in the original disclosure does it liken the ‘scrunching’ or ‘gathering’ effects as being exhibited by a ‘puckering"’ of the material as alleged by Appellant.” Id. at 14. The Examiner further notes that “the definition of the term ‘scrunch’ is ‘to crumple’ or ‘to cause to draw together’ . . . the definition of ‘crumple’ includes ‘to bend, press, or crush out of shape’,” and “[t]he definition of the term ‘draw’ includes ‘to cause to move continuously toward or after a force applied in advance’.” Id (citing Merriam-Webster.com, last visited June 6, 2018). Thus, according to the Examiner, because “the expressions ‘crumple’ and ‘draw together’ Appeal 2020-006568 Application 14/928,477 5 inherently require an act of force applied upon an object in order to change its shape,” “by definition, the term ‘scrunched’ contradicts the expression ‘relaxed state.’” Id. We appreciate that Appellant’s Specification does not assign or suggest a particular definition to the claim term “scrunch.” Thus, 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. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). Here, we agree with Appellant that an ordinary and customary meaning of the term “scrunch” is “to draw or squeeze together tightly.” See Appeal Br. 18. We further agree with Appellant that a skilled artisan would readily understand that when stretching an elastic object, the elastic force returns the object to its relaxed state. See Reply Brief (filed Sept. 21, 2020, hereinafter “Reply Br.”) 7. Hence, Appellant is correct that the phrase “scrunched relaxed state” means that when the claimed disposable steering wheel returns from a stretched state to a relaxed state the elastic force causes the material of the cover “to gather or ‘scrunch’.” Id. In other words, the term “scrunched” modifies the phrase “relaxed state” to describe the “relaxed state” of the claimed elastic disposable steering wheel cover as a state in which the elastic force causes the cover to gather, i.e., to scrunch. See id (“the force applied by the elastic member moving into a relaxed state causes the edges of the annular member to gather.”). Such an interpretation is consistent with Appellant’s Specification, which states that “releasing the elastic members contracts and gathers the edges of the [disposable steering wheel] annular member so that Appeal 2020-006568 Application 14/928,477 6 the steering wheel cover hugs the rim of the steering wheel for a secure fit.” Spec. 5, ll. 1–3 (emphasis added). As such, for the foregoing reasons, the Examiner’s claim construction, which relies on the view that “the term ‘scrunched’ contradicts the expression ‘relaxed state’” (see Final Act. 18), is inconsistent with a skilled artisan’s understanding of the behavior of an elastic material and Appellant’s Specification. Accordingly, we do not sustain the rejection under 35 U.S.C. § 112(b) of claim 21 as being indefinite. Rejection II The Examiner finds that Horn discloses a disposable steering wheel cover for extending over an outer diameter of steering wheel rim 1 including, inter alia, an annular member 2, an elastic member, and one or more non-slip elements. Final Act. 3–4 (citing Horn, pp. 2 (“section of an extruded plastic tube to be pulled under elastic tension over the circumference of the steering wheel”) 3 (“tubing is rough on its inside and smooth only on its outside”; “wherein the steering wheel cover [adheres] due to the inherent elasticity at the edges over the steering wheel”), Figs. 7–9). The Examiner further finds that Horn’s “at least a portion of at least one side edge of the annular member contracts and gathers when the elastic member is released.” Id. at 4 (citing Horn, Fig. 7 (“illustrating the covering being stretched in order to mount it onto the steering wheel, indicating that the cover would inherently unstretch i.e. contract and gather when released.” Appellant argues that Horn fails to disclose “a separate elastic member to contract and gather at least a portion of the side edge of the Appeal 2020-006568 Application 14/928,477 7 annular member”; rather, according to Appellant, Horn’s steering wheel cover “is made of a single elastic band.” Appeal Br. 9. In response, the Examiner takes the position that “the claimed invention does not require the ‘elastic member’ to be a separate element from the annular member.” Ans. 5. According to the Examiner, “claim 1 describes a genus, the scope of which includes an embodiment wherein the elastic member is integral with the annular member.” Id (citing Spec. 9 (“This second alternative embodiment therefore inherently includes the elastic loop member(s) and the gripping member as integral components of the annular member 4.”). The Examiner explains that because of claim differentiation and dependent claims 11 and 12 “explicitly requir[ing] the elastic member to be integral with the annular member,” “it follows that claim 1 is indeed a genus that is inclusive of an embodiment wherein the elastic member is integral with the annular member as is taught by Horn.” Id. We appreciate the Examiner’s position that independent claim 1 does not require the claimed “elastic member” to be separate from the “annular member.” However, claim 1 does require that the claimed “disposable steering wheel cover” include both “an annular member” and an “elastic member,” either separate or integral. See Appeal Br. 14 (Claims App.). In the context of anticipation, a prior art reference anticipates the claimed invention under 35 U.S.C. § 102 only if every element of a claimed invention is identically shown in that single reference, arranged as they are in the claims. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Here, Horn discloses a disposable steering wheel cover including an elastic hose section 2, which the Examiner equates to the claimed “annular member.” Appeal 2020-006568 Application 14/928,477 8 See Final Act. 3. We could not find, and the Examiner has not adequately explained, which element of Horn constitutes the claimed “elastic member.” Thus, the Examiner has not established that Horn’s disposable steering wheel includes both an “elastic element” and an “annular member,” as called for by independent claim 1. Accordingly, for the foregoing reasons, the elements of the claimed invention are not identically disclosed in Horn, arranged as they are in the claims. Therefore, we do not sustain the rejection under 35 U.S.C. § 102(a)(1) of independent claim 1, and its dependent claims 5–10, 14, and 18–21, as anticipated by Horn. Rejection III The Examiner finds that Kong discloses a disposable steering wheel cover including, inter alia, an annular member 50, 52, an elastic member 12, 55, and one or more non-slip elements 8. See Final Act. 8–9 (citing Kong, paras. 23, 24, 26–29, 32, 33, Fig. 1). The Examiner further finds that “Kong does not explicitly disclose [that] the at least a portion of at least one side edge of the annular member contracts and gathers when the elastic member is released” and that the steering wheel cover is “collapsible to a compacted state for storage in bulk and dispensing when not on the steering wheel.” Id. Nonetheless, the Examiner finds that “Horn teaches a steering wheel cover (2) having at least a portion of at least one side edge of the annular member contracts and gathers when the elastic member is released.” Id (citing Horn, p. 2, Figs. 7–9). The Examiner further finds that Horn’s steering wheel cover 2 is “collapsible to a compacted state for storage in bulk and Appeal 2020-006568 Application 14/928,477 9 dispensing when not on the steering wheel.” Id. Thus, the Examiner concludes that [i]t would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the steering wheel cover of Kong such that the at least a portion of at least one side edge of the annular member contracts and gathers when the elastic member is released and the steering wheel cover being collapsible to a compacted state for storage in bulk and dispensing when not on the steering wheel, as taught by Horn, for the purpose of providing an effective cover that can protect steering wheels in the implementation of repair work, and that which is storable and quickly and easily mountable on steering wheels of various diameters. Final Act. 10. Appellant argues that neither Kong nor Horn discloses that “at least a portion of at least one side edge of the annular member contracts and gathers when the elastic member is released.” Appeal Br. 10. According to Appellant, “the edges of the steering wheel cover of Kong are flat and even . . . without any gathering of the annular member when the elastic member is released.” Id (citing Kong, Figs. 1, 7). Furthermore, Appellant contends that “there is no teaching or suggestion whatsoever in Horn that a side edge of an annular member gathers at all when the elastic band of Horn contracts.” Id. at 9. The Examiner responds that “Horn’s annular member indeed ‘contracts and gathers’ when it is removed from a steering wheel because such a feature is a corollary to it having to be pulled under elastic tension over the steering wheel.” Ans. 6 (citing Horn, p.2, Figs. 7–9). The Examiner further asserts that Appeal 2020-006568 Application 14/928,477 10 when the annular member is removed from the steering wheel, the annular member “contracts” to the extent that the aforementioned elastic tension of the annular member decreases as it relaxes to its resting, dismounted state; and “gathers” to the extent that the side edges of annular member are drawn closer together as the annular member shrinks as a result of removing it from the steering wheel. Id. at 6–7. “In the absence of any evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.” CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000). In this case, we construe the phrase “contracts and gathers” to mean that the side edges of the annular member are drawn together, i.e., “gathers,” as the annular member shrinks, i.e., “contracts,” due to the release of the elastic member. As noted supra, the Examiner determined that “Kong does not explicitly disclose [that] the at least a portion of at least one side edge of the annular member contracts and gathers when the elastic member is released,” and employed Horn for this teaching. See Final Act. 9. However, for the following reasons, Horn also fails to disclose this limitation. In particular, although Horn’s disposable steering wheel cover includes an elastic hose section 2, which the Examiner equates to the claimed “annular member,” it does not include an “elastic element” in addition to the “annular member,” as called for by independent claim 1. Hence, when Horn’s elastic hose section 2 is removed from a steering wheel, the release of the elastic force only shrinks, i.e., “contracts,” hose section 2. We agree with Appellant that Horn’s elastic hose section 2 “is nothing more than a large rubber band . . . but acting exactly the same as a rubber band Appeal 2020-006568 Application 14/928,477 11 when stretched and released,” and, thus, “there is no ‘gathering’ of material.” Reply Br. 2. The Examiner does not adequately explain why in the absence of an “elastic element running longitudinally along at least a portion of at least one side edge of the annular member,” as per claim 1, releasing the elastic force would contract and gather Horn’s “annular member” hose section 2. Therefore, as neither Kong nor Horn discloses that “at least a portion of at least one side edge of the annular member contracts and gathers when the elastic member is released,” as called for by claim 1, the combined teachings of Kong and Horn also do not teach this limitation. Accordingly, we do not sustain the rejection under 35 U.S.C. § 103 of independent claim 1, and its dependent claims 6–12, 14, 15, and 19–21, as unpatentable over Kong and Horn. Rejection IV Claims 5 and 18 depend from independent claim 1. See Appeal Br. 14–15 (Claims App.). The Examiner’s modifications of the combined teachings of King and Horn do not remedy the deficiency discussed supra in Rejection III. See Final Act. 12–15. Therefore, for the same reasons discussed above, we also do not sustain the rejection under 35 U.S.C. § 103 of claims 5 and 18 as unpatentable over Kong and Horn. NEW GROUNDS OF REJECTION I. Claims 11 and 12 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Claim 11, which depends from independent claim 1, adds the limitation that “the material of the annular member, elastic member and one Appeal 2020-006568 Application 14/928,477 12 or more non-slip elements are the same, unitarily formed material comprising an elastomeric band.” Appellant’s Specification describes an embodiment of the claimed “disposable steering wheel cover” which “comprises a continuous elastic band, such as a natural or synthetic latex or rubber band,” wherein “the elastic loop member(s) and the gripping member . . . [are] integral components of the annular member.” Spec. 9, ll. 4–5, 10– 11. However, Appellant’s original disclosure does not adequately describe that in such an embodiment “at least a portion of at least one side edge of the annular member contracts and gathers when the elastic member is released,”7 as called for by independent claim 1, from which claim 11 depends. In other words, Appellant’s disclosure does not adequately support a “disposable steering wheel cover” having an “annular member, elastic member and one or more non-slip elements” from “the same, unitarily formed material comprising an elastomeric band,” as per claim 11, and wherein “at least a portion of at least one side edge of the annular member contracts and gathers when the elastic member is released,” as per claim 1 (emphasis added). Claim 12 is rejected by virtue of its dependency from claim 11. II. Claim 21 is rejected under 35 U.S.C. § 112(b) as being indefinite. Claim 21, which depends from independent claim 1, adds the limitation that “the steering wheel cover is collapsible to a substantially flat and/or scrunched relaxed state when not on a steering wheel.” As the 7 This limitation was not in original claim 1. Appeal 2020-006568 Application 14/928,477 13 common and ordinary meaning of the term “scrunch” is “to draw or squeeze together tightly,” the terms “flat” and “scrunched” contradict each other. See Appeal Br. 18 (Claims App., Exhibit 1). Therefore, the metes and bounds of the claimed disposable steering wheel are not clear with respect to a collapsed relaxed state that is “substantially flat” and “scrunched.” Similarly, the metes and bounds of the claimed disposable steering wheel are not clear with respect to an annular member that “contracts and gathers when the elastic member is released,” as per claim 1, but when collapsed, has a “substantially flat” relaxed state, as per claim 21 (emphasis added). CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 21 112(b) Indefiniteness 21 1, 5–10, 14, 18–21 102(a)(1) Horn 1, 5–10, 14, 18–21 1, 6–12, 14, 15, 19–21 103 Kong, Horn 1, 6–12, 14, 15, 19–21 5, 18 103 Kong 5, 18 11, 12 112(a) Written description 11, 12 21 112(b) Indefiniteness 21 Overall Outcome 1, 5–12, 14, 15, 18–21 11, 12, 21 REVERSED; 37 C.F.R. § 41.50(b)