Ex Parte McCrane

Patent Trial and Appeal Board

Dec 15, 2016

12842362 (P.T.A.B. Dec. 15, 2016)

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.
12/842,362 07/23/2010 David Patrick McCrane A-75297 3904
40461 7590 12/16/2016
Law Offices of Edward S. Wright
1259 El Camino Real, No. 400
Menlo Park, CA 94025
EXAMINER
HADEN, SALLY CLINE
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
12/16/2016 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 PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DAVID PATRICK MCCRANE1
__________

Appeal 2014-007846
Application 12/842,362
Technology Center 3700
__________

Before LEE L. STEPINA, AMANDA F. WIEKER, and
ARTHUR M. PESLAK, Administrative Patent Judges.

WIEKER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
David Patrick McCrane (“Appellant”) appeals under 35 U.S.C.
§ 134(a) from the Examiner’s non-final rejection (dated September 12,
2013) of claims 1–22 and 24–29.2 We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.

1 According to Appellant, the Real Party in Interest is McCrane, Inc., dba
Harbinger. Appeal Br. 1.
2 Claim 23 has been cancelled. Id.
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CLAIMED SUBJECT MATTER
The invention concerns “a glove for use by a person engaging in an
activity such as weightlifting and other activities in which a person grips an
object.” Spec. 1:3–5. Claims 1 and 22 are illustrative of the subject matter
on appeal, and recite:
1. A glove for gripping an object, comprising a palm
section, finger stalls extending from the palm section, and pads
on the palm section and the finger stalls of malleable,
substantially incompressible material that conforms to the
contours of the object and a hand wearing the glove and retains
its shape without hardening to provide a firm, solid grip between
the hand and the object.
22. A glove for gripping an object, comprising a palm
section, finger stalls extending from the palm section for
receiving lower and middle sections of the fingers of a hand
wearing the glove, and pads on the finger stalls, the pads having
rolled upper edges and being positioned to overlie upper parts
of the lower and middle finger sections when the hand wearing
the glove is grasping an object.
Appeal Br. 18, 21 (Claims App. A) (emphasis added). Independent claims
13, 18, 28, and 29 contain similar language to that emphasized above in
claim 1. Id. at 19–21 (Claims App. A).
REJECTIONS
The claims stand rejected as follows:
I. Claims 22 and 24–27 under 35 U.S.C. § 102(b) as anticipated
by Winkler (US 745,088, iss. Nov. 24, 1903).
II. Claims 1–6, 10, 12–15, 17–21, 28, and 29 under 35 U.S.C.
§ 103(a) as unpatentable over Rawlings (US 325,968, iss. Sept.
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8, 1885) and Gabriel (US 2007/0105977 A1, pub. May 10,
2007).
III. Claims 7–9 under 35 U.S.C. § 103(a) as unpatentable over
Rawlings and Johnson (US 2005/0210562 A1, pub. Sept. 29,
2005).
IV. Claims 1, 10, 11, 13, and 16 under 35 U.S.C. § 103(a) as
unpatentable over Bower (US 6,832,391 B1, iss. Dec. 21, 2004)
and Gabriel.
ANALYSIS
Rejection I – Anticipation by Winkler
With respect to independent claim 22, the Examiner finds that
Winkler discloses a glove comprising, inter alia, “pads (C) . . . positioned to
overlie upper parts of the lower and middle finger sections,” as shown in the
Examiner’s annotated figure, which is reproduced below:

Non-Final Act. 3–4. The annotated figure purports to show “the pad as it
would correspond to the fingers.” Id. The Examiner also states that “the
limitation of the pads positioned to overlie areas of the user’s hands is
considered an intended use recitation.” Id. at 3; see also Ans. 5.
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Appellant contends, inter alia, that Winkler discloses “reinforcing
flaps [C] that extend along the upper portions of the front and back pieces of
the finger sections [A] and across the tops of the finger sections . . . [which
are not] positioned to overlie upper parts of the lower and middle finger
sections.” Appeal Br. 15. Appellant also argues that the positioning of the
pads is not “intended use, but rather a definite structural limitation regarding
the positioning of the pads.” Reply Br. 13.
We are persuaded by Appellant’s argument. Winkler discloses a
glove having front and back finger pieces (A) with integral extension flaps
(C). Winkler, 1:34–40, Fig. 2. The front and back pieces (A) are fastened
together, via interposed fourchettes (B), and the extension flaps (C) are
folded back upon their respective finger pieces (A). Id. at 1:40–46, Figs. 4,
6. In this manner, the extension flaps provide reinforcement to the terminal
fingertip portions of the glove. Id. at 1:9–10, 1:37–40, Fig. 1. Therefore, a
preponderance of the evidence does not support the Examiner’s finding that
Winkler’s flaps (C) are positioned to overlie upper parts of the lower and
middle finger sections of a hand wearing the glove. Final Act. 3–4. To the
contrary, flaps (C) are positioned to overlie the terminal, distal, fingertip
parts of a hand wearing the glove. See id. at 1:9–10, 1:37–40, Fig. 1.
Further, we do not agree with the Examiner’s finding that the relevant
claim language merely recites an intended use. Non-Final Act. 3. Claim 22
defines the relative positioning of the pads with respect to finger sections of
a hand wearing the glove, and recites such positioning in a manner that
dictates the structure of the claimed glove. Appeal Br. 21 (Claims App. A).
This relative positioning is identified clearly in the Specification, which
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explains that the “lower” and “middle” sections of the fingers of a hand
wearing the glove are the first two finger sections proximal the palm (14,
16), and not the distal fingertip sections (17). Spec. 1:17–22, 4:27–32, Fig.
2, Fig. 3 (pads 49, 51 positioned to overlie the lower and middle sections).
Contrary to the Examiner’s finding, the relevant language does not describe
only how the glove is intended to be used.
Accordingly, we reverse the Examiner’s rejection of independent
claim 22, and claims 24–27, which depend therefrom.
Rejection II – Obviousness over Rawlings and Gabriel
Claims 1–6, 10, 12–15, 17, 28, and 29
With respect to independent claims 1, 13, 28, and 29, the Examiner
finds that Rawlings discloses a glove substantially as claimed, which
includes pads of India rubber. Non-Final Act. 5 (claims 1, 13); see also id.
at 8–10 (claims 28, 29). The Examiner finds that Rawlings does not disclose
expressly that the rubber is malleable, incompressible, conformable, and
shape retaining without hardening. Id. at 5. The Examiner relies on Gabriel
as disclosing “a therapy agent for a user’s hands . . . comprising a putty-like
material.” Id. The Examiner finds this material may be “PLACTICINE,”
and relies on Appellant’s disclosure to show that PLACTICINE is a
“malleable, substantially incompressible material that conforms to the
contours of the object and a hand wearing the glove and retains its shape
without hardening.” Id. (citing Spec. 4). The Examiner concludes it would
have been obvious to a person of ordinary skill in the art “to have substituted
the padding material of Rawlings (rubber) with the padding material of
Gabriel (plastic), since it is within the general skill of a worker in the art to
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select a known material on the basis of its suitability for the intended use as
a matter of obvious design choice.” Id. at 5–6 (citing In re Leshin, 125
USPQ 416 (CCPA 1960)).
Appellant contends, inter alia, that Rawlings and Gabriel are non-
analogous art because “Rawlings pertains to a glove for catching baseballs,
and [Gabriel] is concerned with a putty into which skin conditioning agents,
moisturizers, moisture barriers, and thermal therapy agents are incorporated,
with the putty acting as a delivery system for delivering the incorporated
agents to the surface of the skin.” Appeal Br. 6, 12–13; Reply Br. 1–2.
The Examiner counters that Rawlings and Gabriel are indeed
analogous because Rawlings discloses “an exercise glove” and Gabriel
discloses “an exercise putty that is wearable on the hands.” Ans. 2 (citing
Rawlings, 1:20–23; Gabriel ¶ 94). According to the Examiner, “both
references are used on body parts, and incorporating an exercise putty into
an exercise glove would have the obvious and desirable benefit of
simultaneously providing skin benefits to the wearer.” Id.
We are persuaded by Appellant’s argument. “In order to rely on a
reference as a basis for rejection of the applicant’s invention, the reference
must either be in the field of the applicant’s endeavor or, if not, then be
reasonably pertinent to the particular problem with which the inventor was
concerned.” In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). Rawlings
discloses a padded glove used by, e.g., baseball players, and is within
Appellant’s field of endeavor. See, e.g., Spec. 1:3–5 (describing the field as
“pertain[ing] generally to gloves”); Rawlings, 1:20–23; Ans. 2. However,
the Examiner has not established that Gabriel is in the same field or is
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reasonably pertinent to the problem with which Appellant was concerned.
Specifically, Gabriel discloses a “kneadable putty-like material” used to
deliver treatment agents to the skin, e.g., skin conditioners, medicines, or
antimicrobials, in a manner that does not leave the administrator’s hands
feeling slippery or oily. Gabriel, Abstract, ¶¶ 6, 39. Although Gabriel uses
the phrase “exercise putty (id. ¶ 94),” Gabriel does not suggest use of the
putty with a glove (e.g., Appellant’s field) and does not suggest use of the
putty to provide a continuous gripping surface (e.g., the problem with which
Appellant was concerned). Accordingly, Gabriel’s disclosure of a putty
used to deliver skin treatment materials is not analogous to Appellant’s
invention.
The Examiner’s reasoning that incorporating Gabriel’s putty into
Rawlings’ glove “would have the obvious and desirable benefit of
simultaneously providing skin benefits to the wearer,” (Ans. 2) is
unpersuasive because this does not address whether Gabriel is analogous art.
This reasoning is flawed additionally because, if Gabriel’s material is
substituted for Rawlings’s India rubber, as the Examiner proposes (Non-
Final Act. 5–6), Gabriel’s material would not be in contact with the wearer’s
skin, but would instead be placed between Rawlings’ layers of felt. See
Rawlings, 1:40–43, Fig. 4. As such, the Examiner has not established that
any skin benefit would be imparted to the wearer, through the layers of felt.
Accordingly, we reverse the Examiner’s rejection of independent
claims 1, 13, 28, and 29, and claims 2–6, 10, 12, 14, 15, and 17, which
depend therefrom.
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Claims 18–21
With respect to independent claim 18, which requires “a cohesive,
incompressible, non-oozing material that does not require a liquid-tight
bladder for containment and is sufficiently malleable to conform to the
contours of the object and a hand wearing the glove,” (Appeal Br. 20
(Claims App. A)), the Examiner finds that “Rawlings discloses the invention
as claimed, as shown in the rejection of claims 1 and 13 above, and further
including the pads are India rubber, which is considered to be a cohesive,
non-oozing material that does not require a liquid-tight bladder for
containment.” Non-Final Act. 7 (citing Rawlings, 1:42). The Examiner also
finds that Appellant has not defined specially the claim language
“sufficiently malleable,” and “[t]he India rubber disclosed by Rawlings will
conform to the contours of the object and the hand to at least some degree,
which is enough to read on the broad claim.” Ans. 4.
Appellant contends that Rawlings’s India rubber is not malleable,
incompressible, and conforming, as claimed, but rather is disclosed as being
rigid. Appeal Br. 11. Appellant also contends that India rubber compresses
and stretches and is not sufficiently malleable to conform to the contours of
an object or a hand. Id. at 11–12.
It is unclear whether the Examiner relies on Rawlings alone, or the
combination of Rawlings and Gabriel, in concluding that claim 18 is
unpatentable. In either case, however, we do not affirm the Examiner’s
rejection of claim 18.
The Examiner states that “Rawlings discloses the invention as
claimed, as shown in the rejection of claims 1 and 13 above,” and relies on
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Rawlings’s India rubber to satisfy claim 18. Non-Final Act 7. To the extent
the Examiner relies solely on Rawlings, without Gabriel, a preponderance of
the evidence does not support the Examiner’s implicit findings that
Rawlings’s India rubber is “incompressible” and “sufficiently malleable to
conform to the contours of the object and a hand.” Indeed, in rejecting
claims 1 and 13, the Examiner found the opposite, stating that “Rawlings
does not expressly disclose the India rubber possesses the properties of
malleability, incompressibility, [and] conformability.” Id. at 5. Although
the Examiner finds, in the Answer, that India rubber is “sufficiently
malleable,” the Examiner provides no persuasive evidence or reasoning to
support this finding. Rawlings, which discloses that India rubber possesses
“a certain amount of rigidity” that is lacking in felt and is “to a degree
inflexible,” does not support the Examiner’s findings. Rawlings, 1:40–43,
2:64–66.
Alternatively, to the extent the Examiner’s incorporation of the
rejection of claims 1 and 13 indicates the Examiner’s reliance on Rawlings
and Gabriel together to render claim 18 obvious, we do not sustain the
rejection on that basis. With respect to claims 1 and 13, the Examiner
substituted a PLACTICINE material as taught by Gabriel for the India
rubber disclosed by Rawlings. Non-Final Act 5–6 (concluding it would
have been obvious “to have substituted the padding material of Rawlings
(rubber) with the padding material of Gabriel (plastic)”). Accordingly, the
Examiner’s reliance on the India rubber disclosed by Rawlings is misplaced
because, in the combination proposed by the Examiner, that material has
been replaced with PLACTICINE. Id.
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Accordingly, we reverse the Examiner’s rejection of independent
claim 18, and claims 19–21, which depend therefrom.
Rejection III – Obviousness over Rawlings and Johnson
The Examiner rejects claims 7–9, which depend from claim 1, as
unpatentable over Rawlings and Johnson. Non-Final Act. 10–11. The
Examiner relies on Johnson’s disclosure of a glove having a partially closed
pocket with a curled upper edge. Id. at 10. The Examiner’s reliance on
Johnson does not cure the defects in the rejection of independent claim 1, as
discussed above, because Johnson does not disclose a material that is
malleable, incompressible, conformable, and shape retaining without
hardening.
Accordingly, we reverse the Examiner’s rejection of dependent claims
7–9 for the same reasons discussed above with respect to independent claim
1, from which claims 7–9 depend.
Rejection IV – Obviousness over Bower and Gabriel
With respect to independent claims 1 and 13, the Examiner finds that
Bower discloses a glove substantially as claimed, which includes pads of
closed cell foam. Non-Final Act. 11. The Examiner finds that Bower does
not disclose expressly that the foam is malleable, incompressible,
conformable, and shape retaining without hardening. Id. at 12. The
Examiner relies on Gabriel, for the same teaching discussed above with
respect to Rejection II. Id. The Examiner concludes it would have been
obvious to a person of ordinary skill in the art “to have substituted the
padding material of Bower (foam) with the padding material of Gabriel
(plastic), since it is within the general skill of a worker in the art to select a
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known material on the basis of its suitability for the intended use as a matter
of obvious design choice.” Id. (citing In re Leshin, 125 USPQ 416 (CCPA
1960)).
Appellant presents similar arguments as discussed above with respect
to Rejection II. Appeal Br. 13.
For the same reasons discussed above with respect to Rejection II, we
reverse the Examiner’s rejection of independent claims 1 and 13 because the
Examiner has not established that Gabriel is analogous art. We also reverse
the rejections of claims 10 and 11, which depend from claim 1, and claim
16, which depends from claim 13.
DECISION
The Examiner’s rejections of claims 1–22 and 24–29 are
REVERSED.

REVERSED