Ex Parte 6447190 et al

Board of Patent Appeals and Interferences

Jan 27, 2011

95000399 (B.P.A.I. Jan. 27, 2011)

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.
95/000,399 11/17/2008 6447190 31617.00 1540
37833 7590 01/28/2011
LITMAN LAW OFFICES, LTD.
PATENT LAW BUILDING
8955 CENTER STREET
MANASSAS, VA 20110
EXAMINER
CLARK, JEANNE MARIE
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
01/28/2011 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
____________

PENTEL CO., LTD. AND PENTEL OF AMERICA, LTD.
Requestor and Respondent

v.

BENJAMIN J. KWITEK
Patent Owner and Appellant
____________

Appeal 2010-011882
Reexamination Control 95/000,399
US Patent 6,447,190 B1
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFERY B. ROBERTSON, and
DANIEL S. SONG, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL1

1 The one-month time period for filing a request for rehearing, as recited in
37 C.F.R. § 41.79, and the two-month time period for filing an appeal, as
recited in 37 C.F.R. § 1.304 (see 37 C.F.R. § 1.983(b)(1)), both begin to run
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This is a decision on appeal by the Patent Owner from the Patent
Examiner’s rejections of claims 1-22 in an inter partes reexamination of
U.S. Patent No. 6,447,190 B1. The Board’s jurisdiction for this appeal is
under 35 U.S.C. §§ 6(b), 134, and 315. We affirm-in-part.

STATEMENT OF THE CASE
The patent in dispute in this appeal is U.S. Patent No. 6,447,190 B1
(hereinafter, “the ‘190 patent”), which issued September 10, 2002. The
named inventor is Benjamin J. Kwitek, who is also the real party in interest
(“Kwitek”) (Patent Owner’s Brief on Appeal 2 (hereinafter “Kwitek App.
Br.”)).
A corrected request for inter partes reexamination under 35 U.S.C.
§§ 311-318 and 37 C.F.R. §§ 1.902-1.997 for the ‘190 patent was filed
November 18, 2008,2 by a Third-Party Requester (Corrected Request for
Inter Partes Reexamination (hereinafter “Request”)) on the basis of prior art
asserted to raise substantial new questions of patentability. The Third Party
Requester is Pentel Co., Ltd. and Pentel of American, Ltd. (Request 2;
hereinafter “Pentel)”
An oral hearing was held December 15, 2010. A transcript of the
hearing will be entered into the record in due course.
According to Kwitek, at the time the brief was filed, the ‘190 patent
was the subject of Kwitek v. Pilot Pen, a lawsuit which is pending in the U.S.

from the “MAIL DATE” shown on the PTOL-90A cover letter attached to
this decision.

2 Although the Request states it was deposited in the mail on Nov. 18, 2008,
there is a stamp in the upper left hand corner with the date “11/17/08.”
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District Court for the Eastern District of Texas (Kwitek App. Br. 2). Pentel
referenced pending litigation filed by Kwitek against Pentel (Requester &
Respondent’s Appeal Brief 2 (hereinafter “Pentel App. Br.”)), but this
litigation was listed under a different case number than provided by Kwitek.
The claims of the ‘190 patent are drawn to a writing implement with a
grip comprising a shell and viscoelastic hand/finger surface. Claims 1-5
were in the original patent. Claims 6-10 were added during the
reexamination proceeding.
The Examiner rejected the claims under thirteen different grounds
(Answer 10-23). The rejections are as follows:
1. Claims 1 and 2 under 35 U.S.C. § 102(b) as anticipated by Colfelt;3
2. Claims 1 and 2 under 35 U.S.C. § 103(a) as obvious in view of
Colfelt and Sparks;4
3. Claims 1, 2, and 4 under 35 U.S.C. § 103(a) as obvious in view of
Colfelt and McCall;5
4. Claims 1, 2, and 4 under 35 U.S.C. § 103(a) as obvious in view of
McCall and Colfelt;
5. Claims 6, 7, and 9 under 35 U.S.C. § 103(a) as obvious in view of
McCall, Colfelt, and Sparks;
6. Claim 10 under 35 U.S.C. § 103(a) as obvious in view of McCall,
Colfelt, Sparks, and Hashimoto;6

3 U.S. Patent No. 1,868,441 (issued July 19, 1932).
4 U.S. Patent No. 3,638,295 (issued Feb. 1, 1972).
5 U.S. Patent No. 5,000,599 (issued Mar. 19, 1991).
6 U.S. Patent No. 4,911,569 (issued Mar. 27, 1990).
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7. Claims 4 and 5 under 35 U.S.C. § 103(a) as obvious in view of
Colfelt, McCall, and Hashimoto;
8. Claims 1-3 under 35 U.S.C. § 103(a) as obvious in view of Colfelt
and Hatakeyama;7
9. Claims 1-3 under 35 U.S.C. § 103(a) as obvious in view of the
‘488 publication8 and Hatakeyama;
10. Claims 1-3 under 35 U.S.C. § 103(a) as obvious in view of Colfelt
and the ‘442 publication9;
11. Claims 1-3 and 6-8 under 35 U.S.C. § 103(a) as obvious in view
of the ‘488 publication and the ‘442 publication;
12. Claims 1 and 2 under 35 U.S.C. § 103(a) as obvious in view of
Colfelt, the ‘972 patent, and the ‘084 publication;10
13. Claims 1 and 2 under 35 U.S.C. § 103(a) as obvious in view of
the ‘488 publication and the ‘084 publication.
Claims 1, 4, and 6 are representative and read as follows (the
underlining in claim 6 indicates that claim 6 was added during the
reexamination proceeding):
1. A writing implement, comprising:
a main body having a gripping portion;
a grip shaped and dimensioned to fit about the gripping
portion of the main body so as to be releasably secured to the
main body;

7 U.S. Patent No. 6,391,972 B1 (issued May 21, 2002).
8 Japanese Pub. No. 59-187,488 (published Dec. 12, 1984) (English
Translation of Record).
9 Int’l Pub. No. WO 90/13442 (published Nov. 15, 1990).
10 Japanese Patent No. 2,854,084 (issued Feb. 3, 1999) (English Translation
of Record).
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the grip including a longitudinally extending, tubular
shell having a hardness sufficient to maintain the shape of the
grip, the shell has an inner surface abuting [sic] with the main
body and an outer surface, and a viscoelastic hand/finger
surface positioned about the outer surface of the tubular shell;
the shell further including proximal and distal lips
retaining the viscoelastic hand/finger surface positioned in a
central section of the tubular shell.

4. The writing implement according to claim 1, wherein the
viscoelastic hand/finger surface is a viscous liquid material
contained within an elastomeric bag.

6. A writing implement, comprising:
a main body having a gripping portion having a recess;
a grip shaped and dimensioned to fit about the gripping
portion of the main body and within the recess of the gripping
portion so as to be releasably secured to the main body and
flush with an overall shape of the main body;
the grip including a longitudinally extending, tubular
shell having a Shore A hardness sufficient to maintain the shape
of the grip, the shell has an inner surface abuting [sic] with the
main body and an outer surface, and a viscoelastic hand/finger
surface positioned about the outer surface of the tubular shell,
the viscoelastic hand/finger surface having a Shore A
Durometer hardness of 2 to 35;
the shell further including proximal and distal lips
retaining the viscoelastic hand/finger surface positioned in a
central section of the tubular shell.

CLAIMS 11-22
In the Appeal Brief on page 1, Kwitek acknowledged that claims 11-
22 were also rejected by the Examiner, but stated that these claims “are not
involved in this appeal.”
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We do not agree factually with this statement. The notice of appeal
filed by Kwitek on September 25, 2009 indicated that claims 1-22 were
appealed from the Examiner’s decision. All 22 claims are therefore before
us on appeal. Since arguments were not presented for claims 11-22, we
affirm the rejections of these claims for the reasons given by the Examiner
during this reexamination proceeding, including the Right of Notice of
Appeal dated August 28, 2009.

CLAIM INTERPRETATION
Claim 1 is directed to writing implement comprising a main body
which has a gripping portion. A grip is “fit about” the gripping portion. The
grip includes a “tubular shell” with proximal and distal lips, and “a
viscoelastic hand/finger surface.” The viscoelastic hand/finger surface is
recited in the claim as “positioned about the outer surface of the tubular
shell.” As recited in claim 1, the shell’s proximal and distal lips retain the
viscoelastic hand/finger surface in the central section of the shell.
The proper interpretation of the phrase “a viscoelastic hand/finger
surface positioned about the outer surface of the tubular shell” is in dispute
in this appeal. Kwitek contends that “about the outer surface” means the
viscoelastic surface must touch the outer surface of the shell (Kwitek App.
Br. 8). In support of this interpretation, Kwitek directs our attention to
portions of the ‘190 patent which describe the “gripping material”
(“viscoelastic surface”) as adhered to the central section of the shell (id. at
8.)
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Legal Principles
During reexamination, as with original examination, the PTO
must give claims their broadest reasonable construction
consistent with the specification. Therefore, we look to the
specification to see if it provides a definition for claim terms,
but otherwise apply a broad interpretation.
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
(citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004); see also In re Suitco Surface Inc., 603 F3d 1255, 1259 (Fed. Cir.
2010)
The words of a claim “are generally given their ordinary and
customary meaning.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996). The “ordinary and customary meaning of a claim
term is the meaning that the term would have to a person of ordinary skill in
the art in question at the time of the invention, i.e., as of the effective filing
date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313,
(Fed. Cir. 2005). “[A] person of ordinary skill in the art is deemed to read
the claim term not only in the context of the particular claim in which the
disputed term appears, but in the context of the entire patent, including the
specification.” Id. “In some cases, the ordinary meaning of claim language
as understood by a person of skill in the art may be readily apparent even to
lay judges, and claim construction in such cases involves little more than the
application of the widely accepted meaning of commonly understood words.
. . . In such circumstances, general purpose dictionaries may be helpful.”
Phillips, 415 F.3d at 1314.

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Analysis
The ‘190 patent does not provide a definition of the disputed phrase of
a “viscoelastic hand/finger surface positioned about the outer surface of the
tubular shell.” However, the ‘190 patent does describe the placement of the
viscoelastic surface as summarized in the following Findings of Fact (“FF”):
[FF1] “The viscoelastic hand/finger surface 24 is preferably adhered
to the central section 26 of the shell 12 by over-molding, co-molding or two-
part molding.” (Col. 3, l. 65-col. 4, l. l. 2.)
[FF2] “It is also contemplated that the viscoelastic hand/finger
surface 24 may be adhered to the central section 26 of the shell 12 with an
adhesive.” (Col. 4, ll. 7-9.)
[FF3] “As those of ordinary skill in the art will certainly appreciate,
other methods for securing the hand/finger surface 24 to the shell 12 may be
employed without departing from the spirit of present invention.” (Col. 4, ll.
9-13.)
[FF4] “The attachment could also be accomplished by compressing
both ends of the elastomeric bag 136 at the proximal and distal lips 130a,
130b with a chamber and gasket system.” (Col. 4, ll. 47-49.)
Kwitek appears to be interpreting the claim to require that the
viscoelastic hand/finger surface contacts the shell along the surface’s entire
length. There are preferred embodiments described in the ‘190 patent where
the viscoelastic hand/finger surface is adhered to the shell (FF1 & FF2),
apparently touch the shell along the surface’s complete length. However,
the written description of the ‘190 patent does not limit the writing
implement to this configuration. Rather, the ‘190 patent expressly states that
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other securing methods may be used (FF3), and describes a writing
implement with apparently only the ends of the viscoelastic surface secured
to the shell (FF4). Kwitek’s interpretation to require complete contact is
unduly narrow and requires importing limitations from the ‘190 patent into
the claims (FF1 & FF2), an unreasonable position when the claims are read
in the light of the broader disclosure of the ‘190 patent (FF3 & FF4).
We therefore turn to the broadest reasonable interpretation of the
claimed phrase “viscoelastic hand/finger surface positioned about the outer
surface of the tubular shell.” The term “about” is pivotal to determining the
placement of the viscoelastic surface with respect to the shell. “About” is
not defined in the ‘190 patent. Accordingly, we give the word its ordinary
and customary meaning as defined in a general purpose dictionary.
Vitronics, 90 F.3d at 1582; Phillips, 415 F.3d at 1313-14. Consistent with
the broad disclosure in the ‘190 patent, we construe “about” to mean “on” or
“around.” 11 Accordingly, we interpret the limitation that the viscoelastic
hand/finger surface be “positioned about the outer surface of the tubular
shell” to mean that surface is on or surrounding the shell, but we do not
require it to be contacting or touching the shell along the viscoelastic’s entire
surface.

COLFELT (Rejections 1, 2, 8, 10, 12)
Kwitek did not separately address all the different rejections of claim
1 over Colfelt and Cofelt combined with other publications, but rather

11 “About”: “3. in, on, or somewhere near . . . 5. on every side of; around.”
The Random House College Dictionary (Revised Edition, 1982), p. 4.
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argued them together under one section of the Appeal Brief (Kwitek App.
Br. 8-9). We therefore treat Rejections 1, 2, 8, 10, and 12 together.

Issue
The rejections turn on the proper interpretation of the phrase
“viscoelastic surface positioned about the outer surface of the tubular shell.”

Legal Principles
Because the hallmark of anticipation is prior invention, the
prior art reference – in order to anticipate under 35 U.S.C. §
102 – must not only disclose all elements of the claim within
the four corners of the document, but must also disclose those
elements “arranged as in the claim.”
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008)
(citing Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir.
1983)).
Findings of Fact
[FF5] Colfelt describes a writing instrument with a body element
made of a compressible material (p. 1, ll. 1-6).
[FF6] Colfelt describes a “thimble” structure placed between the
compressible member and the staff of the writing instrument (p. 1, ll. 18-20).
[FF7] Colfelt teaches that the “cushion support [the body element of
compressible material] [is] adapted for being precisely positioned upon the
instrument . . . and one that may be easily removed for the sharpening of the
pencil and for being increased or decreased in diameter” (p. 1, ll. 38-44).
[FF8] The thimble is described as “slidably disposed in intimate
contact with the writing instrument” (p. 1, ll. 69-70).
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[FF9] “The ends 6 and 7 of the thimble are threadably secured to each
other and have shoulders 8 and 9 extending outwardly,” shown in the Colfelt
figure as being positioned at the ends of the thimble (p. 1, ll. 71-75).
[FF10] “The body element 10 is made of resilient material and is
disposed about the thimble 5 . . . so that the ends of the body element 10 fit
next to the shoulders 8 and 9 of the thimble and an air space 11 is thereby
provided which entirely surrounds the upper surface of the thimble” (p. 1, ll.
75-82.)
[FF11] Colfelt teaches that the length of the resilient member, and the
length and area of the underlying airspace, can be increased or decreased by
adjusting the threads of the members forming the thimble (p. 1, ll. 83-90).

Analysis
The rejections are based on findings that the thimble described by
Colfelt for its writing instrument (FF6) corresponds to the claimed tubular
shell and that the compressible body element (FF5 & FF7) corresponds to
the viscoelastic hand/finger surface of claim 1. Kwitek contends that the
viscoelastic gripping material of claim 1 “must touch the outer surface” of
the tubular shell (Kwitek App. Br. 8). “In contradistinction to this specific
recitation,” Kwitek argues, Colfelt describes an airspace between the body
element and thimble (id. at 8-9; FF10). The rejections thus turn on whether
“viscoelastic surface positioned about the outer surface of the tubular shell”
must be construed to require the viscoelastic surface to touch the shell
surface along the former’s entire length.
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Kwitek’s position is based on an unreasonably narrow interpretation
of claim 1. Claim 1 does not require the claimed “viscoelastic hand/finger
surface” to be touching the shell along the entire length of the surface (see
supra Claim Interpretation section). The literal language of the claim is that
the viscoelastic surface is “positioned about the outer surface of the tubular
shell,” a configuration that would be understood to mean that the surface is
on or surrounding the shell outer surface, but not necessarily adhered or
contacting it along its entire length. Colfelt’s compressible body element
surrounds the writing instrument’s thimble and touches its shoulders at both
ends (FF10), meeting the claimed limitation of claim 1 as properly
interpreted in view of the ‘190 patent.
As the Examiner found that Colfelt described all the limitations of the
claimed writing implement, we affirm the anticipation rejection of claim 1
and dependent claim 2, which was not separately argued.
Rejections 2, 8, 10, and 12 (involving claims 1-3), based on Colfelt
combined with additionally cited references, were not separately argued.
Consequently, we affirm the rejections of claims 1-3 for the reasons given
by the Examiner.

COLFELT & MCCALL (Rejections 3 & 4)
Claim 4 depends on claim 1, and further recites that the “viscoelastic
hand/finger surface” of the writing instrument “is a viscous liquid material
contained within an elastomeric bag.” The Examiner found that McCall
described a writing instrument with a viscoelastic surface that meets the
limitations of claim 4 (Answer 13-14). Kwitek contends that McCall lacks
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the claimed tubular shell and proximal and distal lips of claim 1 (Kwitek
App. Br. 9-10).
The rejection is based on the combination of Colfelt and McCall.
Colfelt describes a writing instrument having a tubular shell (“thimble”)
with proximal and distal lips (“shoulders”) (FF6 & FF9). McCall was said
by Pentel to describe the claimed elastomeric bag in the form of a bladder
grip (Inter Partes Request 38). The Examiner adopted Pentel’s position that
it would have been obvious to the ordinary skilled worker to “substitute the
bladder grip [elastomeric bag] taught by McCall . . . for the sponge rubber
grip of” Colfelt “to obtain the benefits of” McCall’s bladder grip (id.).
Whether a shell and lips are absent from McCall is not determinative
because the Examiner relied upon Colfelt for these features, not McCall.
The latter features are described in Colfelt. As we find no error in the
Examiner’s determination, we affirm the rejection of claim 4. Claims 1 and
2 were not argued separately and therefore fall with claim 4.

REJECTIONS OF CLAIM 1 BASED ON ‘488 (Rejections 9, 11, & 13)
Kwitek did not separately address all the different rejections of claim
1 over the ‘488 publication combined with other publications, but rather
argued them together under one section of the Appeal Brief (Kwitek App.
Br. 11-12).
Issue
Does the ‘488 publication teach a shell “including proximal and distal
lips retaining the viscoelastic hand/finger surface” as recited in claim 1?

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Findings of Fact
[FF12] The ‘488 publication describes an “auxiliary tool for easy
attachment and detachment of a cushion for a writing instrument.” (Page 4,
ll. 2-3).
[FF13] The ‘488 publication teaches that the “cushion is made of
rubber” and “thus has high friction resistance in attachment to a writing
instrument . . . and is hard to attach and detach.” (Page 4, ll. 23-25.)
[FF14] According to the ‘488 publication, the “auxiliary tool is
attached to the inside of a plastic cushion made of rubber or vinyl to reduce
friction resistance generated between the cushion and the writing instrument
. . . thereby allowing easy attachment and detachment.” (Page 5, ll. 2-6).
[FF15] Figure 3 is reproduced below:

Figure 3 shows a writing instrument comprising the auxiliary tool 3
and cushion (not enumerated in Figure 3) placed outside of the auxiliary
tool. (Page 4, l. 28 – page 5, l. 8).
[FF16] Figure 8 is reproduced below:
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Figure 8 shows a sectional view of a writing instrument in which the
auxiliary tool 5 has an abutment 8 (Page 5, ll. 23-25). The cushion is placed
outside of the auxiliary tool.
[FF17] ‘488 publication describes embodiments with the auxiliary
tool attached to the writing instrument. ‘488 states that the auxiliary tool’s
“rear portion is thickened or the abutment (8) is provided in the rear portion
to prevent rearward displacement of the cushion, and a front portion is
thickened or the abutment (8) is provided in the front portion to prevent
forward displacement of the cushion” (Page 5, l. 27 to 6, l. 3; emphasis
added).
[FF18] Claim 9 is drawn to an “auxiliary tool of a cushion for a
writing instrument . . . characterized in that a protrusion (8) is provided on
the front portion (5) or rear portion (6) to a prevent displacement of the
cushion.” (Page 3.)
Analysis
The dispute in the rejections of claim 1 involving the ‘488 publication
centers on whether the publication teaches a shell “including proximal and
distal lips retaining the viscoelastic hand/finger surface.” Citing Figure 8
and claim 9 of the ‘488 publication (FF16 & FF18), Kwitek contends that
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‘488 describes a proximal or distal lip, but not both. Kwitek argues that the
statement on page 5 of ‘488 that uses the word “and” in conjunction with a
front and rear abutment (FF17) is reference to separate alternative
embodiments, as indicated by the comma between them, and is not a
reference to a single embodiment with both front and rear abutments
(Kwitek App. Br. 11-12).
The rejections are under 35 U.S.C. § 103, not § 102. Section 103
recognizes that there are differences between the prior art and the claimed
invention, but asks whether the differences would have been obvious to the
person of ordinary in the art. It is therefore unnecessary for us to resolve the
dispute between Kwitek and the Examiner as to whether the ‘488 publication
expressly describes both proximal and distal lips in the same writing
instrument. Rather, we need only decide whether ’488 reasonably suggests
both.
In this case, we answer the question affirmatively. The ‘488
publication gives a reason as to why distal and proximal lips would be
included: to prevent rearward or forward displacement of the cushion
(FF17). It is common sense that if a rear abutment were present to prevent
rearward displacement, there would still be a need to hinder forward
displacement of the cushion when the writing instrument is used by the
writer. Consequently, the ‘488 publication would have reasonably suggested
to the ordinary skill worker both proximal and distal abutment lips.
We affirm rejections 9, 11, and 13 of claim 1 involving the ‘488
publication. Claims 2 and 3 were not separately argued and fall with claim
1. Claim 6 was separately argued; we address it below.
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REJECTION OF CLAIM 6 BASED ON ‘488 (Rejection 11)
Rejection 11 involved claims 1-3 and 6-8. We affirmed the rejection
as to claims 1-3. However, claim 6 was separately argued by Kwitek
(Kwitek App. Br. 13-14) and thus claim 6, and claims 7 and 8 which depend
on claim 6, do not fall with claim 1.
Claim 6 is directed to a writing implement comprising a main body
“having a gripping portion having a recess.” The main body of the writing
instrument therefore must have a recess. The ‘488 publication does not
describe a writing instrument with a recess in the main body. The Examiner
appeared to have interpreted the front and rear abutments in the ‘488 writing
instrument as defining a recess (Answer 20). However, the abutments are
not in the instrument’s main body, but on the auxiliary tool (FF16-18) – the
part which corresponds to the tubular shell of claim 6. Because a main body
having a recess is not described by the ‘488 publication, and none of the
secondary references were characterized as meeting this deficiency, we are
compelled to reverse the rejection of claim 6 based on the ‘488 publication
and dependent claims 7 and 8.

MCCALL, COLFELT, & SPARKS (Rejections 5 & 6)
Issue and Discussion
The writing implement of claim 6 has a recess in the main body and a
tubular shell “including proximal and distal lips” within the recess. The
issue in this rejection is whether there would have been a reason at the time
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of the invention to have put proximal and distal lips on a shell which is to be
inserted into the main body recess of a writing implement.
McCall is directed to a writing instrument with a recess, but lacks a
shell with “a viscoelastic hand/finger surface positioned about the outer
surface of the tubular shell” as required by claim 6. Colfelt describes a shell
with lips – thimble 5 with shoulders 8 and 9 (FF6, FF9, & FF10). However,
the Examiner did not articulate an adequate reason as to why the thimble
with shoulders of Colfelt would be utilized in the recess of McCall’s writing
implement (Answer 14-15).
Pentel contends that the “lips 8 and 9” of Colfelt “that extend
outwardly from opposite ends of the shell 5 would hold the bladder grip in
place so that the grip could more easily be slid onto and off the writing
instrument.” (Pentel App. Br. 23-24.)
As explained by Colfelt, the length of the thimble (defined by
shoulders 8 and 9) is adjustable to change the length of the surrounding body
element 10 (corresponding to the viscoelastic surface) and the area and
length of the airspace underneath it (FF9-FF11). Colfelt does not describe
the thimble and its associated shoulders as facilitating insertion of the body
element on the main body of the writing instrument.
On the other hand, the ‘488 publication expressly teaches a structure
for “allowing easy attachment and detachment” of a viscoelastic surface (the
“auxiliary tool” and “cushion,” respectively) (FF12-FF14). Certain
embodiments are shown in the ‘488 publication which have abutments
corresponding to the shell lips of claim 6, but the abutments appear to be for
preventing displacement of the cushion when attached to the writing
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instrument (FF17). Embodiments are also shown with the auxiliary tool
lacking the abutments, indicating these are not necessary for the auxiliary
tool to facilitate attachment and detachment of the writing instrument
cushion (FF15).
When the evidence as a whole is weighed, we fail to see a reason as to
why the skilled worker would have placed proximal and distal lips on a
tubular shell inserted into a recess. As noted by Kwitek, McCall’s recessed
cavity already has shoulders to hold the sleeve/cushion/viscoelastic surface
in place (Kwitek App. Br. 17). Colfelt does not describe its lip/abutments
for holding the cushion in place during attachment as argued by Pentel
(compare FF7 & FF8). But instead Colfelt describes the shoulders are being
used maintain the airspace when the distance between the ends is adjusted
by threading (FF9-FF11). As evidenced by the ‘488 publication, persons of
ordinary skill in the art would have recognized that abutments are not
needed to attach and detach a cushion grip on writing instrument, and don’t
appear to serve that purpose. In sum, we conclude that rejection is based on
impermissible hindsight and selectively picking features from the prior art.
We reverse rejections 5 and 6 of claims 6, 7, 9, and 10.

MCCALL AND HASHIMOTO (Rejection 7)
The rejection of claims 4 and 5 in view of McCall and Hashimoto
were not separately addressed by Kwitek. We affirm the rejection for the
reasons stated by the Examiner.

Appeal 2010-011882
Reexamination Control 95/000,399
Patent US 6,447,190 B1

20
DEPENDENT CLAIMS
Dependent claims not separately argued fall with the independent
claims addressed in each rejection. 37 C.F.R. § 41.37(c)(1)(vii).

SUMMARY
The rejections of claims 1-5 are affirmed. The rejections of claims 6-
10 are reversed.

TIME PERIOD FOR RESPONSE
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See also 37 C.F.R. § 41.79.

AFFIRMED-IN-PART;

ack

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