Ex Parte Kleinert

Patent Trial and Appeal Board

May 29, 2018

11931036 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111931,036 10/31/2007
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.
ZM339/10014 1674
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
Appeal2017-004887
Application 11/931,036
Technology Center 3700
Before JENNIFERD. 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 1-17. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
1 The Appeal Brief identifies Hillerich & Brads by Co. as the real party in
interest. Appeal Br. 3.
Appeal2017-004887
Application 11/931,036
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A glove constructed to fit a hand of pre-determined size
for protecting selected portions thereof comprising:
a palmar side panel and a dorsal side panel secured along
each panel's outer periphery with an opening therein to receive
said hand, said dorsal side panel being sized to cover the back of
said 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 said hand;
said palmar side panel including a shock absorbing pad a
preselected distance below and between the center axes of
rotation of adjacent joints and centered between the boney
prominences of at least one finger phalanx or said thumb, the
center axes of rotation of said adjacent joints and said boney
prominences of said adjacent joints being absent of padding.
REJECTIONS
I. Claims 1-17 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.
II. Claims 1-17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rawlings (US 325,968, iss. Sept. 8, 1885).
DISCUSSION
Rejection I
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
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the claims as being directed to or encompassing a human organism, which is
patent-ineligible subject matter. See Final Act. 2-3; Ans. 2-3. The
Examiner notes that some limitations in the claims, such as "'to fit a hand,'
'for protecting selected portions thereof, 'to receive said hand,' 'sized to
cover the back of said hand,' [and] 'for receiving a thumb and fingers of said
hand,"' are drafted properly because they are "functional recitations that do
not rely on human hand anatomy," but other recitations are improper and
form the basis for the rejection under 35 U.S.C. § 101 and Section 33(a) of
the Leahy-Smith America Invents Act. Ans. 2.
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
shock absorbing pad positioned on the palmar side panel so as (or adapted)2
to be disposed a preselected distance below and between the center axes of
rotation of adjacent joints and centered between the boney prominences of a
finger phalanx or thumb, the center axes of rotation and boney prominences
being absent of padding, when the glove is worn on a hand of the
predetermined size, claim 1 recites the shock absorbing pad actually in a
particular position relative to portions of the hand. A pad cannot be
2 Notably, the Examiner suggested amending the problematic recitations 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. 3.
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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disposed in a particular position relative to portions of the hand without the
presence of the hand. There are similar limitations in claim 17. 3 Similarly,
claim 2 positively recites the "shock absorbing pad overlying the metacarpal
of said thumb," rather than reciting that the shock absorbing panel is
positioned on said palmar side panel so as to overly the metacarpal of said
thumb when the glove is worn on a hand of the predetermined size. There
are similar limitations in other dependent claims that are drafted such that, if
read in a vacuum, without being considered in the context of other language
in the claims, appear to require the presence of the hand.
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. AWHCorp., 415 F.3d 1303, 1314 (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 17 recite "[a] glove constructed to fit a
hand of pre-determined size for protecting selected portions thereof."
3 The terminology "said adjacent joints" in claim 17 lacks antecedent basis
in the claim. We understand "said boney protuberances of said adjacent
joints" to refer back to "the boney protuberances of at least one finger
phalanx or said thumb," and, thus, the lack of antecedent basis does not
appear to render the scope of claim 17 unclear. However, this informality is
deserving of correction.
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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
each of claims 1 and 1 7 recites palmer side and dorsal side panels with an
opening "to receive said hand" and providing a thumb stall and finger stalls
''for receiving a thumb and fingers of said hand," with the dorsal side panel
"sized to cover the back of said hand." Id. Consistent with the preambles of
claims 1 and 1 7, 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 17, and the "overlying" recitations in the
dependent claims, 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 shock absorbing pad
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 shock absorbing pad is 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
rejection of claims 1-17 under 35 U.S.C. § 101 and section 33(a) of the
Leahy-Smith America Invents Act.
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Rejection II
Independent claims 1 and 1 7 recite a glove comprising, in pertinent
part, a palmar side panel having at least one shock absorbing pad positioned
thereon so as to be centered between the boney prominences of at least one
finger phalanx or the thumb of a hand, which the glove is constructed to fit,
such that the boney prominences of the at least one finger phalanx or thumb
are absent of padding when the glove is worn on such a hand. Claims App.
As explained in the paragraph bridging pages 4 and 5 of Appellant's
Specification, placing the pads between the boney prominences, but not on
the boney prominences themselves, helps "to unload the boney prominences
of the hand in relationship to the required object to be held." Spec. 4:24--
5:4. Such unloading of these boney areas "leads to more even distribution of
forces across the digit." Id. at 5: 11-12. Decreased areas of concentrated
pressure, particularly over the boney prominences, results in less discomfort
to the wearer, thereby leading "to better grip and performance of the specific
task in question." Id. at 5:13-16.
The Examiner finds that Rawlings discloses a glove comprising a
palmar side panel having such a shock absorbing pad. Final Act. 4--5.
According to the Examiner,
The recitation of the pad being centered between the
boney prominences and the center axes of rotation being absent
of padding are intended use recitations that have not imparted
structure to the claimed invention. These recitations rely on the
user to select a glove of the claimed size and to wear the glove
in the manner intended by the claimed invention.
Final Act. 5
The Examiner's explanation appears to overlook that claims 1 and 1 7
recite that the honey prominences are absent of padding. Claims App.
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Moreover, the limitations in the last clause of claim 1 and claim 1 7 are
structural limitations, in that they require the glove and shock absorbing pad
to be sized and proportioned to provide placement of the shock absorbing
pad in a particular location in the finger or thumb stall, such that it will be
centered between the boney prominences of a finger phalanx or thumb, and
not covering the boney prominences, when the glove is worn on a hand for
which the glove is properly sized.
The Examiner states that Rawlings satisfies the aforementioned
limitations because "the Rawlings glove may be placed on a wearer's hand
such that the pads align with the wearer's hand anatomy in the manner
claimed." Final Act. 5. To the extent that the Examiner's position is that the
aforementioned limitations require nothing more than that a person having
any size hand, including a size for which the glove is not intended, be able to
place a digit into a finger or thumb stall so that a pad in the glove is centered
between the boney prominences of a finger or thumb phalanx, this position
is predicated on an improper construction of claims 1 and 1 7, for the reasons
discussed above.
The Examiner finds that "Rawlings does not expressly disclose a
glove constructed to fit a hand of predetermined size for protecting selected
portions thereof," but that "it is known in the art to provide gloves that are
sized." Id. The Examiner determines that it would have been obvious "to
have provided the Rawlings glove in different sizes in order for the glove
pads to contact the corresponding hand pad (col 1 line 36-38) and to leave
the joints free of padding (col 2 line 67-69)." Id.
The passages of Rawlings cited by the Examiner in support of this
proposed modification disclose that "[ t ]he pads are made separate, so as to
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Application 11/931,036
cover the natural pads upon the palm of the hand, and in some cases of the
thumb or thumb and fingers" (11. 36-39) and 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" (11. 66-69). As Appellant
points out, "a 'line or space of separation' as set forth in Rawlings ... is not
equivalent to the limitation that the boney prominences of the joints are
absent padding, nor a teaching that the pads are centered between the boney
prominences." Appeal Br. 9.
In addition to the aforementioned passages cited by the Examiner,
Rawlings also discloses, with reference to Figure 5, that "there may be an
additional thumb-pad, 7, and finger-pads at 8, between the joints."
Rawlings, 11. 80-82. Although Rawlings reasonably conveys that the pads
are separated in the proximity of where an axis of rotation of a joint of a
finger or thumb of a hand on which the glove is worn would be located,
Rawlings does not mention the boney prominences of any of the bones of
the hand or digits, much less give any indication that the boney prominences
should be free of any padding. The only concern expressed by Rawlings for
providing spaces between the pads is to provide flexibility to the glove. Id.,
11. 66-69. Unlike Appellant, Rawlings is not concerned with unloading the
boney prominences, and the Examiner does not articulate any reason why,
absent the disclosure of Appellant, a person having ordinary skill in the art
would have been prompted to modify Rawlings by positioning the pad to be
centered between the honey prominences of a finger phalanx or thumb and
to leave the boney prominences absent of any padding.
We appreciate the Examiner's finding that Rawlings teaches the use
of pads for gloves that "leave the joints free of padding." Final Act. 5. In
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this regard, Rawlings teaches placement of finger pads "between the joints"
(Rawlings 1: 81-82) and "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. at 1:66-69). This teaching of Rawlings provides a rational
underpinning for the Examiner's reasoning that it would have been obvious
to modify Rawlings "to leave the joints free of padding." Final Act. 5.
However, independent claims 1 and 17 require a shock absorbing pad
to be "centered between the boney prominences of at least one finger
phalanx or said thumb" with "said boney prominences of said adjacent joints
being absent of padding." Appeal Br. Claims App. The Specification
discloses joints 36, 47-50, and 56-59 of thumb 64 and fingers 65---68 as
areas between the boney prominences of adjacent phalanxes of a thumb or
finger. See Spec. 32:23-33: 17, Fig. 16. Boney prominences of each
phalanx extend on either side of the thumb and finger joints. Therefore,
while Rawlings's teaching of spacing pads away from thumb and finger
joints may result in an absence of padding over portions ofboney
prominences that are adjacent to each joint, Rawlings does not provide
sufficient evidence that the spaces between pads at each thumb and finger
joint necessarily result in a complete absence of padding over the entire
boney prominence located at each joint as claimed. Figure 16 of Appellant's
disclosure illustrates this configuration in which pads 611, 615, 625---629,
636-639, and 646-649 are placed between joints and the boney portions of
phalanxes so that no portion of any pad covers or is over any portion of any
boney prominence.
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Accordingly, we do not sustain the rejection of independent claims 1
and 17, or claims 2-16, which depend from claim 1, as unpatentable over
Rawlings.
DECISION
The Examiner's decision rejecting claims 1-17 is reversed.
REVERSED
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