Ex parte BOUDREAU et al.

Board of Patent Appeals and Interferences

Jul 21, 1998

08602274 (B.P.A.I. Jul. 21, 1998)

Application for patent filed February 16, 1996. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARK S. BOUDREAU
and
JOSEPH L. HODGES IV
____________
Appeal No. 97-4185
Application No. 08/602,2741
____________
ON BRIEF
____________
Before STAAB, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 7, 9 to 12, 14 and 15. Claims 8 and
13 have been allowed.
Appeal No. 97-4185
Application No. 08/602,274
We AFFIRM-IN-PART.
Appeal No. 97-4185 Page 3
Application No. 08/602,274
BACKGROUND
The appellants' invention relates to a glove drying and
shaping device. An understanding of the invention can be
derived from a reading of exemplary claim 1, which appears in
the appendix to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Ross 2,783,925
March 5, 1957
Sutton 3,486,670 Dec. 30,
1969
Claims 1 to 7, 9 to 12, 14 and 15 stand rejected under
35 U.S.C. § 103 as being unpatentable over Ross in view of
Sutton.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejection, we make reference to the examiner's answer (Paper
No. 12, mailed June 11, 1997) for the examiner's complete
reasoning in support of the rejection, and to the appellants'
Appeal No. 97-4185 Page 4
Application No. 08/602,274
brief (Paper No. 11, filed April 17, 1997) and reply brief
(Paper No. 13, filed August 18, 1997) for the appellants'
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
sufficient to establish obviousness only with respect to
claims 1, 2, 9 to 11 and 15. Accordingly, we will sustain the
examiner's rejection of claims 1, 2, 9 to 11 and 15 under
35 U.S.C. § 103. We will not sustain the examiner's rejection
of claims 3 to 7, 12 and 14 under 35 U.S.C. § 103. Our
reasoning for this determination follows.
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
Appeal No. 97-4185 Page 5
Application No. 08/602,274
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). The conclusion that
the claimed subject matter is obvious must be supported by
evidence, as shown by some objective teaching in the prior art
or by knowledge generally available to one of ordinary skill
in the art that would have led that individual to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988). Rejections based on § 103 must
rest on a factual basis with these facts being interpreted
without hindsight reconstruction of the invention from the
prior art. The examiner may not, because of doubt that the
invention is patentable, resort to speculation, unfounded
assumption or hindsight reconstruction to supply deficiencies
in the factual basis for the rejection. See In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert. denied,
389 U.S. 1057 (1968).
With this as background, we analyze the prior art applied
by the examiner in the rejection of the claims on appeal.
Appeal No. 97-4185 Page 6
Application No. 08/602,274
Ross discloses a glove drier. As shown in Figure 1, the
glove drier comprises an open-work body portion or palm
supporting area 10 and four fixed open-work digits 11, 12, 13
and 14 extending therefrom. Ross teaches (column 3, lines 28-
31) that the palm supporting area 10 and the four fixed open-
work digits 11, 12, 13 and 14 are all disposed in a single
plane. In addition, Figures 1-3 illustrate a ridge structure
extending about the periphery of the glove drier. Depending
from the palm supporting area 10 is a hook 15 from which the
device can be suspended. In addition, the glove drier
includes a thumb-supporting element 23 movable between two
extreme positions indicated in Figure 1. The thumb-supporting
element 23 is movable in a plane spaced from the single plane
of the palm supporting area and the four fixed open-work
digits. Ross also teaches (column 3, lines 10-11) that the
glove drier is intended to be made from thermoplastic
material.
Sutton discloses a glove form. As shown in Figure 1, the
glove form 10 includes a palm supporting portion 12, four
digital or finger-like supporting members 28, 30, 32 and 34,
Appeal No. 97-4185 Page 7
Application No. 08/602,274
and a thumb-like supporting member 36. Each of the supporting
members 28, 30, 32, 34 and 36 is connected by a rib or
element, as at 50, to the palm supporting portion 12. Sutton
teaches (column 4, lines 15-42) that each of the individual
connecting ribs or elements 50
is relatively thin and flexible, such that each supporting
member is flexible and somewhat pivotable with respect to
portion 12. In addition, Sutton discloses that the entire
glove form lies in a single plane (see Figures 1-3) and
teaches (column 2, lines 17-24) that the thumb supporting
member 36 is flexible in the plane of the glove form so that
the glove form may be easily fitted into a glove. Sutton also
teaches (column 5, lines 54-61) that the glove form can be
fabricated from thermoplastic material.
Appeal No. 97-4185 Page 8
Application No. 08/602,274
Claim 1
Independent claim 1 recites a glove drying device
comprising, inter alia, a substantially planar hand-shaped
form, a display area and a ridge structure which extends
"around a periphery of said planar hand-shaped structure [sic,
form]." Claim 1 further recites that the substantially planar
hand-shaped form includes a palm portion, a plurality of
finger elements and a thumb element connected to the palm
portion by a spring member. Claim 1 also recites that the
display area is attached to and extends beyond a lower portion
of the planar hand-shaped form and consists of a substantially
continuous surface for receiving indicia.
In applying the above-noted for obviousness, we reach the
conclusion that it would have been obvious to one of ordinary
skill in the art at the time the invention was made to modify
the glove drier of Ross by flexibly connecting the thumb-
supporting element to the palm-supporting area in the same
plane as the palm-supporting area as suggested and taught by
Sutton for the advantage of easily fitting a glove onto the
glove drier.
Appeal No. 97-4185 Page 9
Application No. 08/602,274
The argument advanced by the appellants (brief, pp. 8-12
and reply brief, pp. 2-4) is not persuasive for the following
reasons.
First, we agree with the examiner (answer, pp. 3 and 6)
that the claimed "display area" reads on the lower planar
surface of Ross's glove drier shown in Figure 1 (i.e., the
lower planar surface near the hook 15 and below the lower edge
of the glove body 27). In proceedings before the PTO, claims
in an application are to be given their broadest reasonable
interpretation consistent with the specification, and that
claim language should be read in light of the specification as
it would be interpreted by one of ordinary skill in the art.
In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir.
1983). Moreover, limitations are not to be read into the
claims from the specification. In re Van Geuns, 988 F.2d
1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993) citing In re
Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989). Contrary to the appellants' argument, we have
determined that the display area recited claim 1 is not
limited to areas which can function as a golf bag tag.
Appeal No. 97-4185 Page 10
Application No. 08/602,274
Additionally, we find that the lower planar surface of Ross's
glove drier is attached to and extends beyond a lower portion
of the planar hand-shaped form (i.e., the palm supporting area
10 and digits 11, 12, 13 and 14) and consists of a
substantially continuous surface for receiving indicia. In
that regard, it is our determination that the area of the
lower planar surface of Ross's glove drier shown below glove
body 27 is clearly capable of receiving indicia.
Second, we do not agree with the appellants' argument
that the combined teachings of Ross and Sutton would not have
suggested the claimed thumb element connected to the palm
portion by a spring member. It is our opinion that Sutton's
teaching of connecting a thumb element (i.e., thumb supporting
member 36) to the palm portion (i.e., palm supporting portion
12) by a spring member (i.e., flexible rib 50) does provide
sufficient motivation to one skilled in the art to have
modified Ross's glove drier as set forth above.
For the reasons set forth above, the decision of the
examiner to reject claim 1 under 35 U.S.C. § 103 is affirmed.
Appeal No. 97-4185 Page 11
Application No. 08/602,274
See page 5 of the appellants' brief.2
Claim 2
Dependent claim 2 has not been separately argued by the
appellants. Accordingly, claim 2 will be treated as falling
with parent claim 1. See In re Young, 927 F.2d 588, 590, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Nielson, 816 F.2d
1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987); and In re
Wood, 582 F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978). Thus,
it follows that the decision of the examiner to reject claim 2
under 35 U.S.C.
§ 103 is also affirmed.
Claims 10 and 11
The appellants have grouped claims 10 and 11 as standing
or falling with claim 1. Thereby, in accordance with 37 CFR 2
§ 1.192(c)(7), claims 10 and 11 fall with claim 1. Thus, it
follows that the decision of the examiner to reject claims 10
and 11 under 35 U.S.C. § 103 is also affirmed.
Claims 9 and 15
Appeal No. 97-4185 Page 12
Application No. 08/602,274
Dependent claim 9 adds to parent claim 1 the limitation
that the spring member comprises a curved, flat spring member.
Dependent claim 15 adds to parent claim 1 the limitation that
the spring member comprises an extension of the ridge member.
The appellants argue (brief, p. 14) that the examiner has
not shown any prior art teachings of the limitations of claims
9 or 15. We do not agree. As to claim 9, Sutton's rib 50
(i.e., spring member) connecting thumb member 36 to the palm
supporting portion 12 is shown in Figure 1 as being a curved,
flat spring member. Accordingly, the combined teachings of
Ross and Sutton would have suggested using a curved, flat
spring member to connect Ross's thumb-supporting element to
the palm-supporting area. As to claim 15, it is our
determination that the combined teachings of Ross and Sutton
would have suggested that the connecting rib be a continuation
of the peripheral ridge member provided by Ross. Accordingly,
the decision of the examiner to reject claims 9 and 15 under
35 U.S.C. § 103 is affirmed.
Claims 3, 4 and 12
Appeal No. 97-4185 Page 13
Application No. 08/602,274
Claim 2 depends from claim 1.3
Dependent claim 3 adds to parent claim 2 the limitation3
that a slotted tab extends from the display area and beyond
the ridge structure.
The examiner stated (answer, p. 4) that "the use of a
'slotted tab' instead of a hook is considered an obvious
substitution if desired."
The appellants argue (brief, p. 12) that the examiner's
position is not supported by any prior art teaching. We
agree. In that regard, the examiner has not provided any
evidence that establishes that it would have been obvious to
one of ordinary skill in the art at the time the invention was
made to replace Ross' hook with a slotted tab. The mere
existence of a slotted tab does not, in and of itself,
establish the obviousness of the proposed substitution. Thus,
the examiner has not established a proper factual basis to
support the rejection of claim 3. Accordingly, the decision
Appeal No. 97-4185 Page 14
Application No. 08/602,274
of the examiner to reject claim 3, as well as claims 4 and 12
dependent thereon, under 35 U.S.C. § 103 is reversed.
Claims 5 to 7
Dependent claim 5 adds to parent claim 1 the limitation
that holding means for securing a glove are located on the
thumb element adjacent the spring member.
The examiner stated (answer, p. 4) that "the use of
protrusions for better gripping is considered an obvious
expedient known in the art."
The appellants argue (brief, p. 13) that the examiner's
position is totally unsupported by the record. We agree. In
that regard, the examiner has not provided any evidence that
establishes that it would have been obvious to one of ordinary
skill in the art at the time the invention was made to provide
protrusions (i.e., holding means) on the thumb element
adjacent the spring member. The mere existence of protrusions
for gripping does not, in and of itself, establish the
obviousness of the claimed holding means. Thus, the examiner
Appeal No. 97-4185 Page 15
Application No. 08/602,274
has not established a proper factual basis to support the
rejection of claim 5. Accordingly, the decision of the
examiner to reject claim 5, as well as claims 6 and 7
dependent thereon, under
35 U.S.C. § 103 is reversed.
Claim 14
Dependent claim 14 adds to parent claim 9 the limitation
that the spring member is semi-circular.
The examiner stated (answer, p. 4) that the shape of the
spring member is an obvious expedient known in the art and
that semicircular springs are known in the art to reduce crack
propagation.
The appellants argue (brief, p. 14 and reply brief, pp.
3-4) that the examiner has failed to cite any prior art
teaching in support of the examiner's determination of
obviousness. We agree. In that regard, the examiner has not
provided any evidence that establishes that it would have been
obvious to one of ordinary skill in the art at the time the
Appeal No. 97-4185 Page 16
Application No. 08/602,274
invention was made to replace Sutton's spring member (i.e.,
rib 50) with a semi-circular spring element. The mere
existence of semi-circular spring elements do not, in and of
itself, establish the obviousness of the claimed semi-circular
spring element in the claimed combination. Thus, the examiner
has not established a proper factual basis to support the
rejection of claim 14. Accordingly, the decision of the
examiner to reject claim 14 under 35 U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 7, 9 to 12, 14 and 15 under 35 U.S.C. § 103 is
affirmed with respect to claims 1, 2, 9 to 11 and 15, but
reversed with respect to claims 3 to 7, 12 and 14.
Appeal No. 97-4185 Page 17
Application No. 08/602,274
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-4185 Page 18
Application No. 08/602,274
MARK S. BOUDREAU
808 RAMSEY STREET
ALEXANDRIA, VA 22301
APPEAL NO. 97-4185 - JUDGE NASE
APPLICATION NO. 08/602,274
APJ NASE
APJ McQUADE
APJ STAAB
DECISION: AFFIRMED-IN-PART
Prepared By: Delores A. Lowe
DRAFT TYPED: 07 Jul 98
FINAL TYPED: