Ex Parte Merovitz

Board of Patent Appeals and Interferences

Jun 28, 2010

10458772 (B.P.A.I. Jun. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GERALD MEROVITZ
____________

Appeal 2010-000731
Application 10/458,772
Technology Center 1700
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Decided: June 28, 2010
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Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-3, 5-7, 9, 10, 12-
22, 24-26, 28, 29, 31-40, 42-45, 47, 48, and 50-61. We have jurisdiction
over the appeal pursuant to 35 U.S.C. § 6. Claim 1 is illustrative:
1. An elastic article comprising:

a layer of an elastic base material,

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a layer of an elastic adhesive positioned on at least one side of said
layer of elastic base material, wherein said elastic adhesive has an elongation
of about 400% to about 1400% of its original state; and

a plurality of flocked material applied onto a side of said layer of
elastic adhesive opposite said layer of elastic base material,

wherein said elastic article meets a Tensile Set of under 40% of the
original elongation when strained to at least 80% of an ultimate elongation
of said elastic article.

The Examiner relies upon the following references in the rejection of
the appealed claims:
Perlinski 5,403,884 Apr. 4, 1995
Tallmadge 6,924,000 B2 Aug. 2, 2005
Hutchinson FR 2448307 A Oct. 10, 1980
Capellini EP 1 072 712 A1 Jan. 31, 2001

Appellant's claimed invention is directed to a flocked elastic article,
such as a glove, comprising an elastic base material, an elastic adhesive
having the recited elongation, and flocked material adhered to the elastic
adhesive. The elastic article has the recited Tensile Set.
Appealed claims 1-3, 5-7, 9, 10, 12-22, 24-26, 28, 29, 31-40, 42-45,
47, 48, and 50-61 stand rejected under 35 U.S.C. § 112, second paragraph.
Claims 1, 5-7, 9, 10, 12, 13, 15-18, 20-22, 24-26, 28, 29, 31, 33-38, 40, 42-
45, 47, 48, 50, 51, 53-56, and 58-61 stand rejected under 35 U.S.C. § 102(b)
as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being
unpatentable over Perlinski. In addition, the appealed claims stand rejected
under 35 U.S.C. § 103(a) as follows:
(a) claims 19, 39, and 57 over Perlinski in view of Tallmadge and
Capellini,
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(b) claims 2 and 3 over Perlinski in view of Capellini and Hutchinson,
and
(c) claims 14, 32, and 52 over Perlinski.
We have thoroughly reviewed the respective positions advanced by
the Appellant and the Examiner. In so doing, we find ourselves in
agreement with Appellant that the Examiner's rejections are not sustainable.
We consider first the Examiner's rejection under § 112, second
paragraph. According to the Examiner, Appellant's argument and
Declaration state that "the claimed properties of elasticity and elongation are
attributable to the elastic base material being a latex rubber made by a latex
dipping process, and this statement indicates that the invention is different
from what is defined in the claims because said claims are not so limited to a
latex rubber made by a wet process, but rather are open to all rubbers and
processes" (Ans. 3). However, it is by now axiomatic that claims are to be
read not in a vacuum but in view of the supporting Specification as it would
be read by one of ordinary skill in the art. It is not a requirement of an
article claim to recite all the components and process conditions which give
rise to a claimed property. Also, it is not a requirement for a claim to
specifically exclude possible inoperative embodiments. In re Dinh-Nguyen,
492 F.2d 856, 858-59 (CCPA 1974); In re Kamal, 398 F.2d 867, 872 (CCPA
1968). In the present case, we are satisfied that the appealed claims
particularly point out and distinctly claim elastic articles and gloves
comprising an elastic base material, an elastic adhesive having the recited
elongation, and a flocked material adhered to the elastic adhesive such that
the articles possess the recited Tensile Set. The Examiner has not
established that one of ordinary skill in the art would not reasonably
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understand the metes and bounds of the claimed invention when such is read
in light of the specification and state of the prior art.
We now turn to the § 102/§103 rejection over Perlinski. Perlinski,
like Appellant, discloses a process of applying flocking material to an elastic
adhesive which is coated on an elastic substrate. Although the Examiner
appreciates that Perlinski fails to disclose the claimed properties of
elongation and Tensile Set, it is the Examiner's position that "it is reasonable
to presume that said properties are inherent to the Perlinski invention" since
Perlinski uses chemically and structurally similar materials (Ans. 4, last
para.).
To base a rejection on the doctrine of inherency, it is incumbent upon
the Examiner to demonstrate that there is sufficient correspondence between
the materials of the claimed and prior art products, and their methods of
preparation, to support the reasonable presumption that the prior art product
necessarily or inevitably possesses the recited characteristics or properties of
the claimed product. In the present case the Examiner has not shouldered
this burden. While it may be possible to select an elastic adhesive from the
broad disclosure of Perlinski that has the claimed elongation of about 400%
to about 1400%, the reference actually teaches against such a selection. As
urged by Appellant, Perlinski expressly teaches that "[a]s used herein the
term 'elastomer' includes a substance capable of being extended to twice its
own length at 68° C" (col. 2, ll. 59-61). We find no basis for the Examiner's
statement that "Perlinski's teaching is directed to a definition of the term
'elastomer' in general and not necessarily the elongation of the adhesive
itself" (Ans. 11, second para.). It must be emphasized that the reference
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states "[a]s used herein the term 'elastomer' includes . . . ". Manifestly, such
statement is not a general definition of the term "elastomer."
As basis for the § 103 rejection over Perlinski, the Examiner states
"the claimed Tensile Set and elongation properties would obviously have
been provided by the process disclosed by Perlinski" (Ans. 5, first para.).
However, this statement is tantamount to being a reiteration of the
Examiner's finding of inherency. The Examiner has failed to provide the
requisite analysis for why it would have been obvious to one of ordinary
skill in the art to make the claimed elastic article based on the Perlinski
disclosure. In the absence of such analysis the § 103 rejection constitutes
reversible error. The Examiner's additional citation of Tallmadge, Capellini,
and Hutchinson does not remedy this basic deficiency in the § 103 rejection.
In conclusion, based on the foregoing, we are constrained to reverse
the Examiner's rejections.

REVERSED

cam

CHARLES N.J. RUGGIERO, ESQ.
OHLANDT, GREELEY,
RUGGIERO & PERLE, LLP
ONE LANDMARK SQUARE, 10TH FLOOR
STAMFORD, CT 06901-2682