11086850 (B.P.A.I. Aug. 3, 2010)

Ex Parte Gochanour

Board of Patent Appeals and InterferencesAug 3, 2010

11086850 (B.P.A.I. Aug. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/086,850 03/22/2005 G. Gary Gochanour GGG-10005/29 5166 25006 7590 08/03/2010 GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C PO BOX 7021 TROY, MI 48007-7021 EXAMINER MORAN, KATHERINE M ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 08/03/2010 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte G. GARY GOCHANOUR ____________ Appeal 2009-008756 Application 11/086,850 Technology Center 3700 ____________ Before JENNIFER D. BAHR, STEFAN STAICOVICI, and FRED A. SILVERBERG, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-008756 Application 11/086,850 2 STATEMENT OF THE CASE G. Gary Gochanour (Appellant) appeals under 35 U.S.C. § 134 (2002) from the Examiner’s decision finally rejecting claims 1, 2, and 4 under 35 U.S.C. § 103(a) as unpatentable over Robinson (US 5,534,346, issued Jul. 9, 1996) and Henderson (US 5,975,083, issued Nov. 2, 1999) and claims 5-7 as unpatentable over Robinson, Henderson, and Burgess (US 5,552,201, issued Sep. 3, 1996). Claim 3 has been canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002). THE INVENTION Appellant’s invention relates to a protective hand covering formed from a thin sheet of flexible film backed by a pressure-sensitive adhesive. Spec. 1, ll. 7-9 and fig. 2. Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. A hand covering system, comprising: a stack of protective hand coverings having a top and a bottom, each hand covering being made of a thin, flexible plastic film having a front surface and an adhesive back surface oriented toward the top of the stack; and wherein the stack of protective hand coverings is packaged in tablet form such that individual coverings are at least temporarily joined so that when the hand of a user is pressed against the adhesive of the top covering and removed from the tablet for use, the adhesive of the next covering on the stack is exposed for subsequent use. SUMMARY OF DECISION We AFFIRM. Appeal 2009-008756 Application 11/086,850 3 THE ISSUES The Examiner found that Robinson discloses all the features of independent claim 1 with the exception of an adhesive back surface. Ans. 3. The Examiner further found that Henderson discloses a hand covering having an adhesive coated back surface. Id. The Examiner then concluded that, it would have been obvious to provide Robinson’s hand coverings with an adhesive on their back surface so that the wearer may remove one hand covering from the subsequent hand covering without touching and potentially contaminating any other portions of the hand coverings and also to assist in retaining the hand covering on the wearer’s hand. Ans. 3-4. Appellant first argues that the Examiner’s reason for combining the teachings of Robinson and Henderson is flawed. Specifically, Appellant argues that because the sheets in Robinson’s stack have the same dimensions, a user does not need to touch any other portions of the hand coverings on the stack when removing the top one. App. Br. 4. Moreover, according to Appellant, replacing Robinson’s “‘pinch point’ 30” with the adhesive back surface of Henderson would “undermine Robinson’s desired mode of operation.” Reply Br. 1. Hence, the first issue presented for our consideration is whether the Examiner’s proposed combination of Robinson and Henderson is based on rational underpinning. Appellant argues that in contrast to the claimed invention, which requires a release coating (as per claim 5) that may be silicone (as per claim 6) or a petroleum gel (as per claim 7), Burgess discloses the use of release Appeal 2009-008756 Application 11/086,850 4 sheets. App. Br. 5. According to Appellant, “[a] separate sheet is simply not a coating.” Reply Br. 2. In response, the Examiner takes the position that, “Burgess teaches a stack of hand coverings 1-3 with a silicone release coating between the coverings.” Ans. 4. Therefore, the second issue presented for our consideration is whether the teachings of Burgess would have prompted a person of ordinary skill in the art to provide a release coating between the individual hand coverings of Robinson and Henderson. The issue turns on whether Burgess discloses a release coating. OPINION Issue (1) Appellant does not present any separate arguments for the patentability of claims 2 and 4 apart from independent claim 1. App. Br. 2. Thus, in accordance with 37 C.F.R. 41.37(c)(1)(vii), dependent claims 2 and 4 stand or fall with claim 1. At the outset, we note that like Appellant’s invention, both Robinson and Henderson disclose thin film hand coverings for preventing cross- contamination. Robinson, Abstract; Henderson, col. 1, ll. 6-8. In Robinson, a user grasps a sheet 20 at pinch point 30 and forms a wrinkle 54. Robinson, col. 7, ll. 41-45 and fig. 7. Upon removing the sheet 20 from a roll or stack, the sheet is held in a horizontal position while pinched between the thumb and forefinger and resting on the palm and the other three fingers of the user’s hand 52. Robinson, col. 8, ll. 6-13. Then, the user’s hand 52 is moved upward into the face of still air so as to create a relative wind force 58 that holds the sheet 20 against the outstretched fingers and palm of hand Appeal 2009-008756 Application 11/086,850 5 52 and allows the user to convey the sheet. Robinson, col. 8, ll. 13-28 and fig. 9. In contrast, in Henderson, when the user’s hand 26 is placed on the adhesive coated surface 27 of web film 23, the user’s hand sticks to the adhesive coated surface such that the user is able to tear away a sheet 28 from the web film 23. Henderson, col. 3, l. 60 through col. 4, l. 16 and figs. 2-4. Hence, the modification proposed by the Examiner appears to be nothing more than “the simple substitution of one known element for another.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). That is, the pinch point 30 of Robinson’s sheet is substituted by the adhesive coated surface of Henderson. Like the Examiner, we find that a person of ordinary skill in the art would have readily appreciated that it would have been advantageous to provide Henderson’s adhesive coated surface on Robinson’s sheet in order “to assist in retaining the hand covering on the wearer’s hand.” See Ans. 4. Moreover, the simple substitution of one mode of sheet transfer (pinch point) with another (adhesive coated surface) in Robinson does not change the operation mode of Robinson’s prophylactic barrier (hand covering). It merely allows for a more reliable and simpler way of removing Robinson’s prophylactic barrier (hand covering) from a stack. In conclusion, we find that the Examiner has provided an articulated reasoning with rational underpinning to support the legal conclusion of obviousness. Therefore, the rejection of claim 1, under 35 U.S.C. § 103(a) as unpatentable over Robinson and Henderson, and claims 2 and 4 standing or falling with claim 1, is sustained. Appeal 2009-008756 Application 11/086,850 6 Issue (2) Although we appreciate Appellant’s position that Burgess discloses release sheets 1 and 3, obviousness does not require that all of the features of the secondary reference be bodily incorporated into the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). In this case, Burgess specifically discloses a plurality of stacked sheets 1-3 where sides 5 and 8 of sheets 1 and 3, respectively, have a release material thereon, i.e., silicone, and side 7 of sheet 2 constitutes a self-adhesive side. Col. 5, ll. 12-16 and Abstract. More specifically, Burgess further discloses that when sheet 3 is placed over sheet 2 the release material on side 8 is in contact with the self- adhesive material on side 7 and as such, can be easily separated therefrom. Col. 5, ll. 16-19. Hence, we agree with the Examiner that Burgess discloses “a stack of hand coverings 1-3 with a silicone release coating between the coverings.” Ans. 4. In other words, Burgess discloses the use of a release coating between stacked sheets that enhances the separation (release properties) of a top sheet from a subsequent, bottom sheet. Accordingly, the Examiner correctly concluded that it would have been obvious to provide the hand coverings of Robinson and Henderson with a release coating according to Burgess in order to “facilitate separation of the plastic layers and prevent tearing.” Id. In conclusion, because Burgess discloses a release coating and Appellant has not presented any arguments against the Examiner’s proposed combination of Robinson, Henderson, and Burgess, the rejection of claims 5-7 under 35 U.S.C. § 103(a) as unpatentable over Robinson, Henderson, and Burgess is likewise sustained. Appeal 2009-008756 Application 11/086,850 7 CONCLUSIONS 1. The Examiner has provided an adequate reason with rational underpinning to combine the teachings of Robinson and Henderson. 2. The teachings of Burgess would have prompted a person of ordinary skill in the art to provide a release coating between the individual hand coverings of Robinson and Henderson. SUMMARY The decision of the Examiner to reject claims 1, 2, and 4-7 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2007). AFFIRMED mls GIFFORD, KRASS, SPRINKLE, ANDERSON & CITKOWSKI, P.C PO BOX 7021 TROY, MI 48007-7021