Ex parte Donner

Board of Patent Appeals and Interferences

Mar 18, 2002

09198637 (B.P.A.I. Mar. 18, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOLENE M. DONNER
____________
Appeal No. 2001-0669
Application No. 09/198,637
____________
ON BRIEF
____________
Before COHEN, STAAB, and McQUADE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 1-6, all the claims pending in the application.
Appellant’s amendment filed subsequent to the final rejection
has not been entered.
As stated on page 1 of the specification, appellant’s
invention
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Application No. 09/198,637
2
relates to a wrist cover and more particularly to a
tubular-shaped wrist cover which may be slipped over
the hand of a person for covering the upper portion of
the person’s hand, the person’s wrist and the lower
portion of the person’s sleeve to prevent snow or the
like from coming into contact with the person’s hand,
wrist and lower arm.
A further understanding of the invention can be derived
from a reading of exemplary claim 1, which is reproduced in the
appendix to appellant’s brief.
The references applied in the final rejection are:
Samuels et al. (Samuels) 3,416,518 Dec.
17,
1968
Matthews 5,402,536 Apr. 4,
1995
MacMorran 5,827,207 Oct.
27,
1998
Gregory, minor et al. (Gregory) 5,864,886 Feb. 2,
1999
Ho (Brithis Application) 2,245,477 Jan.
8,
1992
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Samuels.
Claims 2 and 3 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Samuels in view of Gregory.
Claim 4 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Samuels in view of Ho.
Appeal No. 2001-0669
Application No. 09/198,637
3
Claim 5 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Samuels in view of MacMorran.
Claim 6 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Samuels in view of Matthews.
Reference is made to appellant’s brief (Paper No. 10) and
to the examiner’s answer (Paper No. 11) for the respective
positions of appellant and the examiner regarding the merits of
these rejections.
Discussion
Considering first the rejection of claim 1 as being
anticipated by Samuels, claim 1 sets forth a wrist cover “for
covering the wrist of a user wearing a coat having sleeves and a
hand covering having a thumb,” said wrist cover comprising a
flexible, generally tubular member having a central portion and
forward and rearward ends, with the central portion being
“adapted to be positioned loosely over a portion of the user’s
hand covering, wrist and lower sleeve area.” Appellant contends
(brief, page 5) that Samuels does not anticipate claim 1
because, among other things, the cover of Samuels is designed to
fit snugly over a cast. In response to this argument, the
examiner takes the position (answer, pages 6-7) that the
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Application No. 09/198,637
4
requirement that the central portion of the sleeve is “adapted
to be positioned loosely” over a user’s hand covering, wrist and
lower sleeve area is a statement of intended use that does not
structurally distinguish over the sleeve of Samuels. The
examiner also appears to be of the view that the central portion
of Samuels’ sleeve 10 is, in fact, capable of being positioned
loosely over a hand covering worn by a user, within the broad
meaning of the claim language “positioned loosely.”
It is by now well settled that there is nothing
intrinsically wrong in defining something by what it does rather
than by what it is. In re Swinehart, 439 F.2d 210, 212, 169
USPQ 226, 228 (CCPA 1971). With respect to the “adapted to be
positioned loosely” language found in claim 1, while such
language does not require the claimed wrist cover to be loosely
positioned over a user’s hand covering, wrist and lower sleeve
area, this language does impart structural limitations to the
claimed wrist cover in the sense that, to satisfy this language,
a device must be capable of performing the recited function or
use. See, for example, In re Ludtke, 441 F.2d 660, 663-64, 169
USPQ 563, 565-67 (CCPA 1971) and In re Swinehart, 439 F.2d at
Appeal No. 2001-0669
Application No. 09/198,637
5
212, 169 USPQ at 228. Hence, if a prior art device reasonably
appears to inherently possess the capability of functioning in
the manner claimed, anticipation exists regardless of whether
there is a recognition that the prior art device could be used
to perform the claimed function. See, for example, In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431-32 (Fed.
Cir. 1997).
In the present case, while we appreciate that sleeve 10 of
Samuels is intended to be positioned over an arm cast with the
thumb of the user extending through the opening 16, we do not
agree with the examiner’s position to the effect that said
sleeve is inherently capable of functioning in the manner called
for in claim 1, that is, “adapted to be positioned loosely over
a portion of user’s hand covering, wrist and lower sleeve area.”
To begin, Samuels’ disclosure at column 2, lines 52-54, that the
sleeves thereof are sized to snugly fit over the cast with which
they are being used indicates to us that sleeve 10, if used to
cover portions of the lower arm, wrist and hand of a person
wearing a coat having a sleeve and a hand covering having a
thumb, would likely also fit in a snug manner thereover.
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Application No. 09/198,637
6
Moreover, Samuels’ disclosure at column 2, lines 54-56, that the
sleeves thereof are made in their entirety of stretchable
elastic material which, because of their inherent resiliency,
can be used with a plurality of different size casts, suggests
to us that sleeve 10 also would not necessarily loosely fit over
the hand covering, wrist and lower sleeve area of a person of,
for example, small stature. In this regard, while it is
possible that the sleeve of Samuels may function to loosely
surround portions of a hand, wrist and forearm in the manner
called for in claim 1, the mere fact that a certain thing may
result from a given set of circumstances is not sufficient to
establish inherency. In re Oelrich, 666 F.2d 578, 581, 212 USPQ
323, 326 (CCPA 1981).
In short, the disclosure of Samuels does not provide an
adequate factual basis to establish that the natural result
flowing from following the teachings of that reference would be
a wrist cover that is adapted to be positioned loosely over a
portion of a user’s hand covering, wrist and lower sleeve area,
as now claimed. Accordingly, we cannot sustain the examiner’s
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Application No. 09/198,637
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rejection of claim 1 under 35 U.S.C. § 102(b) as being
anticipated by Samuels.
Concerning the § 103 rejections of dependent claims 2-6
further in view of Gregory, Ho, MacMorran or Matthews, even if
we accept the examiner’s position that it would have been
obvious to modify the sleeve of Samuels to provide therein the
additional features called for in the dependent claims, the
modified sleeve still would not necessarily be capable of
functioning in the manner called for in base claim 1.
Accordingly, the standing rejection of claims 2-6 also cannot be
sustained.
The decision of the examiner is reversed.
REVERSED
Appeal No. 2001-0669
Application No. 09/198,637
8
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
LJS/lp
Appeal No. 2001-0669
Application No. 09/198,637
9
ZARLEY MCKEE THOMTE VOORHEES
& SEASE
801 GRAND AVENUE
SUITE 3200
DES MOINES IA 50309
Letty
JUDGE STAAB
APPEAL NO. 2001-0669
APPLICATION NO. 09/198,637
APJ STAAB
APJ McQUADE
APJ COHEN
DECISION: REVERSED
PREPARED: Nov 14, 2002
OB/HD
PALM
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