Ex Parte Cook et al

Board of Patent Appeals and Interferences

Sep 9, 2009

11095118 (B.P.A.I. Sep. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KIMBERLY ANN COOK and WAYNE ARTHUR CRAWFORD
__________

Appeal 2009-002664
Application 11/095,118
Technology Center 3700
__________

Decided: September 9, 2009
__________

Before DONALD E. ADAMS, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
insulated glove. The Examiner has rejected the claims on the grounds that
they contain new matter and are anticipated by or obvious in view of the
prior art. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part.
Appeal 2009-002664
Application 11/095,118

STATEMENT OF THE CASE
Claims 13-34 are pending and on appeal. The claims have not been
argued separately and therefore stand or fall together. 37 C.F.R.
§ 41.37(c)(1)(vii). Claims 24, 25, and 34 are representative and read as
follows:
24. A glove for holding a beverage container comprising:
a glove made of a glove material that is sized and configured to
extend at least over the palm and grasping surfaces of fingers of a wearer’s
hand; and
a plurality of pads made of a pad material, the plurality of pads
are sized and positioned on an outer surface of the glove to be
adjacent to at least a portion of the palm and at least a portion of the
grasping surface of each finger of the wearer’s hand so that the
plurality of pads collectively prevent the wearer’s hand and the glove
from contacting the beverage container,
flexibly conform to the held beverage container,
insulate the wearer’s hand from the held beverage container to
permit comfortable holding of the beverage container containing
chilled and hot beverages,
resist moisture passing through the pad, and
provide an enhanced grip the beverage container held by the
wearer’s hand.

31. The glove of claim 26 wherein the pad material is different than
the glove material and the pad material is neoprene.

34. The glove of claim 31 wherein the plurality of pads
continuously extend over at least substantially the entire grasping
surface of the palm and adjacent at least substantially the entire length
of each finger.

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The claims stand rejected as follows:
• Claims 23, 30, and 32 under 35 U.S.C. § 112, second paragraph, on
the basis that they contain new matter (Ans. 3);
• Claims 13, 15-18, 21, 22, 24, 26-29, and 31 under 35 U.S.C.
§ 102(b) as anticipated by Bruchas1 (Ans. 4);
• Claims 23, 30, and 32 under 35 U.S.C. § 103(a) as obvious in view
of Bruchas and Eibert2 (Ans. 5);
• Claims 14, 19, 20, and 25 under 35 U.S.C. § 103(a) as obvious in
view of Bruchas and Blewer3 (Ans. 5); and
• Claims 33 and 34 under 35 U.S.C. § 103(a) as obvious in view of
Bruchas and Arnold4 (Ans. 5).
NEW MATTER
Issue
The Examiner has rejected claims 23, 30, and 32 under 35 U.S.C.
§ 112, first paragraph, on the basis that these claims recite a neoprene pad
“not more than approximately 3 mm thick,” which is not adequately
supported in the originally filed disclosure (i.e., new matter) (Ans. 3-4).
Appellants contend that the Specification discloses that “[t]extured
plain neoprene that is 3 millimeters thick has been found to be sufficiently
flexible . . . and provides sufficient insulation” (Reply Br. 2) and “a pad that

1 Bruchas, US 3,096,523, July 9, 1963
2 Eibert, US 5,926,847, July 27, 1999
3 Blewer, US 2,148,849, Feb. 28, 1939
4 Arnold, US 2,083,935, June 15, 1937
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is 3 millimeters thick . . . is ‘not more than approximately 3 mm thick,’ as
recited in claims 23, 30 and 32” (id.).
The issue with respect to this rejection is: Have Appellants shown
that the Examiner erred in finding the Specification’s description of a 3 mm
thick neoprene pad does not show possession of a neoprene pad that is not
more than approximately 3 mm thick, as recited in the claims?
Findings of Fact
1. The Specification discloses that neoprene “provide[s] a moisture
resistant and insulating material on the grasping surface of the glove” (Spec.
4, ¶ 22).
2. The Specification discloses that
[t]extured plain neoprene that is 3 millimeters thick has been
found to be sufficiently flexible for use as a pad, provides an
enhanced grasp of wet cans and bottles holding beverages, and
provides sufficient insulation between a wearer’s hand and a
beverage container to permit a wearer of the glove to hold a
chilled can or bottle and to hold a cup or mug that contains a
hot beverage.
(Id.)
Principles of Law
“The function of the description requirement is to ensure that the
inventor had possession of, as of the filing date of the application relied
upon, the specific subject matter later claimed by him; how the specification
accomplishes this is not material. The claimed subject matter need not be
described in haec verba to satisfy the description requirement.” In re
Herschler, 591 F.2d 693, 700-701 (CCPA 1979), citations omitted.
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“It is not necessary that every permutation within a generally operable
invention be effective in order for an inventor to obtain a generic claim,
provided that the effect is sufficiently demonstrated to characterize a generic
invention.” Capon v. Eshhar, 418 F.3d 1349, 1359 (Fed. Cir. 2005).
Analysis
We agree with Appellants that the claimed glove is adequately
supported by the Specification’s description of a 3 mm thick layer of
neoprene as providing the required properties: flexibility, insulation,
moisture resistance, and enhanced grip. A 3 mm thick pad is an embodiment
of a pad that is “not more than approximately 3 mm thick,” and a description
of every embodiment encompassed by a claim is not required to satisfy the
first paragraph of § 112. In this case, the description of 3 mm thick
neoprene as adequate to provide the required properties allows persons
skilled in the art to readily determine what other, thinner thicknesses of the
same material provide the same properties, and therefore shows possession
of neoprene pads that “are not more than approximately 3 mm thick.”
Conclusions of Law
Appellants have shown that the Examiner erred in finding the
Specification’s description of a 3 mm thick neoprene pad does not show
possession of a neoprene pad that is not more than approximately 3 mm
thick, as recited in claims 23, 30, and 32.
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ANTICIPATION
Issue
The Examiner has rejected claims 13, 15-18, 21, 22, 24, 26-29, and 31
as anticipated by Bruchas (Ans. 4). The Examiner finds that Bruchas
discloses a glove having neoprene pads that “would inherently prevent the
wearer’s hand from contacting a beverage that is held, conform to the hand
of the wearer, resist[ ] moisture . . . , and would provide an enhanced grip”
(id.).
Appellants contend that “Bruchas does not describe, teach or suggest
that [its] neoprene pads are sized or positioned to prevent the glove from
contacting a held football or other held item” (App. Br. 8) because “if a
football player grasped a beverage can or bottle with the football glove, the
knuckle and joint portions of the football glove, which are unprotected by
patches, would clearly come into contact with the can or bottle” (id. at 9).
The issue with respect to this rejection is: Have Appellants shown
that the Examiner erred in finding that Bruchas’ glove includes pads that are
positioned and sized to prevent the glove from contacting a held beverage
container?
Additional Findings of Fact
3. Bruchas discloses a “football glove having . . . patches of a
tenacious gripping material on the tip portions” of the thumb and fingers and
“preferably . . . additional patches of tenacious gripping material disposed in
the pad zones of the palm of the glove” (Bruchas, col. 1, ll. 37-52).
4. Bruchas discloses that neoprene is a suitable gripping material (id.
at col. 2, ll. 18-20, 47-48).
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5. Bruchas’ Figure 3 is reproduced below:

The figure shows an embodiment of Bruchas’ glove with gripping
pads on the finger grips and the pad zones of the palm (id. at col. 2, ll. 46-
54).
6. The Examiner finds that “[t]he neoprene pads would inherently
prevent the wearer’s hand from contacting a beverage that is held, conform
to the hand of the wearer, resist[ ] moisture . . . , and would provide an
enhanced grip” (Ans. 4).
Principles of Law
“‘Functional’ terminology may render a claim quite broad. By its
own literal terms a claim employing such language covers any and all
embodiments which perform the recited function.” In re Swinehart, 439
F.2d 210, 213 (CCPA 1971).
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“A patent applicant is free to recite features of an apparatus either
structurally or functionally. . . . Yet choosing to define an element
functionally, i.e., by what it does, carries with it a risk . . . :
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.”
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting In re
Swinehart, 439 F.2d at 213, citation omitted).
“Any arguments or authorities not included in the brief or a reply brief
filed pursuant to § 41.41 will be refused consideration by the Board, unless
good cause is shown.” 37 C.F.R. § 41.37(c)(1)(vii).
Analysis
The Examiner finds that the glove disclosed by Bruchas meets all the
limitations of the rejected claims. Appellants only dispute the Examiner’s
finding that the pads of Bruchas’ glove “prevent the glove from contacting
the held beverage container” or “prevent the wearer’s hand and glove from
contacting the beverage container,” as required by claims 13 and 24
respectively. Appellants reason that “if a football player grasped a can or
bottle with the football glove . . . of Bruchas,” the can or bottle would come
into contact with the knuckle and joint portions of the glove, as well as the
portions of the palm of the glove not covered by gripping pads (App. Br. 9).
The Examiner responds that the “recitation ‘to prevent the glove from
contacting the held beverage’ is functional language. The device of Bruchas
is capable of performing the intended function . . . [and] the prevention of
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contacting a held beverage container would depend on the manner in which
the user was holding the beverage container.” (Ans. 6.)
Appellants have not shown that the Examiner’s finding is in error.
We agree with the Examiner’s reasoning that the disputed claim limitation is
functional and therefore is met by any product that is capable of carrying out
the recited function. Bruchas’ glove reasonably appears to be capable of
preventing the wearer’s hand and non-padded part of the glove from
contacting a held beverage container, since a beverage container can be held
using only the tips of the fingers, which are covered by gripping pads in
Bruchas’ glove.
Appellants have not adequately shown that Bruchas’ glove could not
be used to hold a beverage container using only the parts of the glove
covered by gripping pads, and therefore have not adequately rebutted the
Examiner’s finding that Bruchas’ glove anticipates claims 13 and 24.
Claims 15-18, 21, 22, 26-29, and 31 fall with claims 13 and 24
because they were not argued separately. 37 C.F.R. § 41.37(c)(1)(vii).
Conclusions of Law
Appellants have not shown that the Examiner erred in finding that
Bruchas’ glove includes pads that are positioned and sized to prevent the
glove from contacting a held beverage container.
OBVIOUSNESS BASED ON BRUCHAS AND EIBERT
Issue
The Examiner has rejected claims 23, 30, and 32 as obvious in view
of Bruchas and Eibert (Ans. 5). The Examiner finds that “Bruchas is silent
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as to the thickness of the neoprene pads” but “Eibert discloses similar glove
pads that have a thickness of less than about 3mm” (id.). The Examiner
concludes that it would have been obvious “to utilize pads having a
thickness of less than about 3mm in order to reduce manufacturing cost
while still providing protection to the hand” (id.).
Appellants contend that Eibert discloses a golf glove with pads
intended to dampen vibration, not prevent the glove from contacting a held
item, and therefore the references do not suggest the limitation of neoprene
pads 3 mm or less in thickness (App. Br. 10-11).
The issue with respect to this rejection is: Have Appellants shown
that the Examiner erred in concluding that Bruchas and Eibert would have
suggested making the neoprene pads of Bruchas’ glove no more than 3 mm
thick?
Additional Findings of Fact
7. Bruchas discloses that its glove “provides not only a tenacious grip
for all ball handlers but also provides for the freedom, flexibility and
maneuverability of the hand and in particular the fingers so necessary for
competent manipulation of the ball” (Bruchas, col. 1, ll. 53-57).
8. Bruchas does not disclose the thickness of the neoprene pads on its
glove.
Principles of Law
The obviousness analysis “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
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Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “A person of ordinary
skill is also a person of ordinary creativity, not an automaton.” Id. at 421.
To show criticality of a claimed range, “‘it is not inventive to discover
the optimum or workable ranges by routine experimentation.’ In re Aller,
220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Only if the ‘results of
optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for
the claimed critical range. In re Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8
(CCPA 1977).” In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997).
Analysis
Bruchas does not disclose the thickness of the neoprene pads on its
gloves but does teach that the gloves provide flexibility, maneuverability,
and freedom of movement to the hands and fingers, which are necessary for
competent ball-handling by football players. In view of that teaching, it
would have been obvious to a person of ordinary skill in the art to make the
neoprene pads of Bruchas’ glove no thicker than necessary to provide for
improved grip without inhibiting flexibility, maneuverability, and freedom
of movement of the hands and fingers.
Since only the surface of the neoprene pad would appear to be
important to providing improved grip, Bruchas supports the Examiner’s
conclusion that a person of ordinary skill in the art would have considered it
obvious to make Bruchas’ neoprene pads no more than 3 mm thick.
Appellants have provided no evidence to show that Bruchas’ neoprene pads
would have to be more than 3 mm thick in order to provide the improved
grip disclosed by Bruchas.
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Conclusions of Law
Appellants have not shown that the Examiner erred in concluding that
Bruchas and Eibert would have suggested making the neoprene pads of
Bruchas’ glove no more than 3 mm thick.
OBVIOUSNESS BASED ON BRUCHAS AND BLEWER
The Examiner has rejected claims 14, 19, 20, and 25 as obvious in
view of Bruchas and Blewer (Ans. 5). The Examiner finds that Bruchas
discloses the glove of claims 13 and 24 and that Blewer would have made
obvious the additional limitations of claims 14, 19, 20, and 25 (id.). We
agree with the Examiner’s reasoning and conclusion.
Appellants do not dispute that Blewer would have made obvious the
limitations added by dependent claims 14, 19, 20, and 25, but argue that
neither Bruchas nor Blewer discloses pads that are sized and positioned to
prevent the glove from contacting a held beverage container (App. Br. 11-
12).
This argument is not persuasive for the reasons discussed above with
respect to the anticipation rejection. Appellants have not shown any error in
the Examiner’s rejection of claims 14, 19, 20, and 25.
OBVIOUSNESS BASED ON BRUCHAS AND ARNOLD
Issue
The Examiner has rejected claims 33 and 34 as obvious in view of
Bruchas and Arnold (Ans. 5). Claims 33 and 34 require a single neoprene
pad (claim 33) or plurality of neoprene pads (claim 34) that cover
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substantially the entire palm and substantially the entire length of each
finger.
The Examiner finds that “Arnold discloses a pad (8), th[at]
substantially covers the entire grasping surface, and substantially the entire
length of each finger” (Ans. 5-6). The Examiner concludes that it would
have been obvious “to modify the device of Bruchas by utilizing the pad
configuration taught by Arnold in order to better protect the hand while still
allowing flexibility” (id. at 6).
Appellants contend that “[t]here simply is no teaching or suggestion in
either Arnold or Bruchas that the football glove of Bruchas should be
modified according to any teachings of Arnold that are directed to a glove
for handling hot objects” (App. Br. 12-13).
The issue with respect to this rejection is: Have Appellants shown
that the Examiner erred in concluding that Arnold would have suggested
covering substantially the entire grasping surface of the palm and
substantially the entire length of the fingers of Bruchas’ glove with either a
single neoprene pad or a plurality of neoprene pads?
Additional Findings of Fact
9. Arnold discloses a glove that “incorporate[s] . . . means for
retarding the penetration of heat . . . , whereby a wearer may handle
comparatively hot objects without discomfort” (Arnold, col. 1, ll. 4-11).
10. Arnold’s Figure 5 is reproduced below:
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The figure shows “the palm side of the glove after the removal of the
. . . outer covering therefrom” (id. at col. 1, ll. 30-32).
11. Arnold discloses that its glove includes stitched pockets
containing “flat, heat-retarding, plates 8, which are formed of chipped or
granular cork material” (id. at col. 2, ll. 11-13).
12. Arnold discloses that the “spacing of the plates 8 is intended to
occur in general alignment with the knuckles of the hand so as to permit
proper flexing of the several members thereof” (id. at col. 2, ll. 21-24).
Principles of Law
A proper § 103 analysis requires “a searching comparison of the
claimed invention – including all its limitations – with the teaching of the
prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).
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A conclusion of obviousness requires showing that “there was an
apparent reason to combine the known elements in the fashion claimed.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “We must still be
careful not to allow hindsight reconstruction of references to reach the
claimed invention without any explanation as to how or why the references
would be combined to produce the claimed invention.” Innogenetics, N.V. v.
Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008).
Analysis
Bruchas discloses a glove that comprises neoprene pads on the parts
of the fingers and palm that are used in gripping a football. Arnold discloses
a glove that comprises cork plates covering substantially the entire palm and
length of the fingers, for retarding the passage of heat through the glove.
The Examiner reasons that modifying Bruchas’ glove to have
Arnold’s pad configuration would have been obvious in order to improve
protection, but the purpose of the neoprene pads in Bruchas’ glove is to
improve a football player’s grip on a football, not to protect the hands, as in
Arnold’s glove. Because the cork plates in Arnold’s glove serve an entirely
different purpose than the neoprene pads in Bruchas’ glove, we agree with
Appellants that the Examiner has not adequately explained why it would
have been obvious to incorporate Arnold’s pad configuration in Bruchas’
glove.
Conclusions of Law
Appellants have shown that the Examiner erred in concluding that
Arnold would have suggested covering substantially the entire grasping
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surface of the palm and substantially the entire length of the fingers of
Bruchas’ glove with either a single neoprene pad or a plurality of neoprene
pads.
SUMMARY
We reverse the rejection of claims 23, 30, and 32 under 35 U.S.C.
§ 112, first paragraph, and the rejection of claims 34 and 35 under 35 U.S.C.
§ 103(a).
We affirm the rejection of claims 13, 15-18, 21, 22, 24, 26-29, and 31
under 35 U.S.C. § 102(b), and the rejections of claims 14, 19, 20, 23, 25, 30,
and 32 under 35 U.S.C. § 103(a).
TIME PERIOD FOR RESPONSE
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-IN-PART

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