Ex parte Estwanik

Board of Patent Appeals and Interferences

Mar 24, 1999

08498884 (B.P.A.I. Mar. 24, 1999)

Application for patent filed July 6, 1995. According to1
appellant, this application is a continuation of Application
No. 29/023,620 filed May 27, 1994, now U.S. Design Patent No.
D367,731 issued March 5, 1996.
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not written for publication in a law journal and (2) is not binding
precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOSEPH J. ESTWANIK
____________
Appeal No. 98-1242
Application No. 08/498,8841
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT, and PATE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-15, which constitute all of the
Appeal No. 98-1242 Page 2
Application No. 08/498,884
claims of record in the application. However, the examiner has
indicated on page 2 of the Answer that claims 9 and 11-15 are
allowable over the art of record. This being the case, only
claims 1-8 and 10 remain on appeal.
The appellant’s invention is directed to a hand and wrist
stabilization device for use under a boxing glove. The claims
on appeal have been reproduced in an appendix to the Brief
(Paper No. 11).
The references relied upon by the examiner to support the
rejections that remain are:
Travers 1,706,503 Mar. 26,
1929
Ballard 5,295,269 Mar. 22,
1994
The following rejections presently stand on appeal:
Claims 1-4 and 7 under 35 U.S.C. § 102(b) as being
anticipated by Ballard.
Claims 5, 6 and 10 under 35 U.S.C. § 103 as being
unpatentable over Ballard in view of Travers.
Claim 8 under 35 U.S.C. § 103 as being unpatentable over
Ballard.
In reaching our decision on the issues raised in this
appeal, we have carefully assessed the claims, the prior art
applied against the claims, and the respective views of the
Appeal No. 98-1242 Page 3
Application No. 08/498,884
examiner and the appellant as set forth in the Answer (Paper
No. 12) and the Brief (Paper No. 11), considered in the light
of the guidance provided by our reviewing court.
The Rejection Under 35 U.S.C. § 102(b)
Anticipation is established only when a single prior art
reference discloses, either expressly or under the principles
of inherency, each and every element of the claimed invention.
See In re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671,
1675 (Fed. Cir. 1994). Anticipation by a prior art reference
does not require either the inventive concept of the claimed
subject matter or recognition of inherent properties that may
be possessed by the reference. See Verdegaal Brothers Inc. v.
Union Oil Co. of California, 814 F.2d 628, 633, 2 USPQ2d 1051,
1054 (Fed. Cir. 1987). Nor does anticipation require that the
reference teach what the applicant is claiming, but only that
the claim on appeal "read on" something disclosed in the
reference, i.e., all limitations of the claim are found in the
reference. See Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S.
Appeal No. 98-1242 Page 4
Application No. 08/498,884
1026 (1984). Furthermore, it is only necessary that the
reference include structure capable of performing the recited
function in order to meet the functional limitations of the
claim. See In re Mott, 557 F.2d 266, 269, 194 USPQ 305, 307
(CCPA 1977).
The appellant’s invention is a hand and wrist
stabilization device for use by a boxer to protect the hands
while clenched into fists. It is the examiner’s position
that all of the subject matter recited in independent claim 1
and claims 2-4 and 7, which depend therefrom, is anticipated by
Ballard. We agree.
Using the language of claim 1 as a guide, Ballard
discloses a hand and wrist stabilization device (column 1, line
44 et seq.) comprising a body formed of flexible material for
disposition over at least a portion of the hand and the wrist
and including a hand portion and a wrist portion (Figure 1). A
force dispersion pad (3) is mounted to the body portion and
extends transversely across the metacarpophalangeal joints,
functioning to disperse impact force to these joints (column 1,
lines 46-50). A strap (5) extends laterally away from the pad
Appeal No. 98-1242 Page 5
Application No. 08/498,884
See, for example, Merriam Webster’s Collegiate2
Dictionary, Tenth Edition, 1996, page 14.
from a position adjacent the joints. We point out here that
while this strap is not “adjacent” the joints in the sense of
extending laterally from a position aligned with the joints, as
is disclosed by the appellant, it nevertheless is “adjacent”
the joints in that it lies near and is not distant from the
joints, which is all that is required by the claim. Finally,2
Ballard discloses means for fastening the strap (2) at the
wrist portion when the hand is formed into a fist, which strap
is capable of isolating wrist movement and maintaining the
user’s hand in a fisted condition. Given that the Ballard
strap is 85 inches long (column 1, line 53), it is capable of
performing the claimed function if it were wrapped about the
clenched fist and then anchored to the pad (unnumbered) on the
wrist portion of the glove, even though such a use is not
taught by the patentee.
The requirements for a second strap as recited in claim 2
are met by strap 10 of Ballard, which extends laterally away
from the body portion oppositely of the first strap and is
fastenable to the wrist portion oppositely of the first strap.
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Application No. 08/498,884
We point out here that it is not necessary, according to the
claim language, that the second strap be fastened to the body
portion at a point directly opposite to the first strap, but
only that it “extend laterally away” from the body “oppositely
from” the first strap, which we interpret to mean simply in the
opposite direction.
Claims 3, 4 and 7 also depend from claim 1, but since
their patentability was not separately argued, they fall with
claim 1. See In re Nielson, 816 F.2d 1567, 1570, 2 USPQ2d
1525, 1526 (Fed. Cir. 1987).
The rejection of claims 1-4 and 7 is sustained.
The Rejections Under 35 U.S.C. § 103
In rejections under Section 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness
(see In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956
(Fed. Cir. 1993)), which is established when the teachings of
the prior art itself would appear to have suggested the claimed
subject matter to one of ordinary skill in the art (see In re
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Application No. 08/498,884
Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir.
1993)). This is not to say, however, that the claimed
invention must expressly be suggested in any one or all of the
references. Rather, the test for obviousness is what the
combined teachings of the references would have suggested to
one of ordinary skill in the art (see Cable Electric Products,
Inc. v. Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ 881, 886-
87 (Fed. Cir. 1985)), considering that a conclusion of
obviousness may be made from common knowledge and common sense
of the person of ordinary skill in the art without any specific
hint or suggestion in a particular reference (see In re Bozek,
416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)), with skill
being presumed on the part of the artisan, rather than the lack
thereof (see In re Sovish, 769 F.2d 738, 742, 226 USPQ 771, 774
(Fed. Cir. 1985)). Insofar as the references themselves are
concerned, we are bound to consider the disclosure of each for
what it fairly teaches one of ordinary skill in the art,
including not only the specific teachings, but also the
inferences which one of ordinary skill in the art would
reasonably have been expected to draw therefrom (see In re Boe,
Appeal No. 98-1242 Page 8
Application No. 08/498,884
355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966) and In re
Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968)).
The first rejection under this section of the statute is
that claims 5, 6 and 10 are unpatentable over the combined
teachings of Ballard and Travers. Claim 5 adds to claim 1 the
requirement that there be a stabilization member mounted on the
hand portion of the glove “at a position oppositely disposed
from said force dispersion pad with the user’s hand disposed
therebetween,” that is, a second pad on the palm portion of the
glove.
Ballard has been described above, and it does not disclose
or teach such a structure. In fact, according to Ballard, the
palm should be “free from padding and unrestricted” (column 2,
line 8). Travers teaches providing a boxer’s hand protector
glove with a pad (17) around which the hand is closed.
However, we agree with the appellant that it would not have
been obvious to add such a pad to the Ballard glove, in view of
Ballard’s explicit teaching that the palm should be free from
just such an element, which would have been a disincentive for
one of ordinary skill in the art to have made such a
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Application No. 08/498,884
modification. The same comments apply to independent claim 10,
which also contains this structure.
The teachings of Ballard and Travers therefore fail to
establish a prima facie case of obviousness with regard to the
subject matter recited in claim 5, its dependent claim 6, and
claim 10, and we will not sustain the rejection of them.
Claim 8 stands rejected as being unpatentable over
Ballard, alone. This claim further defines the features of the
second strap recited in claim 2, stating that it forms an ulnar
wrist stabilization strap extending away from the dispersion
pad for attachment to the wrist portion of the device. In our
view, Ballard’s strap 10 complies with these requirements, and
thus this reference establishes a prima facie case of
obviousness with regard to the subject matter of claim 8. We
therefore will sustain this rejection.
Summary
The rejection of claims 1-4 and 7 as being anticipated by
Ballard is sustained.
The rejection of claims 5, 6 and 10 as being unpatentable
over Ballard in view of Travers is not sustained.
Appeal No. 98-1242 Page 10
Application No. 08/498,884
The rejection of claim 8 as being unpatentable over
Ballard is sustained.
The decision of the examiner is affirmed-in-part.
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
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
WILLIAM F. PATE )
Administrative Patent Judge )
NEA/jlb
Appeal No. 98-1242 Page 11
Application No. 08/498,884
Karl S. Sawyer, Jr.
Kennedy, Covington, Lobdell & Heckman, L.L.P.
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