Ex Parte Holden

Board of Patent Appeals and Interferences

Jan 28, 2010

10454236 (B.P.A.I. Jan. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PERRIANN M. HOLDEN
____________________

Appeal 2009-004639
Application 10/454,236
Technology Center 3700
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Decided: January 29, 2010
____________________

Before WILLIAM F. PATE III, STEVEN D.A. McCARTHY and
MICHAEL W. O’NEILL, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s 2
decision finally rejecting claims 75, 76 and 82-91 under 35 U.S.C. § 103(a) 3
as being unpatentable over Burke (WO 98/20760, publ. May 22, 1998) and 4
Mower (US 3,092,103, issued Jun. 4, 1963); and finally rejecting claims 925
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and 93 under § 103(a) as being unpatentable over Mower and Peck (US 1
4,379,881, issued Apr. 12, 1983).1 We have jurisdiction under 35 U.S.C. 2
§ 6(b). 3
We AFFIRM. 4
Independent claim 92 recites: 5
6
92. A palm-shaped gripping aid for the 7
hand of a user, comprising: 8
a palm-shaped pad having a sufficient pad 9
area for adherence to a substantial portion of the 10
palm of a user; 11
a first layer corresponding in shape to said 12
palm-shaped pad and being disposed between a 13
first layer of an acrylic adhesive and a second layer 14
of an acrylic adhesive; 15
a second layer corresponding in shape to 16
said palm-shaped pad and said first layer and 17
disposed between one of the two layers of acrylic 18
adhesive and a layer of skin compatible adhesive; 19
and 20
wherein said layer of skin compatible 21
adhesive is disposed on one side of said second 22
layer to facilitate removably securing said first 23
layer, said second layer, and said pad in a layered 24
arrangement to the palm of the user. 25

1 Provisional rejections of claims 75, 76 and 78-93 for nonstatutory
obviousness-type double patenting were rendered moot by the abandonment
of the co-pending applications on which the double patenting rejections were
based. The Examiner has withdrawn claims 78-81 and 94-100 from
consideration. The remaining claims in the application were cancelled.
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ISSUES 1
The Appellant argues the rejections of claims 75, 76 and 82-91 as a 2
group. (See Br. 38-39). Independent claim 75 is representative of the group. 3
See 37 C.F.R. § 41.37(c)(1)(vii) (2009). The Appellant argues the rejections 4
of claims 92 and 93 together separately from the rejections of claims 75, 76 5
and 82-91. (See Br. 39-40). Independent claim 92 is representative of the 6
latter group. 7
Although the Appellant submits a declaration executed by the 8
Appellant as an attachment to the Appeal Brief, the Appellant does not 9
contend in the Appeal Brief that the declaration provides evidence of 10
unexpected results or any other secondary indicium of nonobviousness. 11
(See, e.g., Br. 31 and 50). Therefore, this appeal turns on whether the 12
Examiner has produced sufficient evidence to support the conclusion that 13
claims 75 and 92 are obvious. See In re Kahn, 441 F.3d 977, 985-86 (Fed. 14
Cir. 2006). Any argument regarding secondary indicia of nonobviousness is 15
waived. See 37 C.F.R. § 41.37(c)(1)(vii). 16
The resolution as to whether the Appellant has shown that the 17
Examiner failed to establish the obviousness of claims 75 and 92 raises three 18
issues: 19
Did the Examiner err in finding that Mower discloses 20
certain elements recited in claim 92, namely, a palm-shaped 21
gripping aid for the hand of a user, including a palm-shaped pad 22
having a sufficient pad area for adherence to a substantial 23
portion of the palm of a user; a second layer corresponding in 24
shape to the palm-shaped pad and the first layer; and the second 25
layer disposed between one of the two layers of acrylic 26
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adhesive and a layer of skin compatible adhesive? (Compare 1
Br. 43-46 with Ans. 9). 2
Did the Examiner err in finding that Mower discloses 3
certain elements recited in claim 75, namely, a second layer 4
secured to one side of a first layer by a layer of a first adhesive 5
layer and a pad adhesively secured to the other side of the first 6
layer by a second adhesive layer? (Compare Br. 33-36 with 7
Ans. 10). 8
Did the Examiner fail to articulate sufficient reasoning 9
with some rational underpinning to support the conclusion that 10
the subject matter of claim 75 would have been obvious from 11
the combined teachings of Mower and Burke? 12
13
All arguments not raised in the Appeal Brief are waived and will not be 14
considered in resolving this appeal. 37 C.F.R. § 41.37(c)(1)(vii). 15
16
FINDINGS OF FACT 17
The record supports the following findings of fact (“FF”) by a 18
preponderance of the evidence. 19
1. Mower discloses an eye patch. (Mower, col. 2, ll. 11-15). 20
2. Mower’s eye patch includes a cover 1 having a generally oval 21
shaped center portion. (Id.) 22
3. In order to ensure positive and lasting engagement between 23
Mower’s eye patch and the face of a user, Mower discloses providing a pair 24
of extensions 8, 8 integral with the cover 1. One of the extensions 8 extends 25
from each end of the long axis of the oval. (Mower, col. 2, ll. 52-57). 26
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4. Figure 1 of Mower depicts the cover 1 as fitting over the face of 1
a user so as to abut the bridge of the nose and extend down to the cheek on a 2
lower side; and so as to extend above the eyelash on an upper side. (See 3
Mower, col. 2, l. 65 – col. 3, l. 7). 4
5. Mower’s eye patch includes a relatively thick layer or sheet 2 of 5
cushioning material under the cover 1. (Mower, col. 2, ll. 20-23). 6
6. Mower describes securing the layer of cushioning material 2 to 7
the cover 1 by means of an adhesive layer 4. (Mower, col. 2, ll. 31-35 and 8
fig. 3). 9
7. Figure 2 of Mower depicts the layer of cushioning material 2 as 10
having an outer contour corresponding to the outer contour of the cover 1. 11
8. Mower’s layer of cushioning material 2 has a relatively large 12
oval aperture 3 within the outer contour of the layer 2. (Mower, col. 2, ll. 13
20-23 and figs. 2 and 3). 14
9. Mower’s eye patch also includes a layer of thin plastic film 5 15
under the layer of cushioning material 2. (Mower, col. 2, ll. 39-42). 16
10. Mower describes securing the layer of thin plastic film 5 to the 17
layer of cushioning material 2 by means of an adhesive layer 6. (Mower, 18
col. 2, ll. 39-45 and fig. 3). 19
11. Mower describes providing an adhesive layer of spread 7 on the 20
side of the layer of thin plastic film 5 opposite the adhesive layer 6 which 21
secures the layer 5 to the layer of cushioning material 2. The adhesive layer 22
7 attaches the eye patch to the face of the user. (Mower, col. 2, ll. 36-45 and 23
fig. 3). 24
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12. Mower describes the layer of thin plastic film 5, the adhesive 1
layer 6 and the adhesive layer or spread 7 as being provided by a double-2
faced tape. (Mower, col 2, ll. 39-42). 3
13. Figure 2 of Mower depicts the layer of thin plastic film 5 as 4
having an outer contour corresponding to the outer contours of the cover 1 5
and the layer of cushioning material 2. 6
14. Figures 2 and 3 of Mower depicts the layer of thin plastic film 5 7
as having a relatively large oval aperture within the outer contour of the 8
layer 2 corresponding to the oval aperture 3 in the layer of cushioning 9
material 2. 10
15. Burke describes Figure 8 of Burke as depicting a skin protector 11
30 “shaped for application to the palm of a hand.” (Burke 6, ll. 20-22). 12
16. Figure 8 of Burke illustrates the skin protector. The skin 13
protector as depicted in Figure 8 includes an enlarged portion with rounded 14
sides for covering the palm, including particularly the fleshy portion of the 15
palm laterally opposite the thumb, and at least one extension extending from 16
the enlarged portion over the thumb. 17
17. Peck discloses a pressure sensitive polyacrylate adhesive 18
suitable for application to the skin. (Peck, col. 1, ll. 5-7 and 13-16). 19
18. Peck describes the polyacrylate adhesive as being suitable for 20
adhering first aid dressings or the like to the skin. (Id.) 21
19. Peck discloses that the polyacrylate adhesive may be used for 22
coating polyvinylchloride film. (Peck, col. 2, ll. 21-25). 23
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PRINCIPLES OF LAW 1
A claim under examination is given its broadest reasonable 2
interpretation consistent with the underlying specification. In re Am. Acad. 3
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the absence of 4
an express definition of a claim term in the specification or a clear 5
disclaimer of scope, the claim term is interpreted as broadly as the ordinary 6
usage of the term by one of ordinary skill in the art would permit. In re 7
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re 8
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Properties of preferred 9
embodiments described in the specification which are not recited in a claim 10
do not limit the reasonable scope of the claim. E-Pass Techs., Inc. v. 3Com 11
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). Nevertheless, where possible, 12
claim language should be construed sufficiently broadly to encompass at 13
least one preferred embodiment disclosed in the specification. Hoechst 14
Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1581 (Fed. Cir. 1996). 15
A rejection under § 103(a) may be based on the interrelated teachings 16
of multiple patents. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 17
(2007). The Examiner’s characterization of one of those patents as 18
“primary” and another patent as “secondary” is not binding on the Board. 19
The Examiner need not show that one of ordinary skill in the art would have 20
combined the teachings of the cited prior art references for precisely the 21
same reasons disclosed by the Appellant so long as the Examiner articulates 22
reasoning with some rational underpinning sufficient to support the 23
conclusion of obviousness. See id. at 418-19. 24
An anticipatory prior art reference necessarily supports a conclusion 25
of obviousness, particularly where, as here, any argument suggesting that the 26
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probative value of the anticipatory reference fails to outweigh secondary 1
indicia of obviousness has been waived. See In re Fracalossi, 681 F.2d 792, 2
794 (CCPA 1982). 3
“[W]hen the PTO shows sound basis for believing that the products of 4
the applicant and the prior art are the same, the applicant has the burden of 5
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990). 6
7
ANALYSIS 8
Claim 92 recites a palm-shaped pad having a sufficient pad area for 9
adherence to a substantial portion of the palm of a user. The Appellant does 10
not formally define the term “palm-shaped pad” in the Specification. The 11
Specification indicates that the term “palm-shaped pad” is met by a pad 12
shaped so as to fit onto the palm of the hand of some user. The “palm-13
shaped pad” need not fit the palm of any particular user nor take the actual 14
shape of any real or conventionalized human palm. For example, page 6, 15
lines 20-23 of the Specification describe the embodiment shown in the 16
Appellant’s Figure 12D as having “one piece covering the palm. The palm 17
pad shown in the Appellant’s Figure 12D does not take the actual shape of 18
the human palm on which the pad is shown mounted. 19
Burke describes Figure 8 of Burke as depicting a skin protector 30 20
“shaped for application to the palm of a hand.” Figure 8 of Burke illustrates 21
the skin protector. (FF 15). Burke’s use of the term “shaped for application 22
to the palm of a hand” is sufficiently broad to encompass a pad including an 23
enlarged portion with rounded sides for covering the palm, including 24
particularly the fleshy portion of the palm laterally opposite the thumb, and 25
at least one extension extending from the enlarged portion over the thumb 26
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(see FF 16) implies that the ordinary usage of the term “palm-shaped pad” 1
would be sufficiently broad to encompass a pad having extensions extending 2
over the thumb or past the side of the palm opposite the thumb. 3
Mower discloses a patch (FF 1) including a first layer, namely, the 4
layer of cushioning material 2 (see FF 5-8); a second layer, namely, the layer 5
of thin plastic film 5 (see FF 9-14); and a pad, namely, the cover 1 (see FF 2-6
4). Mower describes the pad or cover 1 as having a generally oval shaped 7
center portion (FF 2) as well as extensions 8 extending from the ends of the 8
long axis of the oval (FF 3). 9
The Examiner finds that Mower’s pad or cover 1 is a palm-shaped pad 10
having a “sufficient pad area for adherence to a substantial portion of the 11
palm of a user.” (Ans. 6 and 9). The Examiner has a sound basis for belief 12
that this finding is correct. The oval shape of the center portion of Mower’s 13
patch corresponds sufficiently to the actual shape of a human palm so that a 14
properly sized pad or cover 1 would fit onto the palm of the hand of some 15
individual. The term “palm-shaped pad” is sufficiently broad to encompass 16
the shape of Mower’s pad or cover 1 even though Mower’s pad or cover 1 17
includes the extensions 8 which might extend over the thumb or past the side 18
of the palm opposite the thumb were Mower’s patch is applied to a human 19
palm. 20
Mower provides some basis for estimating the size of the pad or cover 21
1: Figure 1 of Mower depicts the cover 1 as fitting over the face of a user so 22
as to abut the bridge of the nose and extend down to the cheek on a lower 23
side; and so as to extend above the eyelash on an upper side. (FF 4). This 24
description provides the Examiner a sound basis for belief that a pad or 25
cover 1 sized to fit over the eye of one individual would be of a suitable size 26
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to fit onto the palm of another individual. This description also provides the 1
Examiner a sound basis for belief that the pad or cover 1 would have a 2
sufficient pad area for adherence to a substantial portion of the palm of that 3
other individual. The fact that Mower teaches the use of the patch as an eye 4
patch (FF 1) does not imply that the patch does not include a palm-shaped 5
pad having a sufficient pad area for adherence to a substantial portion of the 6
palm of a user. 7
The Examiner has a sound basis for belief that the pad or cover 1 of 8
Mower’s patch is a “palm-shaped pad having a sufficient pad area for 9
adherence to a substantial portion of the palm of a user.” The Appellant 10
presents no evidence sufficient to rebut this sound basis for belief. 11
Therefore, the Examiner did not err in finding that Mower discloses a “palm-12
shaped pad having a sufficient pad area for adherence to a substantial 13
portion of the palm of a user” as recited in claim 92. 14
More generally, the Appellants do not formally define the term 15
“shape” in the Specification. The ordinary usage of the term “shape” is 16
sufficiently broad to include “spatial form or contour that is [usually] fixed 17
by relatively constant spatial relation between the parts of the periphery or 18
surface.” WEBSTER’S THIRD NEW INT’L DICTIONARY 2087 (G&C Merriam 19
Co. 1971)(“shape,” entry 2, def. 1b(1)). The Appellant points to nothing in 20
the Specification implying that the Appellant has disclaimed an 21
interpretation of the term “shape” broad enough to encompass this ordinary 22
usage. In particular, the term “a second layer corresponding in shape to said 23
palm-shaped pad and said first layer” does not exclude a second layer having 24
an outer contour corresponding to the outer contours of the pad and the first 25
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layer, even if the second layer also includes an aperture enclosed within the 1
outer contour which the pad does not share. 2
The outer contour of Mower’s first layer of cushioning material 2 3
corresponds to the outer contour of Mower’s pad or cover 1 (FF 7) and the 4
outer contour of Mower’s second layer of thin plastic film 5 corresponds to 5
the outer contours of both the first layer of cushioning material 2 and the pad 6
or cover 1 (FF 13). Therefore, the shape of Mower’s second layer of thin 7
plastic film 5 corresponds to the shapes of both the first layer of cushioning 8
material 2 and the pad or cover 1 within the broadest reasonable 9
interpretation of the term “shape.” This is true even though Mower’s first 10
layer of cushioning material 2 and second layer of thin plastic film 5 each 11
include an aperture which the pad or cover 1 does not include. Therefore, 12
the Examiner did not err in finding that Mower discloses a “second layer 13
corresponding in shape to the palm-shaped pad and the first layer” as recited 14
in claim 92. (See Ans. 6). 15
Claim 92 recites that the second layer is disposed between one of the 16
two layers of acrylic adhesive and a layer of skin compatible adhesive. The 17
Examiner did not err in finding that Mower’s second layer of thin plastic 18
film 5 is disposed between an adhesive layer 6 of adhesive and a layer of 19
skin compatible adhesive 7. (See Ans. 6; see also FF 9-11). Similarly, 20
claim 75 recites a hand or finger sporting activity aid including a second 21
layer secured to one side of a first layer by a layer of a first adhesive layer 22
and a pad adhesively secured to the other side of the first layer by a second 23
adhesive layer. The Examiner did not err in finding that Mower’s second 24
layer of thin plastic film 5 is secured to one side of Mower’s first layer of 25
cushioning material 2 by a layer of a first adhesive layer 4 and that Mower’s 26
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pad or cover 1 is adhesively secured to the other side of the first layer of 1
cushioning material 2 by a second adhesive layer 6. (See Ans. 3; see also FF 2
5, 6, 9 and 10). 3
Each of these findings is correct even though Mower describes the 4
layer of thin plastic film 5, the adhesive layer 6 and the adhesive layer or 5
spread 7 as being provided by a double-faced tape. (See FF 12). Providing 6
the layer of thin plastic film 5, the adhesive layer 6 and the adhesive layer or 7
spread 7 by means of a double-faced tape relates to the method by which the 8
patch is manufactured and not to the structure of the claimed patch itself. 9
Even if claim 75 or claim 92 sought to limit its claimed structure by reciting 10
steps of a process for making the structure, which neither claim does, 11
different manufacturing steps cannot patentably distinguish a claimed 12
structure from an identical structure shown in the prior art. See SmithKline 13
Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317 (Fed. Cir. 2006). 14
Indeed, the Appellant has not identified any limitation in the body of 15
representative claim 75 which the Examiner has not expressly and correctly 16
found to be disclosed by Mower. Although Mower describes Mower’s patch 17
as an eye patch rather than as a hand and finger sporting activity aid as 18
recited in the preamble of claim 75 (see FF 1), the preamble recitation of a 19
hand and finger sporting activity aid merely states an intended use of the 20
claimed structure; the Examiner finds that Mower’s patch is capable of 21
performing the intended use (see Ans. 9); and the Appellant provides no 22
reason why Mower’s patch might be incapable of such use. Consequently, 23
Mower’s patch anticipates the claimed subject matter. See, e.g., Catalina 24
Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 25
2002)(stating that a preamble is not limiting where a structurally complete 26
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apparatus is recited in the body of the claim and the preamble merely states 1
an intended use of the apparatus). 2
The Examiner has articulated findings supported by the disclosure of 3
Mower sufficient to show that Mower’s patch anticipates the subject matter 4
of claim 75. The Appellant has waived any argument suggesting that the 5
probative value of the anticipatory reference fails to outweigh secondary 6
indicia of obviousness. Hence, the Examiner has articulated reasoning with 7
some rational underpinning sufficient to support the conclusion that the 8
subject matter of claim 75 would have been obvious from Mower and Burke. 9
See Fracalossi, 681 F.2d at 794. This is true even assuming for purposes of 10
this appeal only that neither Mower nor Burke addresses the Appellant’s 11
professed motivation for the claimed subject matter, namely, preventing 12
slippage of the sporting activity aid due to wetness from perspiration while 13
engaging in a sporting activity while promoting clean peel off and comfort 14
during removal from the skin of a user. 15
16
CONCLUSIONS 17
The Examiner did not err in finding that Mower discloses certain 18
elements recited in claim 92, namely, a palm-shaped gripping aid for the 19
hand of a user including a palm-shaped pad having a sufficient pad area for 20
adherence to a substantial portion of the palm of a user; a second layer 21
corresponding in shape to the palm-shaped pad and the first layer; and the 22
second layer disposed between one of the two layers of acrylic adhesive and 23
a layer of skin compatible adhesive. Therefore, the Examiner did not err in 24
rejecting representative claim 92 or its dependent claim 93 under § 103(a) as 25
being unpatentable over Mower and Peck. 26
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The Examiner did not err in finding that Mower discloses certain 1
elements recited in claim 75, namely, a second layer secured to one side of a 2
first layer by a layer of a first adhesive layer and a pad adhesively secured to 3
the other side of the first layer by a second adhesive layer. 4
Neither did the Examiner fail to articulate sufficient reasoning with 5
some rational underpinning to support the conclusion that the subject matter 6
of claim 75 would have been obvious from the combined teachings of 7
Mower and Burke. Therefore, the Examiner did not err in rejecting 8
representative claim 75 or its dependent claims 76 and 82-91 under § 103(a) 9
as being unpatentable over Burke and Mower. 10
11
DECISION 12
We AFFIRM the Examiner’s decision rejecting claims 75, 76 and 82-13
93. 14
No time period for taking any subsequent action in connection with 15
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 16
§ 1.136(a)(1)(iv) (2007). 17
18
AFFIRMED 19
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mls 23
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JERRY RICHARD POTTS 25
3248 VIA RIBERA 26
ESCONDIDO, CA 92029 27