Ex Parte Mountfort

Patent Trial and Appeal Board

May 14, 2018

12851022 (P.T.A.B. May. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/851,022 08/05/2010
20988 7590 05/14/2018
NORTON ROSE FULBRIGHT CANADA LLP
1, Place Ville Marie
SUITE 2500
MONTREAL, QC H3B IRI
CANADA
FIRST NAMED INVENTOR
Anna-Maria MOUNTFORT
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.
55497871-lUS JR/as 1952
EXAMINER
HADEN, SALLY CLINE
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
05/14/2018 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 ANNA-MARIA MOUNTFORT
Appeal2017-008951
Application 12/851,022 1
Technology Center 3700
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner's decision rejecting claims 1-8, 10-12, 14--19, and 24--26. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to the Appellant, "[t]he real party in interest in this matter is
Anna-Maria MOUNTFORT." Br. 2.
Appeal2017-008951
Application 12/851,022
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1 and 14 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A pair of mittens adapted to be worn by a child and adapted
to protect at least the child's hands and wrists from adverse
winter conditions, each mitten of the pair of mittens comprising:
a hand-receiving mitten portion adapted to cover the
child's hand, the mitten portion being composed of a first, water-
resistant material; and
an elastically extendable cuff connected to the mitten
portion and being composed of a second, elastic material
different from the first material of the first, water-resistant
material, the elastically extendable cuff being fastened to an aft
end of the mitten portion at a transversely extending seam
interconnecting the mitten portion and the elastically extendable
cuff, the elastically extendable cuff having a circumferentially
uninterrupted tubular body and a double welt disposed at an aft
end of the elastically extendable cuff, the double welt
circumscribing an opening at the aft end of the elastically
extendable cuff through which the child's hand is adapted to be
received, the double welt having an outer circumferential surface
facing radially outwardly and an inner circumferential surface
facing radially inwardly, the elastically extendable cuff is both
longitudinally and circumferentially stretchable from an un-
stretched configuration to a stretched configuration.
Rejections
Claims 1-8, 10-12, and 25 stand rejected under (pre-AIA) 35 U.S.C.
§ I03(a) as unpatentable over Holmes (US 2009/0100561 Al, pub. Apr. 23,
2009), Kurtz (US 2010/0186139 Al, pub. July 29, 2010), and Coble
(US 4,843,653, iss. July 4, 1989).
Claims 14--19, 24, and 26 stand rejected under (pre-AIA) 35 U.S.C.
§ I03(a) as unpatentable over Holmes and Coble.
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Appeal2017-008951
Application 12/851,022
ANALYSIS
Independent Claim 1 and Dependent Claims 2---8, 10-12, and 25
The Examiner finds that the connection between Holmes' hand/palm
covering 3 5 and elongated sleeve 3 3 corresponds to claim 1 's requirement
that a seam interconnects a mitten portion and a cuff portion. Final Act. 2-3
( citing Holmes ,r 34, Fig. 5). Additionally, the Examiner determines that
Holmes' paragraph 34 use of the term "cut and sew" is "an obvious
disclosure of a seam." Final Act. 3.
The Appellant argues that the Examiner's finding is inadequately
supported because Holmes' disclosure, particularly at paragraph 34, does not
necessarily disclose a seam between Holmes' hand/palm covering 35 and
elongated sleeve 33. See Br. 9, 10 (citing Declaration of David Rushton
under 37 C.F.R. § 1.132 ,r 29 ("Rushton Deel.")). The Appellant points out
that the Holmes reference "does not use the words 'seam', 'joint', or their
equivalents." See Br. 9; Rushton Deel. ,r 30. And, although Holmes'
paragraph 34 uses the term "sew," this term may include seamless
connections between adjacent segments. See Br. 10 (citing Kurtz ,r,r 7, 9,
43).
In response, the Examiner determines that "Holmes disclosure of
'sew' with respect to the segments of the mitten is a sufficient disclosure of
a seam as defined by Appellant to include 'various means known in the art,
for example, knitting, sewing, etc."' Ans. 3 ( quoting Spec. ,r 15). Here, the
Examiner relies on the Appellant's Specification at paragraph 15 as evidence
that a seam is created by sewing. However, the Appellant's Specification
does not provide clarity as to the meaning of "sew" in Holmes paragraph 34.
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Appeal2017-008951
Application 12/851,022
Although we appreciate that sewing two adjacent segments together
may include a seam, such is not always the case. As explained by the
Appellant - and not contradicted by the Examiner - sewing two adjacent
segments together may include a seamless connection. As such, we
determine that the Examiner does not adequately support - with evidence
or technical reasoning - how Holmes, particularly paragraph 34, expressly,
implicitly, or inherently discloses a seam between hand/palm covering 35
and elongated sleeve 33. See also Manual of Patent Examining Procedure
("MPEP") § 2112, Requirements of Rejection Based on Inherency; Burden
of Proof (9th ed., rev. 8, Jan. 2018) ("The express, implicit, and inherent
disclosures of a prior art reference may be relied upon in the rejection of
claims under 35 U.S.C. [§§] 102 or 103."). Additionally, the Examiner does
not rely on the teachings of Kurtz or Coble to disclose a seam between
adjacent segments.
Thus, we do not sustain the Examiner's rejection of independent
claim 1, and its depending claims, as unpatentable over Holmes, Kurtz, and
Coble.
Independent Claim 14 and Dependent Claims 15-19, 24, and 26
Claim 14, similar to claim 1, requires a seam that interconnects a hand
or foot receiving portion and a cuff portion. See Br. 15-16 (Claims App.).
The Examiner's findings for claim 14 are similar to claim 1. See Final
Act. 12-13. As such, the Examiner's rejection relies on an inadequately
supported finding that Holmes discloses a seam between hand/palm covering
35 and elongated sleeve 33. Additionally, the Examiner does not rely on the
teachings of Coble to disclose a seam between adjacent segments. Thus, we
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Appeal2017-008951
Application 12/851,022
do not sustain the Examiner's rejection of independent claim 14, and its
depending claims, as unpatentable over Holmes and Coble.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-8, 10-12,
14--19, and 24--26.
REVERSED
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