Ex Parte Pando

Board of Patent Appeals and Interferences

Jan 31, 2012

10970063 (B.P.A.I. Jan. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BRENDA PANDO
__________

Appeal 2009-001143
Application 10/970,063
Technology Center 3700
__________

Before TONI R. SCHEINER, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-8. We have jurisdiction under 35 U.S.C.
§ 6(b).
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STATEMENT OF THE CASE
Claims 1 and 8 are the independent claims on appeal, and read as
follows:
1. A glove having:
a hand receiving opening at an end of the glove that leads to a hand-
receiving cavity with mutually facing first and second inner surfaces; and
a sealing mechanism that substantially seals the hand receiving
opening while the glove is disposed in a configuration such that the inner
surfaces are still facing one another, and while the hand is not disposed
within the glove.

8. A glove for receiving a hand, comprising:
a collar area through which the hand can be inserted;
a body cavity that receives the hand; and
first and second areas on opposing inner sides of the collar area,
which mate to seal the cavity sufficiently to prevent entry of insects into the
body while the hand is not disposed within the glove.

The following grounds of rejection are before us for review:
I. Claims 1 and 5-7 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Peters, Jr.1
II. Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Silverberg.2
III. Claims 1, 3, and 5-7 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Schreiter.3

1 Peters, Jr. , US 6,539,549 B1, issued Apr. 1, 2003.
2 Silverberg, US 5,063,919, issued Nov. 12, 1991.
3 Schreiter et al., US 6,402,375 B1, issued June 11, 2002.
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IV. Claim 8 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Vistins.4
V. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being rendered
obvious by the combination of Vistins and Couri.5
We reverse the above rejections.

ANALYSIS
Appellant argues as to the anticipation rejection over Peters, Jr. that:
In this case, claim 1 teaches a glove that expressly
requires “ . . . a sealing mechanism that substantially seals the
hand receiving opening . . . .” But Peters seal never seals the
opening (see e.g. Figure 3). Peters discloses a mitten/glove
(110) having a protective sleeve/gauntlet (112) with a re-
sealable distal edge (114) (e.g., sealing mechanism). (See e.g.,
Peters spec. CS/L49-67, and Figures 2 and 3). Peters glove
allows a user to apply insect repellant or perhaps pick up dog
feces, and then seal the soiled outer surfaces of the glove. To
do that, the sleeve is pulled back up over the glove, and then
closed using a zip-lock type sealing mechanism. In the process,
the sleeve is turned inside-out.

(App. Br. 8.) Thus, Appellant asserts, “the seal is clearly intended to work
when the sleeve is in the inside-out configuration, in which case the hand
opening into the glove is still open” (id.).
While the Examiner asserts that “Peters’ hand receiving opening is
defined by the gauntlet portion 112,113 and leads to the hand receiving
cavity with mutually facing first and second inner surfaces” (Ans. 6), as

4 Vistins, US 4,884,300, issued Dec. 5, 1989.
5 Couri, US 4,523,586, issued June 18, 1985.
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noted by Appellant, Peters, Jr., teaches that the “protective sleeve/gauntlet
(112,113) may be extended to cover the glove/mitten (111), permitting the
distal edge (114) to be sealed to substantially encapsulate the absorbent outer
surface of the glove/mitten” (Peters, Jr., col. 5, ll. 64-67).
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In
general, a limitation is inherent if it is the “natural result flowing from” the
explicit disclosure of the prior art. Schering Corp. v. Geneva Pharms., 339
F.3d 1373, 1379 (Fed. Cir. 2003). “Inherency . . . may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” MEHL/Biophile Int'l.
Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999)( quoting In re
Oelrich, 666 F.2d 578, 581 (CCPA 1981)).
In this case, the Examiner has provided no evidence or scientific
reasoning to show that the fastener used by Peters, Jr. can work both to
protect and seal the outer surface of the glove, as well as to substantially seal
“the hand receiving opening while the glove is disposed in a configuration
such that the inner surfaces are still facing one another, and while the hand is
not disposed within the glove” as required by claim 1. We are thus
compelled to reverse the rejection over Peters, Jr.
With respect to the anticipation rejection over Silverberg, Appellant
argues that “Silverberg teaches a protective sleeve that closes about a
person’s arm,” and thus, the glove of Silverberg “only makes sense when the
hand is disposed within the glove” (App. Br. 9-10). Appellant further asserts
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that the instant Specification excludes “from the definition of ‘substantially
seals’ gloves ‘that utilize elastic or draw string around the hand entry
portion.’ Such gloves are ‘not considered to have a sealing mechanism
because they do not substantially seal the hand receiving opening.’” (App.
Br. 10 (quoting Spec. p. 2, l. 26-p. 3, l. 10)).
According to the Examiner, “the sealing mechanism 36 is an elastic
band and as such could be pulled tightly to substantially seal the hand
receiving opening” (Ans. 6). But as noted by Appellant, the Specification
clearly states that “gloves that utilize elastic or draw string around the hand
entry portion are not considered to have a sealing mechanism because they
do not substantially seal the hand receiving opening” (Spec. 3). Thus, the
definition of “substantially seals” as provided by the Specification clearly
excludes the glove of Silverberg. See, e.g., In re Bigio, 381 F.3d 1320, 1325
(Fed Cir. 2004) (noting that “[a]bsent claim language carrying a narrow
meaning, the PTO should only limit the claim based on the specification . . .
when . . . [it] expressly disclaims the broader definition.”). We are thus
compelled to reverse the anticipation rejection over Silverberg.
Appellant argues as to the anticipation rejection over Schreiter that
Schreiter does not teach a glove, and thus, cannot be used as a basis for an
anticipation rejection (App. Br. 10). Specifically, Appellant asserts:
The American Heritage Dictionary defines a glove to be, “A
fitted covering for the hand with a separate sheath for each
finger and the thumb.” (The American Heritage® Dictionary of
the English Language, Fourth Edition. Houghton Mifflin
Company, 2004. http://dictionary.reference.com/browse/glove
(accessed, September 21,2007)). A plastic bag is clearly not a
glove and thus fails to satisfy the express limitation of claim 1,
“a hand receiving opening at an end of the glove.”
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(Id. at 10-11.)
The Examiner responds that “claims 1, 3, and 5-7 does [sic] not set
forth a glove having separate sheaths for each finger and the thumb” (Ans.
6). We recognize that during prosecution before the Office, claims are to be
given their broadest reasonable interpretation consistent with the
Specification as it would be interpreted by one of ordinary skill in the art.
In re American Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Claim language, however, “should not [be] treated as
meaningless.” Bicon, Inc. v. Straumann Co., 441 F.3d 945, 951 (Fed. Cir.
2006). The Examiner is essentially reading the term glove, which the
ordinary artisan in view of the Specification would interpret as requiring
separate sheaths for each finger and the thumb, out of the claim, which we
decline to do. We are thus compelled to reverse the anticipation rejection
over Schreiter.
As to the anticipation rejection over Vistins, Appellant argues:
Vistins discloses a disposable glove (20) with an adhesive
means (35) on the cuff (32) of the glove, which allows the cuff
of the glove to be more tightly secured to the wrist of the
wearer. (See, e.g., spec. C4/L30-65). The adhesive means of
Vistins is not intended to sufficiently seal the cavity as
currently claimed, but merely to provide a “snug fit.” (C4/L66-
68). Indeed, there is no indication anywhere in the Vistins
specification that the strip would be large enough to sufficiently
seal the opening of the glove, and indeed, such an interpretation
would be antagonistic to a fair reading of the Specification.

(App. Br. 11.)

The Examiner responds:
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Vistins’ glove has adhesive means which is capable of attaching
to opposing sides of the collar area such that the cavity [is
sealed] sufficiently to prevent entry of insects into the body
while the hand is not disposed within the glove. It is noted that
insects come in various sizes and Vistins’ sealed collar area
would certainly prevent entry of larger insects such as
tarantulas or scorpions. Therefore, Vistins meets claim 8.

(Ans. 7.)
We conclude that Appellant has the better position. As taught by the
Specification, the sealing mechanism “can prevent entry of a typical
household size spider, scorpion, and cockroach” (Spec. 3). Vistins is drawn
to a glove that has a “structure for removably securing the cuff portion . . .
on the hand of the wearer during use without the glove being overly tight or
difficult to don[ ] properly” (Vistins, col. 2, ll. 62-65). Vistins thus teaches
that “[a]dhesive means is provided on a portion of the cuff for allowing the
portion of the cuff to be removably secured to other portions of the cuff” (id.
at col. 3, ll. 17-19). Thus, the Vistins reference is drawn to a glove in which
the cavity is sealed sufficiently to secure to a person’s wrist. The Examiner
has not provided any scientific reasoning or evidence that any remaining
unsealed portion would be sufficiently small to prevent the entry of insects
such as cockroaches, or of common household spiders. We are thus
compelled to reverse the anticipation rejection over Vistins.
As to the obviousness rejection over the combination of Vistins and
Couri, as the Examiner did not explain how Couri overcomes the above
deficiencies of Vistins (see Ans. 4-5), we are compelled to reverse that
rejection as well.

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SUMMARY
The following rejections are reversed:
The rejection of claims 1 and 5-7 under 35 U.S.C. § 102(b) as being
anticipated by Peters, Jr.;
The rejection of claims 1 and 2 under 35 U.S.C. § 102(b) as being
anticipated by Silverberg;
The rejection of claims 1, 3, and 5-7 under 35 U.S.C. § 102(b) as
being anticipated by Schreiter;
The rejection of claim 8 under 35 U.S.C. § 102(b) as being anticipated
by Vistins; and
The rejection of claim 4 under 35 U.S.C. § 103(a) as being rendered
obvious by the combination of Vistins and Couri.

REVERSED

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