Ex Parte Boorsma et al

Patent Trial and Appeal Board

Jun 3, 2016

12134862 (P.T.A.B. Jun. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/134,862 06/06/2008
28863 7590 06/07/2016
SHUMAKER & SIEFFERT, P, A,
1625 RADIO DRIVE
SUITE 100
WOODBURY, MN 55125
FIRST NAMED INVENTOR
JimBoorsma
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
l 126-009US01 2530
EXAMINER
MORAN, KATHERINE M
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
06/07/2016 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):
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIM BOORSMA and NICOLE SMITH1
Appeal2014-002011
Application 12/134,862
Technology Center 3700
Before LINDA E. HORNER, JOSIAH C. COCKS, and MARK A. GEIER,
Administrative Patent Judges.
COCKS, Administrative Patent Judge.
DECISION ON APPEAL
1 The real party in interest is Higher Dimension Materials, Incorporated.
Appeal2014-002011
Application 12/134,862
l. STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1-12 and 20 of Application No. 12/134,862 ("the '862
Application").2 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
A. References Relied on by the Examiner
Cunningham
Post
Park
Williams
us 5,601,895
us 6,044,493
US 2005/0009429 Al
US 2007/0031601 Al
B. The Rejections on Appeal
The Examiner rejected:
Feb. 11, 1997
Apr. 4, 2000
Jan. 13, 2005
Feb. 8,2007
(1) claims 1-12 and 20 under 35 U.S.C. § 1123 as failing to comply
with the written description requirement;
(2) claims 1, 7-9, 11, and 12 under 35 U.S.C. § 103(a) as unpatentable
over Park and Post;
(3) claims 2-6 and 20 under 35 U.S.C. § 103(a) as unpatentable over
Park, Post, and Cunningham; and
(4) claim 10 under 35 U.S.C. § 103(a) as unpatentable over Park, Post,
and Williams. Ans. 3-7.
2 In this Opinion, we make reference to: (1) the Final Office Action mailed
January 23, 2013 ("Final Act."); (2) the Appeal Brief filed August 20, 2013
("App. Br."); (3) the Examiner's Answer mailed September 23, 2013
("Ans."); and (4) the Reply Brief filed November 25, 2013 ("Reply Br.").
3 The Examiner characterizes the rejection as one based "under 35 U.S.C. [§]
l 12(a) or 35 U.S.C. [§] 112 (pre-AIA), first paragraph." Ans. 3.
2
Appeal2014-002011
Application I2/134,862
C. The Invention
The '862 Application describes a protective knitted glove assembly
including a knitted glove and printed guard plates arranged on a surface of
the glove. Spec. i-f 8. Figures IA and IC of the '862 Application are
reproduced below:
FIG. 1A FIG. 1C
Figure IA above illustrates a front view of glove assembly I with
guard plates 2 covering the palm side of glove assembly I. Spec. i-f 24.
Figure IC above illustrates a back view of glove assembly I with guard
plates 2 on the sides of the thumb and forefinger and in the crotch of the
thumb and forefinger in addition to on the back of glove assembly I. Id.
Figure 2A is reproduced below:
3
/
1
Appeal2014-002011
Application 12/134,862
FIG. 2A
Figure 2A above illustrates an array of guard plates 2 according to an
embodiment of the invention. Spec. i-f 25. Guard plates 2 are screen-printed
onto outer surface 4 of knitted glove 3 to enhance the abrasion, wear, and cut
resistance of knitted glove 3. Id. Guard plates 2 can be printed onto knitted
glove 3 in a variety of geometries and patterns. Id. i-f 31. Gaps 5 between
guard plates 2 enable glove assembly 1 to retain flexibility while inhibiting
objects from abrading directly against knitted glove 3. Id. i-f 33.
Knitted glove 3 can be made of polyester, aramid, ultra-high
molecular weight polyethylene, blends of the aforementioned materials, or a
blend of aramid and thin steel wires. Id. i-f 30. Guard plates 2 can be made
from resins and can include additives added to the resins to increase
abrasion, wear, cut, and/or heat resistance. Id. i-f 51.
4
Appeal2014-002011
Application 12/134,862
Claim 1 is independent and is reproduced below:4
l, A protective knitted glove assembly comprising:
a seamless knitted glove including an outer surface; and
two or more arrays of non-overlapping, cured polymer
material guard plates arranged in a predetermined pattern and
having an area parallel to a surface of the glove,
\vherein the t\VO or more arrays of non-overlapping, cured
polymer material guard plates comprise a first anay of guard
plates and a second an-ay of guard plates formed of a polymer
material screen printed onto the outer surface of the glove~
wherein the polymer material of the first array of guard
plates is partially cured after being screen printed onto the outer
surface of the glove but before the second array of guard plates
is screen printed onto the outer surface of the glove.
See App. Br. Claims App. 11.:;
II. ISSUES
We consider if the record before us supports the Examiner's rejection
of claims 1-12 and 20. In particular, we inquire:
(1) whether the Examiner correctly determined that the amendment to
claim 1 reciting that the knitted glove is "seamless" constitutes new matter;
and
(2) whether the Examiner correctly determined that Park and Post
teach a seamless knitted glove as recited in claim 1.
4 Claims 2-12 and 20 ultimately depend from claim 1.
5 Claim 1 as it appears in the Claims Appendix of the Appeal Brief does not
include the word "seamless." The word "seamless," however, was added to
claim 1 by an Amendment filed on July 9, 2012. It is apparent from the
record before us that claim 1 involved in this appeal is understood as
including the "seamless" recitation.
5
Appeal2014-002011
Application 12/134,862
Ill. ANALYSIS
The Examiner determined that claims 1-12 and 20 fail to comply with
the written description requirement of 35 U.S.C. § 112, and are unpatentable
based on obviousness over the prior art.
A. The 35 U.S. C. § 112 Rejection
In response to the Examiner's rejection of claim 1 as being anticipated
by Park in an Office Action mailed on April 9, 2012, the Appellants
amended claim 1 to recite that the knitted glove is "seamless." In response
to the amendment, the Examiner rejected claims 1-12 and 20 under 35
U.S.C. § 112 as failing to provide adequate support for the "seamless"
limitation. Ans. 3--4.
The Appellants argue that the phrase "knitted glove" is a term of art
that one of ordinary skill in the art would recognize as implicitly referring to
a knitted glove without seams. App. Br. 4--5; id. at 6; Reply Br. 6. In
support of that position, the 1A .. ppellants cite to Post and U.S. Patent No.
7,836,839 B2 as providing evidence for such an interpretation. 6 App. Br. 5-
7; Reply Br. 6 (citing Post col. 4, 11. 65-67 and Park-2 col. 1, 11. 6-7 and 13-
18).
Appellants have not provided adequate evidence that the phrase
"knitted glove" is a term of art that one of ordinary skill in the art would
recognize as implicitly referring to a knitted glove without seams. At the
outset, we observe that the Specification of the '862 Application does not set
forth that any knitted gloves described therein are seamless. Furthermore,
6 U.S. Patent No. 7,836,839 B2 issued to Park, and is, hereinafter, referenced
as "Park-2."
6
Appeal2014-002011
Application 12/134,862
we observe that the portion of Post on which the Appellants rely states the
following:
Preferably, the entire glove 18 is integrally knitted such that the
glove body, thumb stall and finger stalls are all integrally formed
with one another in a seamless construction. Although the glove
can be woven instead of knitted, knitting is preferred since
knitted garments conform more easily to the contours of the
human body than woven garments. Moreover, the seamless
construction of knitted garments avoids any irritation that could
be caused to the wearer from seams.
Post 4:59---67.
Thus, Post simply conveys that in one embodiment of its invention a
knitted glove is "[p ]referably" formed in a manner regarded as "seamless."
Id. The Appellants do not explain why Post's expression of a preference for
a seamless construction with respect to a knitted gloves establishes that such
a construction is inherent or implicit in connection with all knitted gloves.
Indeed, that Post views such a construction as preferable suggests that other
constructions of knitted gloves not recognized as seamless were known,
albeit, not preferred.
Nor do we agree with the Appellants that Park-2 provides suitable
evidence of the inherent nature of seamlessness in knitted gloves. Park-2
states the following:
In general, gloves can be roughly divided into sewn gloves
and knitted gloves according to a manufacturing method thereof.
The sewn gloves are manufactured by sewing the sections for the
palm and the back of the hand along a cut line, whereas the
knitted gloves are manufactured integrally without a separate
seam.
Park-2, 1: 13-18.
7
Appeal2014-002011
Application 12/134,862
The Appellants do not explain adequately why a "general" recognition
that gloves may be "roughly divided" into those that are sewn and those that
are knitted without seams conveys that such knitted gloves are necessarily in
all cases understood in the art as seamless.
Furthermore, other art of record in this proceeding undermines the
Appellants' assertions. In particular, we take note of Park, which is
discussed in detail below in conjunction with the Examiner's obviousness
showing. Park conveys that one of ordinary skill in the art knew that
protective garments, such as gloves, may be formed from heat-resistant
fibers that are "knit" together. Park i-fi-12, 4. Park also describes that the
fabrics of its particular disclosed invention may be "knit." Id. i1 4 7. The
Examiner characterized Park as being directed to a "knitted glove" (Final
Act. 3; Ans. 4 ), and the Appellants do not dispute that characterization.
Indeed, during the course of prosecution of the '862 Application, the
Appellants represented that Park fails to disclose a "knitted glove [that]
comprises a seamless knitted glove. "7 The Appellants do not reconcile their
apparent contradictory positions that Park teaches a "knitted glove" that is
not seamless, yet a "knitted glove" is recognized in the art as always being
of seamless construction.
We have considered the record before us, including the Appellants'
arguments, but are not persuaded that they show error in the Examiner's
rejection of claims 1-12 and 20 as failing to satisfy the written description
requirement of 35 U.S.C. § 112. We sustain the Examiner's rejection.
7 See page 6 of the "Amendment" filed July 9, 2012.
8
Appeal2014-002011
Application 12/134,862
B. The Prior Art Rejections
The Examiner rejected claim 1 as being unpatentable over Park in
view of Post. Ans. 4--5. The Examiner relied upon Park to account for all
the features of claim 1 except for the requirement that the knitted glove is
seamless. To make up for that deficiency, the Examiner relied on Post as
teaching a seamless knitted glove. Id.
The Appellants contend that one of ordinary skill in the art would not
have modified Park with the teachings of Post because of alleged
"complications" associated with screen-printing the resin materials used to
form the guard plates onto non-planar surfaces, such as the surface of a
seamless knitted glove. App. Br. 8-9. The Appellants also argue that "the
cited art fails to teach or suggest that it is even possible to [screen-print]
resin materials used to form guard plates 102 onto non-planar surfaces of a
knitted glove." Id. at 9. In response, the Examiner urges that the
Appellants' allegations of complications are mere speculation. Ans. 8.
We do not agree with the Appellants. Park discloses knitted gloves
that are flame-retardant and puncture-resistant. Park i-fi-147, 49. The gloves
include a substrate and guardplates affixed to the substrate. Id. i18. Park's
Figure 2 is reproduced below:
9
Appeal2014-002011
Application 12/134,862
Figure 2 above illustrates guardplates 102 affixed to substrate 205 by
a screen-printing process. Park i-fi-1 45, 48. Substrate 205 can be a knit fabric
such as Kevlar. Id. i147. Guardplates 102 can be made from resins, such as
an elastomer (i.e., a polymer). Id. i-fi-134, 40, 48.
Post discloses knitted gloves that are puncture-resistant. Post 1 :5-11;
2:12-15. Post's Figure 3 is reproduced below:
"'' "''······· f~ ,;:.~~ ~-
., 1 i · ''···'I i \
'{ \\. ·><:> \ // ) )'
\ \ \\ '-'>< )/
~c§·' \\."'"._... .. ·' \>\. _, .. > ...... ··
"*.\
. ~; .. :~ ~~
.:' ~
00 ·llp FIG, 3
10
Appeal2014-002011
Application 12/134,862
Figure 3 above illustrates glove 18 including glove body 20, finger
stalls 22, thumb stall 24, and palm coating 30. Post 5:10-12. Glove 18 is
made of a knitted protective garment material such as Kevlar. Id. at 3:50-
64; 4:23-30. The glove is integrally knitted such that glove body 20, finger
stalls 22, and thumb stall 24 are formed integrally in a "seamless"
construction. Id. at 4:59-62. Palm coating 30 is an elastomeric material that
is bonded to glove 18 by a screen-printing process. Id. at 5:10-14; 6:27-36.
We observe that both Park and Post teach knitted gloves made of
similar materials, that the knitted gloves including elastomer plates/coating,
and that the plates/coating may be affixed to the knitted gloves by screen-
printing. Thus, the teachings of the prior art convey readily that elastomeric
material may be screen-printed onto the surface of a knitted glove, seamless
or otherwise. We find unavailing the Appellants' general assertion that
applying the teachings of Post regarding the seamless feature to the knitted
glove of Park would somehow give rise to "complications" associated with
screen-printing on a knitted glove. See App. Br. 8-9. That assertion simply
fails to account appropriately for the clear disclosures of the prior art as
would be understood by a skilled artisan. Indeed, that each reference
already contemplates such screen-printing onto a knitted glove undermines
the Appellants' contention that any "complications" present in applying
screen-printing to such gloves would somehow preclude a skilled artisan
from combining the teachings of Park and Post.
We have considered the Appellants' arguments, but, for the foregoing
reasons, we are not persuaded that they demonstrate error in the Examiner's
rejection of claim 1. We sustain the Examiner's rejection of claim 1 as
unpatentable over Park and Post. Claims 2-12 and 20 depend from claim 1.
11
Appeal2014-002011
Application 12/134,862
The Appellants do not challenge the rejections of claims 2-12 and 20 apart
from claim 1. We also sustain the Examiner's rejections of those dependent
claims over the prior art.
IV. CONCLUSION
We have reviewed the record before us and conclude that the
Examiner's rejection of claims 1-12 and 20 under 35 U.S.C. § 112 as failing
to comply with the written description requirement is supported adequately.
We have reviewed the record before us and conclude that the
Examiner's rejections of claims 1-12 and 20 based on the prior art is
supported adequately.
V. ORDER
The Examiner's decision to reject claims 1-12 and 20 as failing to
comply with the written description requirement of 35 U.S.C. § 112 is
affirmed.
The Examiner's decision to reject claims 1-12 and 20 over the prior art
is 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).
AFFIRMED
12