Ex Parte Barnard

Patent Trial and Appeal Board

Sep 17, 2012

11588957 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DILLON C. BARNARD
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Appeal 2010-005483
Application 11/588,957
Technology Center 3700
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Before: JENNIFER D. BAHR, CHARLES N. GREENHUT, and
JAMES P. CALVE, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

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

The claims are directed to a grip pad. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A pad for use in gripping a portion of a generally bar-shaped
object, wherein the bar-shaped object defines a longitudinal
axis, and wherein the pad is to be interposed between the bar-
shaped object and a user’s hand at the palm and fingers, the pad
comprising:
a first surface defining a first outer edge, the first surface
for facing the user's palm and fingers;
a second surface defining a second outer edge, the second
surface for facing the bar-shaped object; and
a cushioning body between the first and second surfaces,
the body defining, along a direction parallel to the longitudinal
axis of the bar-shaped object, a substantially flat shape, and the
body defining, in a direction perpendicular to the longitudinal
axis of the bar-shaped object, a substantially curved shape that
follows the natural curve of the hand.

REJECTIONS
Claims 1, 5, 8-10, and 13 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Reis (US 5,603,679 iss. Feb. 18, 1997). Ans. 3.
Claims 2, 3, 4, 6, 7, 11, 12, 14, and 15 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Reis. Ans. 5.

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OPINION
The central issue in this appeal regarding the Examiner’s rejection of
independent claim 1 is the Examiner’s interpretation of the scope of the
recited cushioning body defining a “substantially curved shape.” App. Br.
14-16. During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). The Examiner correctly
declined to import limitations from the Specification limiting that cushioning
body to structures that were substantially curved by some specific unrecited
process, for example, a molding process. See App. Br. 18; Reply Br. 2; Spec.
5:2-6. Reading a claim in light of the specification, to thereby interpret
limitations explicitly recited in the claim, is a quite different thing from
reading limitations of the specification into a claim, to thereby narrow the
scope of the claim by implicitly adding disclosed limitations which have no
express basis in the claim. In re Prater, 415 F.2d 1393, 1404-05 (CCPA
1969). The Examiner reasonably interpreted the recited cushioning body to
include structures that were substantially curved by outside forces, for
example, by the hand or bar during use. Ans. 6. This is consistent with the
Specification which states that the curved shape “may be obtained by any
suitable means.” Spec. 5:5-6. We recognize that in the state depicted in
Reis’s figures, Reis’s pad assumes a flat, as opposed to a curved, shape.
App. Br. 14. However, the fact that the state in which Reis assumes a curved
shape is only temporary does not detract from the efficacy of Reis as an
anticipatory reference. See In re Herbert, 461 F.2d 1390, 1394 (CCPA
1972).
Appellant apparently recognized the Examiner’s position that the
claim language did not create a structural distinction from Reis. App. Br. 16.
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Appellant does not provide any arguments to demonstrate error in this
position.
Those arguments directed to teaching away and secondary
considerations, such as unexpected results, are not pertinent to a rejection
under 35 U.S.C. § 102(b). See App. Br. 16-17; see Seachange Int’l, Inc. v.
C-COR, Inc. 413 F.3d 1361, 1380 (Fed. Cir. 2005)(“Teaching away is
irrelevant to anticipation”); WL Gore & Assoc., Inc. v. Garlock, Inc., 721 F.
2d 1540 (Fed. Cir. 1983)(DAVIS, Circuit Judge, concurring in the result in
part and dissenting in part.) (“discussion of ‘secondary considerations,’. . .
is irrelevant to the issue of anticipation”).
Regarding dependent claims 2 and 3, Appellant relies on the
arguments advanced concerning claim 1 and not the specific language of
claim 2 or 3. App. Br. 19-24. The fact that Reis discloses a flat shape in one
configuration does not “teach away” from curving Reis’s pad in another
configuration, particularly because that is exactly how Reis’s pad is intended
to be used. Contra App. Br. 20, 21. For objective indicia or secondary
considerations of obviousness to be relevant to the Examiner’s conclusion of
obviousness regarding the subject matter of claims 2 and 3 there must be a
nexus between the limitations of claims 2 and 3 and the secondary
considerations. Ashland Oil, Inc. v. Delta Resins & RefractoReis, Inc., 776
F.2d 281, 305 n.42 (Fed. Cir. 1985). ). “Where the offered secondary
consideration actually results from something other than what is both
claimed and novel in the claim, there is no nexus to the merits of the claimed
invention.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (citation
omitted). Thus, evidence pertaining to the features of independent claim 1,
which the Examiner found was anticipated, is of little or no probative value
as to the correctness of the Examiner’s conclusion that the subject matter of
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claims 2 and 3 would have been obvious to one having ordinary skill in the
art. See App. Br. 22-24; Gracia Decl. p. 3, para. 10. Appellant’s argument
concerning claim 11, advancing patentability for the same reasons as claim 2
(App. Br. 30), is unpersuasive for the same reasons.
We turn to the rejection of independent claim 8 and claim 13
depending therefrom. The recitation of the size of the pad body with respect
to the hand when the pad is held in a specific orientation in the hand relates
to how the device will be used. Ans. 7; contra App. Br. 24-28. Indeed, the
claim is directed to a pad, not the combination of a pad and hand. Thus, a
prior art pad body need not actually be shown with a hand relatively sized or
oriented according to the claim in order to fall within the scope of claim 8.
See In re Schreiber, 128 F. 3d 1473 (Fed. Cir. 1997)(recitations related to
dispensing popcorn did not limit the claimed subject matter to devices
actually used to dispense popcorn). In addition to defining the claimed
structure by how it will be used, Appellant elected to broadly define that use
by reference to an object that is variable—the size of a hand. See, e.g., Ex
parte Brummer, 12 USPQ2d 1653 (BPAI 1989); Orthokinetics, Inc. v. Safety
Travel Chairs, Inc.,806 F.2d 1565 (Fed. Cir. 1986); MPEP § 2173.05(b). We
agree with the Examiner that the claim encompasses any pads that would
meet the recitations regarding the size of the body with respect to the hand
for any reasonably sized hand.
As the Examiner points out, hands come in a variety of sizes. Ans. 5-
6. The pad body of the embodiment depicted in Figure 4 of Reis reasonably
meets the limitations pertaining to size relative to a hand for a hand of a
certain size, slightly smaller than that depicted in Reis’s Figure 1, gripping it
at an orientation rotated ninety degrees from the hand depicted in Figure 1.
The hand size and orientation depicted in Figure 1, and that size and
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orientation specifically suggested by Reis is of little consequence. Contra
App. Br. 26-7. It may be probative as to the approximate size of the pad
relative to an average hand, as the Examiner found regarding claim 14, but it
does not alter the structure of Reis’s pads. Those pads fall within the scope
of claim 8 regardless of how Reis intends to orient them in a hand or what
size hand Reis suggests using them with. As discussed above, “teaching
away” is not relevant to the issue of anticipation. Contra App. Br. 25, 26, 28,
29.
Appellant mentions the limitations of claim 14 (App. Br. 25) but does
not appear to present any arguments germane to the Examiner’s position.
The Examiner found that Reis’s figures in combination with Reis’s
description were sufficient to teach an oval shape about 4.5 inches in length.
Ans. 5. Appellant has not apprised us of any error in this finding.
Appellant’s argument concerning claim 10 (App. Br. 30) is
unpersuasive for reasons already discussed: Teaching away and secondary
considerations are not relevant to the issue of anticipation. To the extent
Appellant argues claims 10-12 for the same reasons as claims 1-3 (App. Br.
29), our reasoning discussed above remains applicable.

DECISION
The Examiner’s rejections of claims 1-15 are affirmed.
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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