Ex Parte Bottcher

Patent Trial and Appeal Board

Jun 30, 2016

12244468 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/244,468 10/02/2008
82566 7590 07/05/2016
Nixon Peabody LLP
70 West Madison, Suite 3500
Chicago, IL 60602
FIRST NAMED INVENTOR
Paul L. Bottcher
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.
213786-000355USD1 2059
EXAMINER
THROWER,LARRYW
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
docketingchicago@nixonpeabody.com
ipairlink@nixonpeabody.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PAULL. BOTTCHER
Appeal2014-009400
Application 12/244,468
Technology Center 1700
Before BRADLEY R. GARRIS, STEVEN D.A. McCARTHY, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Paul L. Bottcher, Appellant,2 appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 9-20 and 30-38. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 We cite to the Specification ("Spec.") filed Oct. 2, 2008; Final Office
Action ("Final Act.") mailed Nov. 27, 2013; Examiner's Answer ("Ans.");
and Appellant's Appeal Brief ("App. Br.") and Reply Brief ("Reply Br.").
2 Appellant identifies Medline Industries, Inc. as the real party in interest.
App. Br. 2.
Appeal2014-009400
Application 12/244,468
BACKGROUND
Appellant discloses and claims a method for making a disposable
glove. Spec. 2; claim 9. Particularly, Appellant's method provides a coating
over a surface of the hand area and extending beyond a user's wrist to
facilitate donning, and an uncoated cuff region to resist glove cuff roll-down.
Spec. 3; Fig. 1. Claim 9 illustrates the subject matter on appeal and is
reproduced from the Claims Appendix of the Appeal Brief as follows:
9. A method for making a disposable glove for
covering a user's hand, wrist, and at least a portion of the user's
forearm, the method comprising:
forming the disposable glove on a former, the disposable
glove having an exterior surface and an interior surface, the
disposable glove including a first area and a second area, the
first area including a hand area, the hand area including a palm
area and a plurality of finger-receiving receptacles, the second
area including a wrist-forearm area, the palm area separating
the plurality of finger-receiving receptacles and the wrist-
forearm area;
dipping the disposable glove into a coating such that the
hand area and a portion of the wrist-forearm area of the interior
surface which extends above the user's wrist remain coated with
the coating and a portion of the wrist-forearm area of the
interior surface remains uncoated; and
removing the disposable glove from the former and
inverting the disposable glove so that the coated areas of the
interior surface are on the inside of the disposable glove and the
uncoated portion of the wrist-forearm area reduces glove cuff
roll-down when the disposable glove is worn by the user.
2
Appeal2014-009400
Application 12/244,468
REJECTIONS
The Examiner maintained the following grounds of rejection: 3
I. Claims 9-20 and 30-38 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
II. Claims 9, 30 and 38 stand rejected under 35 U.S.C. § 102(b) or
§ 103(a) as unpatentable over Green.4
III. Claims 10-14 and 31-33 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Green and Ansell. 5
IV. Claims 15 and 34 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Green and Ganz. 6
V. Claims 16 and 35 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Green and Brasfield.7
VI. Claims 17, 19, 36 and 37 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Green and Modha. 8
VII. Claims 18 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Green and Tebbe. 9
VIII. Claims 9-14, 30-33 and 38 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bamett10 and Ansell.
3 Ans. 2-13; Final Act. 2-15.
4 US 6,280,673 B 1, issued Aug. 28, 2001 ("Green").
5 US 3,397,265, issued Aug. 13, 1968 ("Ansell").
6 US 4,329,312, issued May 11, 1982 ("Ganz").
7 US 4,371,987, issued Feb. 8, 1983 ("Brasfield").
8 US 2005/0127552 Al, published Jun. 16, 2005 ("Modha").
9 US 5,922,336, issued Jul. 13, 1999 ("Tebbe").
10 US 4,536,890, issued Aug. 27, 1985 ("Barnett").
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Appeal2014-009400
Application 12/244,468
IX. Claims 15 and 34 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Barnett, Ansell and Ganz.
X. Claims 16 and 35 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Barnett, Ansell and Brasfield.
XI. Claims 17, 19, 36 and 37 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Barnett, Ansell and Modha.
XII. Claims 18 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Barnett, Ansell and Tebbe.
XIII. Claim 38 stands rejected under 35 U.S.C. § 102(a) as anticipated by
Hamann. 11
DISCUSSION
I
With regard to Rejection I, the Examiner found that the claim
recitation requiring the coating to "extend above the user; s wrisC was not
adequately described in the Specification as originally filed. Ans. 2-3.
Appellant points to Figures 1 and 2 of the Specification as evidence
sufficient to demonstrate that Appellant possessed the claimed invention.
App. Br. 15. We find Appellant's argument persuasive.
Appellant's Figure 1 depicts a glove characterized as having a first
area 11 accommodating a user's hand and a second area 13 accommodating
the wrist and forearm. See Spec. i-f 17, Fig. 1. The coating material,
designated by reference numeral 30 in Figure 1, is shown to extend from the
hand portion of the glove toward the glove opening, beyond the intersection
11 US 2005/0037054 Al, published Feb. 17, 2005 ("Hamann").
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Application 12/244,468
of the above-mentioned first and second glove areas where a user's wrist
would be positioned upon donning a properly fitting glove. In light of the
foregoing disclosure, we agree with Appellant that the Examiner has not
shown that the Specification fails to convey with reasonable clarity that the
inventor possessed the invention as claimed at the time of invention. Ariad
Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane) ("[T]he test for [written description] sufficiency is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.").
Accordingly, we do not sustain Rejection I.
II
With regard to Rejection II, Appellant argues claims 9, 30 and 38 as a
group. App. Br. 17-21; Reply Br. 7-10. In accordance with 37 C.F.R.
§ 41.37(c)(l)(iv), we select claim 9 as representative and decide the
propriety of Rejection II based on the representative claim alone.
In support of the anticipation ground in Rejection II, the Examiner
found that Figure 2C in Green shows a coating that extends beyond a user's
wrist. Ans. 4. Appellant contends that the coating in Green's Figure 2C
covers only the fingers and a first portion of the palm; it does not extend
beyond a user's wrist. App. Br. 19-20. We are persuaded by Appellant's
argument, see Green at col. 4, 11. 48-51 (explaining that "the form is only
dipped preferably to a level which covers the fingers and a first portion of
the palm at a level 24 (Fig. 2c )"), and therefore do not sustain the
Examiner's anticipation finding.
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Appeal2014-009400
Application 12/244,468
However, the Examiner alternatively found that one of ordinary skill
would have found it obvious to extend Green's coating to beyond a user's
wrist. Ans. 4. The Examiner relied on Green's teaching that the disclosed
coating is desirably provided on the active portions of the glove "while
leaving some portions uncoated to permit some degree of frictional control."
Id. at 4; Green at col. 4, 11. 55-60. In that regard, Green further teaches that
the coated region(s) of the glove provide a "balance of slip-to-grip which
allows smooth objects to be picked up, handled and ... is less prone to self-
adhesion." Green at col. 2, 11. 49-55. We find these teachings in Green
sufficient to support the Examiner's obviousness finding; the selection of a
coated region that extends beyond a user's wrist would have been obvious to
one skilled in the art to provide the described coating benefits also in the
wrist region. Appellant's sole argument in the Appeal Brief against the
Examiner's obviousness determination-that it was "self-serving and
conclusory';-lacks substantive merit and is not persuasive. 12 App. Br. 20.
Accordingly, we sustain the Examiner's obviousness determination
set forth in Rejection II.
III-VII
Appellant does not separately contest the Examiner's findings in
connection with any of Rejections III-VII, other than an implicit reliance on
12 Appellant's contention in the Reply Brief that Green "explicitly teaches
away from such a modification" is neither raised in the Appeal Brief nor
supported by citation to evidence of record. As such, we treat this argument
as untimely and unpersuasive. Moreover, Green's preference for coating
only the fingers and palm area, see Green col. 4, 11. 48-51, does not by itself
constitute a teaching away from coating additional areas, particularly in light
of Green's teaching that coated areas are less prone to self-adhesion.
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Appeal2014-009400
Application 12/244,468
the arguments discussed above in connection with Rejection II. 13 As such,
we sustain each of Rejections III-VII for the reasons set forth above in
connection with Rejection II.
VIII-XIII
Appellant argues that the Examiner's obviousness determination set
forth in Rejections VIII-XII failed to address the claim recitation that the
coating "extends above the user's wrist." App. Br. 20. Appellant further
points to Barnett's disclosure that the gauntlet portion of the disclosed glove
extends from the rear opening to "the forward end of the wrist of the glove
wearer," and that such gauntlet portion is "devoid of any such lining." Id.;
Barnett col. 2, 11. 39--47. The Examiner's sole response to Appellant's
evidence is a conclusory interpretation of Barnett's Figures 1 and 2 as
depicting the lining extending "above the user's wrist." Ans. 15. That
interpretation is neither self-evident from the cited Figures nor consistent
with the above-quoted teaching in Barnett. We are persuaded that the
Examiner did not present a preponderance of evidence sufficient to support
the applied finding that Barnett teaches a lining that extends beyond a user's
wrist.
With regard to Rejection XIII, we agree with Appellant's argument,
App. Br. 21, that Harmann teaches coating a glove "end-to-end, both inside
13 "Each ground of rejection contested by appellant must be argued under a
separate heading, and each heading shall reasonably identify the ground of
rejection being contested ... " 37 C.F.R. § 41.37(c)(iv). Moreover,
Appellant's mere recitation of elements recited in claims 10, 13, 14 and 31
and bald assertion that these elements are not found in the prior art, App. Br.
21-22, are not persuasive of reversible error. See In re Lovin, 652 F.3d
1349, 1356-7 (Fed. Cir. 2011).
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Application 12/244,468
and out," and for that reason cannot be viewed as anticipating the claimed
method which leaves a portion of the glove surface uncoated.
For the foregoing reasons, we do not sustain any of Rejections VIII-
XIII.
SUMMARY
Rejections II-VII are sustained.
Rejections I and VIII-XIII are not sustained.
DECISION
The Examiner's decision rejecting each of claims 9-20 and 30-38 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.
AFFIRMED
8