Ex Parte Kleinert

Patent Trial and Appeal Board

May 29, 2018

11555304 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111555,304 11/01/2006
22884 7590 05/31/2018
MIDDLETON REUTLINGER
401 S. 4th Street, Suite 2600
LOUISVILLE, KY 40202
FIRST NAMED INVENTOR
James M. Kleinert
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ZM339/l 0011 6760
EXAMINER
HADEN, SALLY CLINE
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
05/31/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
USPTOmail@middreut.com
USPTOmail@middletonlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES M. KLEINERT
Appeal2018-000829
Application 11/555,304
Technology Center 3700
Before JENNIFER D. BAHR, JAMES P. CALVE, and
FREDERICK C. LANEY, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
James M. Kleinert (Appellant) 1 appeals under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1, 3---6, 8, and 10-14. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief identifies Hillerich & Brads by Co. as the real party in
interest. Appeal Br. 3.
Appeal2018-000829
Application 11/555,304
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A glove constructed to fit a human hand of predetermined
size for protecting selected anatomical portions thereof
compnsmg:
a palmar side panel and a dorsal side panel secured along
each panel's outer periphery with an opening therein to receive
said human hand, said dorsal side panel being sized to cover the
back of said human hand and in conjunction with said palmar
side panel providing a thumb stall and a plurality of finger
stalls for receiving a thumb and fingers of a human hand; and
at least one of said finger stalls having an upper portion
and a lower portion, said upper portion being on the dorsal side
of said glove and said lower portion being on the palmar side
of said glove, said lower portion having a protective covering
with a lining of moisture absorbing material on an inside of said
at least one finger stall secured to said lower portion proximal
to and distal to a center axis of rotation of a proximal
interphalangeal joint of at least one finger of said hand, said
center axis of rotation of said proximal interphalangeal joint
being absent of said moisture absorbing material.
REJECTIONS
I. Claims 1, 3---6, 8, and 10-13 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
II. Claims 1, 3-6, 8, and 10-14 stand rejected under 35 U.S.C. § 101
and§ 33(a) of the America Invents Act as being directed to or
encompassing a human organism.
III. Claims 1, 3, 4, and 10-13 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Rawlings (US 325, 968, iss. Sept. 8,
1885) and Wilkinson (US 5,867,826, iss. Feb. 9, 1999).
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IV. Claims 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rawlings, Wilkinson, and Morris
(US 4,864,659, iss. Sept. 12, 1989).
V. Claims 6 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rawlings, Wilkinson, Morris, and Sato
(US 5,761,745, iss. June 9, 1998).
VI. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rawlings, Wilkinson, Morris, and Sato.
DISCUSSION
Rejection I
The Examiner sets forth several reasons why the Examiner considers
the claims to be indefinite. Final Act. 5---6. Appellant does not present any
arguments contesting this rejection. See Appeal Br. 4--14. Thus, Appellant
has waived any argument of error, and we summarily sustain the rejection of
claims 1, 3---6, 8, and 10-13 under 35 U.S.C. § 112, second paragraph. See
In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the
Board did not err in sustaining a rejection under 35 U.S.C. § 112, second
paragraph, when the applicant failed to contest the rejection on appeal).
Rejection II
The basis of the Examiner's rejection, as we understand it, is that the
claims contain recitations that, according to the Examiner, incorporate the
human hand as part of the claimed invention; thus, the Examiner construes
the claims as being directed to or encompassing a human organism, which is
patent-ineligible subject matter. See Final Act. 4--5; Ans. 2--4.
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We fully appreciate the Examiner's observation that there are
recitations in the claims that, if read in a vacuum, appear to require the
presence of the human hand. For example, in claim 1, instead of reciting a
protective covering with a lining of moisture absorbing material secured to
said lower portion so as (or adapted) to be located proximal to and distal to a
center axis of rotation of a proximal interphalangeal finger joint of said
hand, said center axis of rotation being absent of said moisture absorbing
material, when the glove is worn on a human hand of the predetermined size,
or reciting the moisture absorbing material in relation to structure of the
finger stall, rather than anatomy of the human hand, 2 claim 1 recites the
moisture absorbing material actually in a particular position relative to
portions of the hand. A material cannot be disposed in a particular position
relative to portions of the hand without the presence of the hand. In contrast,
independent claim 14, for example, recites the location of the moisture
absorbing material in a manner that clearly conveys that the hand is not part
of the claimed invention; in particular, claim 14 recites that the moisture
absorbing material is on an inside of said elongated sections of said covering
''for location proximal to a center axis of rotation of a proximal
2 Notably, the Examiner suggested amending the problematic recitations by
replacing "'of said hand' with-stall-to show that the center axis of rotation
is not part of the human wearer, but a part of the glove," or by using
"adapted to" language, which would more directly and explicitly emphasize
that the references to the hand anatomy in the claim merely set forth the
environment in which the glove is to be used and the functions to be
performed by the recited elements of the glove, but are not positive
recitations of the hand as part of the claimed subject matter. Final Act. 4,
19. We are somewhat puzzled by Appellant's reluctance to make such
amendments to improve the clarity of the claims and dispel any notion that
the claims encompass the hand.
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interphalangeal joint and distal to the center axis of rotation of' the joint.
Claims App. Such language could have been used in claim 1 in reciting the
moisture absorbing material. Claim 14, however, recites an elastic material
covering, rather than positioned to cover or adapted to cover, the center axis
of rotation of the joints of the fingers, which, read in a vacuum, suggests the
presence of the joints of the fingers of the hand. Id. Similarly, claim 6
recites an elastic material covering beneath the center axis of rotation of the
finger joint, rather than, for example the center axis of rotation of the joint of
the finger stall, as recited in claim 8. The recitation of claim 6 suggests the
presence of the finger of the hand while the recitation of claim 8 does not.
Of course, we must take into account the context of the entire claim
when construing claim language, rather than considering the claim language
in a vacuum. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
Cir. 2005) (en bane) (citing ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082,
1088 (Fed. Cir. 2003) (noting that "the context of the surrounding words of
the claim also must be considered in determining the" meaning of claim
language); see also In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir.
2010) (reading claim language "in the appropriate context of the claim
language and specification" in determining "the broadest reasonable
construction" of the claim language).
The preambles of claims 1 and 14 recite "[a] glove constructed to fit a
human hand of pre-determined size for protecting selected anatomical
portions thereof." Claims App. (emphasis added). This indicates that the
claims are directed to a glove, and not a glove in combination with a hand.
The next clause of claim 1 recites palmer side and dorsal side panels
with an opening "to receive said human hand" and providing a thumb stall
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and finger stalls ''for receiving a thumb and fingers of a human hand," with
the dorsal panel "sized to cover the back of said human hand." Id. (emphasis
added). Similarly, the clause of claim 14 following the preamble recites a
covering ''for said hand" with sections "to receive a plurality of fingers," as
well as a top portion ''for covering a backside of said hand," a top covering
portion "to receive a plurality of fingers," and a lower section "to cover a
palm side of said hand including a bottom side of said elongated sections to
receive said plurality of fingers." Id. (emphasis added).
Consistent with the preambles of claims 1 and 14, these recitations
indicate that the claim is directed to a glove, and not to a glove in
combination with the hand, and that the hand anatomy is referenced only to
provide context for the structural attributes of the glove. A person of
ordinary skill in the art, reading the claim language in the context of the
claim as a whole, would understand the recitations in the last clauses of
claims 1 and 14, and the "beneath" recitation in dependent claim 6, alluded
to by the Examiner as forming the basis for the rejection of the claims under
35 U.S.C. § 101 and§ 33(a) of the Leahy-Smith America Invents Act, as
defining locations of the moisture absorbing material and elastic material of
the glove relative to the locations of particular anatomical features of a hand
of the predetermined size that the glove is constructed to fit if the glove were
worn on such a hand. In other words, the hand anatomy is not part of the
claimed invention, but, rather, provides a reference to define where on the
glove the moisture absorbing material and elastic material are located along
the thumb or finger stall.
For the foregoing reasons, Appellant's claims are not directed to, and
do not encompass, a human organism. Accordingly, we do not sustain the
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rejection of claims 1, 3---6, 8, and 10-14 under 35 U.S.C. § 101 and§ 33(a)
of the Leahy-Smith America Invents Act.
Re} ection III
Claims 1, 3, 4, and 10-12
Claim 1 recites, in pertinent part, a glove comprising a palmar side
panel, a dorsal side panel, and at least one finger stall having a protective
covering with a lining of moisture absorbing material secured on the
lower/palmar thereof proximal to and distal to a center axis of rotation of a
proximal interphalangeal finger joint, said center axis of rotation being
absent of said moisture absorbing material. Claims App.
The Examiner finds that Rawlings discloses a glove as called for in
claim 1, including padding 8 on the finger portions between joints of the
fingers, except that Rawlings does not expressly disclose the lower portion
having a protective covering with a lining of moisture absorbing material as
claimed. Final Act. 7-8. Additionally, the Examiner finds that, although
Rawlings does not disclose a protective covering with a lining in the finger
stalls, Rawlings does disclose a protective covering with a lining on the
inside of the palm portion of the glove. Id. at 8. The Examiner finds that
Wilkinson teaches, in a similar glove, a lining of moisture absorbing
material (inner liner 96) such as terrycloth. Id. The Examiner also finds that
Wilkinson teaches such "a lining in the palm area of the glove, but also
teaches lining 'the entire inner surface"' as well as any and all locations of
the glove likely to be on portions of the hand having sweat or perspiration
and on portions of the glove that are in direct contact with the user's skin.
Id. (citing Wilkinson 7:45---60; Fig. 14). According to the Examiner, "all of
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those [teachings of Wilkinson] suggest it would be within the scope of the
Wilkinson reference to provide a lining in all the portions of the glove
including the finger portions." Id. In light of the teachings of Wilkinson,
the Examiner determines it would have been obvious to provide the padding
structure on Rawlings's finger stalls with structure similar to the padding on
Rawlings's palm portion, and to replace one of the layers of padding with
terrycloth "to achieve 'a lining of moisture absorbing material,' for the
purpose of preventing bruising of the wearer's fingers when playing ball ...
and for the purpose of absorbing perspiration for user comfort and to protect
other materials of the glove from perspiration." Id. at 8-9 (citing Rawlings,
11. 20-25).
The Examiner emphasizes that the modification proposed in the
rejection is limited to incorporating terrycloth material into pads/lining 8 of
Rawlings. Ans. 4. According to the Examiner, "[t]he joints of the finger are
expected to include the center axis of rotation of the joints, and because
Rawlings discloses lining/padding that does not extend over the entirety of
the joint, one would expect the center axis of rotation of the joint of the user
to also be 'absent' the lining/padding material." Id.
Appellant argues that Wilkinson teaches lining all portions of the
glove, which is contrary to the limitation in claim 1 that the center axis of
rotation of the proximal interphalangeal finger joint is absent of the moisture
absorbing material. Appeal Br. 10. Appellant also contends that neither
Rawlings nor Wilkinson provides any teaching or disclosure of a protective
covering, pad, or moisture absorbing material located with respect to the
center axis of rotation of a proximal interphalangeal joint. Id. In fact,
Appellant submits that Wilkinson specifically teaches away from the
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limitation in claim 1 that the proximal interphalangeal joint be absent of
moisture absorbing material by disclosing that inner terrycloth liner 96 could
be located on the entire inner surface. Id. at 10-11 (citing Wilkinson 7:45-
50). According to Appellant, the construction taught by Wilkinson does the
opposite of the invention recited in Appellant's claim 1, in which "the center
axis of rotation of the proximal interphalangeal joints is absent material, thus
protecting the boney prominences of the joint from bruising." Id. at 11. For
the reasons that follow, Appellant's arguments do not apprise us of error in
the rejection of claim 1.
Rawlings discloses a glove comprising finger pads 8 "between the
joints." Rawlings, 11. 80-82. Rawlings also discloses that the pads are made
of felt, with interposed layers of india-rubber, and a lining of leather, but
teaches that "[a]s an equivalent of the felt, cloth or other textile material may
be used." Id., 11. 40-43, 58---64, 83-84. Rawlings teaches that "to give the
required flexibility to the glove there are lines or spaces of separation
between the pads forming joints at the joints of the hand." Id., 11. 66-69.
In other words, Rawlings teaches leaving the joints, where the joints
of the hand flex (i.e., rotate), free of padding, in order to provide the required
flexibility to permit such joint rotation. The Examiner's finding that the
finger joint, such as the proximal interphalangeal joint, includes the center
axis of rotation of the finger joint (i.e., the location at which the finger flexes
or rotates) is logically sound and well supported by Rawlings's teachings.
Appellant asserts that "the center axes of rotation of the joints of the
fingers of a human hand are actually located somewhat below the joints due
to the unique nature of the anatomy of the hand." Reply Br. 5. Appellant
does not proffer any evidence to support this assertion, which, thus, amounts
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to no more than unsupported attorney argument entitled to little, if any
weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Moreover,
to the extent that the center axis of rotation may be offset from the 'joint"
alluded to in Appellant's assertion, one of ordinary skill in the art would
understand the 'joint" alluded to in Rawlings, at which a line or space of
separation between pads is provided to give the required flexibility to the
glove, to be the location at which the finger flexes or rotates-i.e., the center
axis of rotation of the joint. As such, Appellant's assertion does not
persuade us of error in the Examiner's finding that the center axis of rotation
of the finger joint, such as the proximal interphalangeal joint, in Rawlings's
glove, would be absent of padding 8 and, thus, absent of moisture absorbing
terrycloth material, in the modified glove (Ans. 4).
Appellant's argument that Wilkinson does not teach leaving the finger
joints absent of moisture absorbing material is unavailing because the
Examiner relies on Rawlings for the location of the padding, and on
Wilkinson only for the material of the pads disclosed by Rawlings. Ans. 4.
"Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellant is not correct that Wilkinson teaches away from the claimed
invention-namely, the center axis of rotation of the interphalangeal joint
being absent of the moisture absorbing material. A reference teaches away
from a claimed invention if "a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
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taken by the applicant." In re Kubin, 561F.3d1351, 1357 (Fed. Cir. 2009)
(citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Prior art does not
teach away from claimed subject matter merely by disclosing a different
solution to a similar problem unless the prior art also criticizes, discredits or
otherwise discourages the solution claimed. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). Wilkinson teaches locating an inner liner of
moisture absorbent material such as terrycloth "in areas likely to encounter a
high degree of perspiration such as in palm portion" of the glove. Wilkinson
7 :46-49. Wilkinson also teaches that "the entire inner surface of the outer
material ... could be lined," that "[t]he invention could also be practiced by
providing such absorbent lining at any and all locations of the garment likely
to be on portions of the body having sweat or perspiration," and that
"[p]referably, such absorbent lining should be provided where the portions
of the garment are in direct contact with the user's skin." Id. 7:49--57
(emphasis added). In other words, Wilkinson presents various alternatives
for placement of the moisture absorbent material, but does not in any way
criticize, discredit, or otherwise discourage limiting the moisture absorbent
terrycloth material in the finger stalls to the locations of pads 8 of Rawlings.
Appellant also emphasizes that the recitation in claim 1 for the
moisture absorbing lining to be "secured at a location 'proximal and distal to
the center axis of rotation of a proximal interphalangeal joint' is not an
intended use limitation, but a structural limitation"' and, as such, requires
the lining to be "located and secured to the glove at a specific location with
reference to a 'hand of predetermined size' as stated in the preamble of
claim 1." Appeal Br. 8-9. We agree with Appellant that this recitation of
claim 1 defines the location at which the moisture absorbing material is
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secured to the glove. However, we reiterate that, as explained above in
addressing Rejection II, claim 1 does not require that the moisture absorbing
material actually be disposed proximal to and distal to a center axis of
rotation of a finger joint because the claim does not require the presence of
the hand. Rather, this recitation of claim 1 requires that the moisture
absorbing material be secured in a finger stall of the glove in locations that
would be proximal to and distal to a proximal interphalangeal joint of a
finger of a hand of the predetermined size for which the glove is constructed
when the glove is worn on such a hand. As illustrated in Figure 5 of
Rawlings, and consistent with our discussion above, pads 8 are disposed
between each of the finger joints, with one pad located distal to the proximal
interphalangeal joint of each finger stall and one pad located proximal to the
proximal interphalangeal joint of each finger stall. See Rawlings 66-69, 80-
82. Such pads, modified in view of Wilkinson to comprise moisture
absorbent terrycloth material, satisfy the asserted claim limitation.
Having not been apprised of error in the rejection of claim 1, we
sustain the rejection of claim 1, as well as claims 3, 4, and 10-12, for which
Appellant does not present any separate arguments aside from their
dependence from claim 1, as unpatentable over Rawlings. Appeal Br. 11.
Claim 13
Claim 13 depends from claim 1, and further recites "said moisture
absorbing material having odor controlling properties." Claims App. In
addressing this limitation, the Examiner finds that "Wilkinson's terry cloth
creates a barrier between an odor and a user's olfactory sensor, and it is
noted that [Appellant's] disclosure is silent as to specific structure for odor
controlling properties." Final Act. 12.
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The Examiner does not point to any disclosure in Wilkinson
suggesting that the terrycloth material described therein has properties that
would reduce or block odors. See Appeal Br. 11 (contending that "[ t ]he
assertion that a layer of material has odor controlling properties is wholly
unsupported by any disclosure in the prior art references cited in the [Final
Action]"). Thus, the rejection of claim 13 lacks the requisite factual basis to
establish that the subject matter of claim 13 would have been obvious.
Accordingly, we do not sustain the rejection of claim 13 as unpatentable
over Wilkinson.
Re} ection IV
In contesting the rejection of claim 5, which depends from claim 1,
Appellant argues only that Morris does not teach or disclose the limitations
of claim 1 purportedly missing from Rawlings and Wilkinson-"namely[,]
material near a center axis of rotation of a proximal interphalangeal Uoint]
with the joint absent padding and moisture absorbing material." Appeal Br.
11-12. Having not been apprised of any deficiencies in the combination of
Rawlings and Wilkinson vis-a-vis the pertinent limitations of claim 1,
Appellant's argument, likewise, does not apprise us of error in the rejection
of claim 5. Accordingly, we sustain the rejection of claim 5 as unpatentable
over Rawlings, Wilkinson, and Morris.
Rejection V
Claim 6
In contesting the rejection of claim 6, Appellant argues only that Sato
and Morris do not overcome the purported deficiency in the combination of
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Rawlings and Wilkinson with respect to "the use of a moisture absorbing
material lining secured to the finger stall proximal to and distal to the
proximal interphalangeal joint of at least one finger wherein the center axis
of rotation of the proximal interphalangealjoint ... is absent of the moisture
absorbing material." Appeal Br. 12. Having not been apprised of any such
deficiency, for the reasons discussed above, Appellant's argument, likewise,
does not apprise us of error in the rejection of claim 6. Accordingly, we
sustain the rejection of claim 6 as unpatentable over Rawlings, Wilkinson,
Morris, and Sato.
Claim 8
Claim 8 depends from clam 1, and further recites "an elastic material
covering beneath the location for said center axis of rotation of said
proximal interphalangeal joint of said at least one finger stall." Claims
App. 3 The Examiner finds that Rawlings as modified by Wilkinson does not
expressly disclose a glove including an elastic covering material as claimed.
Final Act. 14. However, the Examiner finds that Sato teaches a glove
comprising "an elastic material covering (17) beneath (capable of being
positioned beneath) the location of said center axis of rotation of said
3 We note that there is no antecedent basis for "said center axis of rotation of
said proximal interphalangeal joint of said at least one finger stall" in claim
8. Claims. App. (emphasis added). Claim 1 references "a proximal
interphalangeal joint of at least one finger of said hand'' (Claims App.)
(emphasis added), but does not reference a proximal interphalangeal joint of
a finger stall. We understand claim 8 to be reciting an elastic material
covering beneath the location at which the proximal interphalangeal joint of
a human hand of the predetermined size would be disposed within the finger
stall if the glove were worn on such a human hand. Although the lack of
antecedent basis does not render the scope of claim 8 unclear, this
informality is deserving of correction.
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proximal interphalangeal joint of said at least one finger stall." Id.
Appellant contends that "[ n Jo support or teaching in Sato is cited for this
assertion, nor can [Appellant] find one." Appeal Br. 13. On the basis of this
asserted teaching in Sato regarding an elastic material, the Examiner
determines it would have been obvious to provide Rawlings's glove with an
elastic material "for the purpose of facilitating bending and flexing of the
fingers." Final Act. 14. (citing Sato 1:60-62). The Examiner explains that
"Rawlings as modified would result in an elastic material covering capable
of being beneath and intended to be beneath the center axis of rotation."
Ans. 5.
Sato discloses providing the back-side (dorsal) portions of the middle,
ring, and little finger stall sections corresponding to second joints or
knuckles of the hand with elliptic openings 6, 7, 8 covered with expansion
pieces 17 to facilitate bending and flexing of the middle finger, ring finger,
and little finger of the hand. Sato 1:58---62, 3:5-8, 4:9-11. Morris teaches
providing extensible material 14, such as LYCRA, a spandex material, on
the back or top side covering the dorsal surface of the hand. Morris 2:8-14.
The Examiner does not point to, and we do not discern, any teaching
in Sato or Morris of providing an elastic material beneath the center axis of
rotation of any of the joints of the finger stalls, nor does the Examiner
explain why it would have been obvious to place the elastic material in this
particular location. Notably, claim 8 positively recites "an elastic material
covering beneath the location for said center axis of rotation of said
proximal interphalangeal joint of said at least one finger stall," not an elastic
covering capable of being positioned at this location.
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For the above reasons, the Examiner does not establish a sustainable
case that the subject matter of claim 8 would have been obvious.
Accordingly, we do not sustain the rejection of claim 8 as unpatentable over
Rawlings, Wilkinson, Morris, and Sato.
Re} ection VI
In contesting the rejection of claim 14, Appellant notes that Rawlings
teaches a pad comprising felt, which, according to Appellant, is a moisture
repellent material, not a moisture absorbing material. Appeal Br. 13. Thus,
Appellant contends that Rawlings does not teach a moisture absorbing
material. This argument is unavailing because the Examiner relies on
Wilkinson, not Rawlings, for the moisture absorbing material. See Final
Act. 15-16.
Appellant also contends that Rawlings does not teach securing any
material proximal to and distal to the center axis of rotation of the proximal
interphalangeal joints of the index, long, ring, and small fingers. Appeal Br.
13. This argument essentially reiterates the argument regarding placement
of the moisture absorbing material asserted against the rejection of claim 1
as unpatentable over Rawlings and Wilkinson, and is unavailing for the
reasons discussed above.
Appellant also reiterates the arguments, discussed above in regard to
the rejection of claim 1, that Wilkinson does not disclose leaving the
proximal interphalangeal joint absent of moisture absorbing material, and, in
fact, teaches away from this limitation. Id. at 14. These arguments likewise
are unavailing with respect to claim 14, for the reasons discussed above.
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Appellant adds that Sato does not teach or suggest the use of moisture
absorbing material, much less at the specific locations called for in claim 14.
Id. This argument is not responsive to the rejection set forth by the
Examiner, which relies on Sato for its teachings regarding elastic material,
not for teaching moisture absorbing material. See Final Act. 17-18.
For the above reasons, Appellant does not apprise us of error in the
rejection of claim 14. Accordingly, we sustain the rejection of claim 14 as
unpatentable over Rawlings, Wilkinson, Morris, and Sato.
DECISION
The Examiner's decision rejecting claims 1, 3---6, 8, and 10-13 under
35 U.S.C. § 112, second paragraph, is AFFIRMED.
The Examiner's decision rejecting claims 1, 3---6, 8, and 10-14 under
35 U.S.C. § 101 and§ 33(a) of the America Invents Act is REVERSED.
The Examiner's decision rejecting claims 1, 3, 4, and 10-12 under
35 U.S.C. § 103(a) as being unpatentable over Rawlings and Wilkinson is
AFFIRMED.
The Examiner's decision rejecting claim 13 under 35 U.S.C. § 103(a)
as being unpatentable over Rawlings and Wilkinson is REVERSED.
The Examiner's decision rejecting claim 5 under 35 U.S.C. § 103(a)
as unpatentable over Rawlings, Wilkinson, and Morris is AFFIRMED.
The Examiner's decision rejecting claim 6 under 35 U.S.C. § 103(a)
as unpatentable over Rawlings, Wilkinson, Morris, and Sato is AFFIRMED.
The Examiner's decision rejecting claim 8 under 35 U.S.C. § 103(a)
as unpatentable over Rawlings, Wilkinson, Morris, and Sato is REVERSED.
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Application 11/555,304
The Examiner's decision rejecting claim 14 under 35 U.S.C. § 103(a)
as unpatentable over Rawlings, Wilkinson, Morris, and Sato 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)(l )(iv).
AFFIRMED
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