Ex Parte Drosihn

Patent Trial and Appeal Board

Oct 29, 2014

12330738 (P.T.A.B. Oct. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LONNIE DROSIHN
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Appeal 2012-010774
Application 12/330,7381
Technology Center 3700
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Before JENNIFER D. BAHR, THOMAS F. SMEGAL, and JAMES J.
MAYBERRY, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Lonnie Drosihn (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s final rejection of claims 1 and 5−23 under 35 U.S.C.
§ 102(b), as anticipated by Mallard (US 2005/0231471 A1, pub. Oct. 20,
2005). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 According to Appellant, the real party in interest is 180s, Incorporated.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
An understanding of the invention can be derived from a reading of
independent claims 1 and 14, which are reproduced below.
1. A hand covering comprising:
a shell including a palm region, a cuff region, and a
finger region, the finger region including a finger receptacle,
the shell including an outer layer, wherein the outer layer of the
shell includes an opening formed in the finger receptacle;
a conductive member, the conductive member being
coupled to the finger receptacle, the conductive member
including a layer of flexible conductive fabric material, the
conductive member being configured to transfer a charge from
a user wearing the hand covering to a capacitive-type touch
sensing interface on an electronic device, the conductive
member being configured to extend through the opening in the
finger receptacle of the shell; and
an insert, the insert being configured to extend through
the opening in the finger receptacle of the shell, the insert
engaging an inner surface of the layer of flexible conductive
fabric material, and the layer of flexible conductive fabric
material conforming to the configuration of an outer surface of
the insert.

Clms. App., Appeal Br. 24.

14. A hand covering, comprising:
a shell, the shell including a finger region and a palm
region, the finger region including a finger receptacle having an
outer surface; and
an actuator portion, the actuator portion being coupled to
the shell, the actuator portion including a conductive material
and a mounting structure, the conductive material including a
flexible fabric material, the mounting structure being coupled to
the outer surface of the finger receptacle and configured to
couple the conductive material to the outer surface of the finger
receptacle, the conductive material being configured to transfer
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a charge from a user wearing the hand covering to a capacitive-
type touch sensing interface on an electronic device.

Clms. App., Appeal Br. 26.

ANALYSIS
Claims 1 and 5−23 as anticipated by Mallard
Claims 1, 5−13, and 21−23
We are persuaded by Appellant’s arguments that the Examiner failed
to establish a prima facie showing of anticipation in rejecting claims 1,
5−13, and 21−23 over Mallard.
The Examiner contends figure 4 of Mallard discloses that
members 23a + 22a, which are integral to each other make up
the claimed insert. The members 23a + 22a are disclosed as
conductive and must ‘engage’ the inner layers and fingers
conductivity or else the glove's stated function would not work.
Insert (23a+22a) is clearly between layers 6 and 2 and extends
through the opening in the outer surface of the finger. 21a is the
conductive member and is made of conductive material. 21a
does extend through the hole with the insert, and has a similar
shape as the outer surface so it does ‘conform’ to the
configuration of the outer surface as claimed.
Answer 9−10.
Appellant first points out that claim 1 is directed to the embodiment
illustrated in Figures 23–26 and paragraphs 80–95 of the Specification.
Appeal Br. 9. Appellant also points out that claim 1 recites a hand covering
having “a ‘conductive member including a layer of flexible conductive
fabric material’ and that the conductive member is ‘configured to extend
through the opening in the finger receptacle of the shell.’” Id. at 11.

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Appellant then argues that “if the pointer end 21a [of Mallard] is taken
to be ‘a conductive member,’ the conductive member cannot be described as
‘configured to extend through the opening in the finger receptacle’ as recited
in claim 1. Rather, the pointer end 21a is configured to be disposed entirely
outside the finger receptacle.” Reply Br. 2. We agree. Furthermore,
pointer end 21a is not illustrated as including a “layer of flexible conductive
fabric material,” as recited by claim 1. See also Mallard ¶ 33.
The Examiner also alludes to Mallard’s disclosure of a textile layer of
conductive material 50. Answer 7–8 (quoting Mallard ¶ 50). However, the
Examiner does not identify any disclosure in Mallard of such a conductive
textile layer being configured to extend, or extending, through the opening in
the finger receptacle, as also required in claims 1 and 8.
[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the
thing claimed and, thus, cannot anticipate under 35 U.S.C. §
102.
See Net MoneyIN, Inc., v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
2008).

Claims 14–20
We are persuaded by Appellant’s arguments that the Examiner failed
to establish a prima facie showing of anticipation in rejecting claims 14−20
over Mallard.
Regarding claim 14, the Examiner specifically contends that
[t]he [Mallard] reference does disclose the members 23a, 22a,
21a [apparently as illustrated in figure 4] all being made from
various materials including conductive fabric materials and
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being ‘coupled’ to each other and to the outer surface. Coupled
is a broad limitation and as 23a, 22a, 21a all contact each other
integrally the combination of 23a, 22a, and 21a are coupled to
the outer surface, in that there is contact between these
members and the outer surface.
Answer 10.
In response, Appellant first directs our attention to the embodiment
illustrated in Figures 33 and 34 and described at paragraph 103 of the
Specification. Appeal Br. 19. More specifically, Appellant points out that
“[c]laim 14 recites that the hand covering includes a flexible fabric material,
and that the mounting structure is coupled to the outer surface of the [finger]
receptacle and is configured to couple the conductive material to the outer
surface of the finger receptacle” and argues that “Mallard fails to teach . . .
‘the conductive material including a flexible fabric material, the mounting
structure being coupled to the outer surface of the finger receptacle and
configured to couple the conductive material to the outer surface of the
finger receptacle.’” Id. at 19−20.
None of the elements (23a, 22a, 21a) of Mallard relied upon by the
Examiner as “being made from various materials including conductive fabric
materials” (Answer 10) is disclosed by Mallard as including conductive
material including flexible fabric material, as recited by claim 14. See Net
MoneyIN, Inc., v. VeriSign, Inc., 545 F.3d at 1371.
For the foregoing reasons, we are persuaded by Appellant’s arguments
that the Examiner failed to establish a prima facie showing of anticipation in
rejecting claims 1 and 5−23 over Mallard.

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DECISION
We REVERSE the Examiner’s rejection.
REVERSED

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