Ex Parte PolesukDownload PDFPatent Trial and Appeal BoardJun 18, 201310331296 (P.T.A.B. Jun. 18, 2013) Copy Citation 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. 10/331,296 12/30/2002 Eric Polesuk P/77-3 1411 7590 06/19/2013 Philip M. Weiss WEISS & WEISS 300 Old Country Road Suite 251 Mineola, NY 11501 EXAMINER MORAN, KATHERINE M ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 06/19/2013 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 ERIC POLESUK ________________ Appeal 2011-002028 Application 10/331,296 Technology Center 3700 ________________ Before MEREDITH C. PETRAVICK, NINA L. MEDLOCK, and JAMES A. TARTAL, Administrative Patent Judges. TARTAL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002028 Application 10/331,296 2 STATEMENT OF THE CASE1 Eric Polesuk (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-3, 5-9, and 13-16. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). Appellant’s claimed invention relates to a dark, disposable glove engineered for professional haircoloring. Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A non-latex professional Beauty Industry Glove consisting of: a black glove which hides haircoloring stains; said glove being approximately 5 mls or less in thickness; said glove being disposable after a single use; said glove being worn during any beauty salon service. The Examiner relies upon the following evidence: Reimers US 4,845,780 Jul. 11, 1989 Polesuk US 2004/0123369 A1 Jul. 1, 2004 Claims 1-3, 5-9, and 13-16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Reimers and Appellant’s Specification (US 2004/0123369 A1). FINDINGS OF FACT We find that the findings of fact which appear in the Analysis below are supported by at least a preponderance of the evidence. Ethicon, Inc. v. 1 Our decision will make reference to Appellant’s Appeal Brief (“App. Br.,” filed May 19, 2010), and the Examiner’s Answer (“Ans.,” mailed Aug. 16, 2010). Appeal 2011-002028 Application 10/331,296 3 Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). ANALYSIS Appellant argues claims 1-3, 5-9, and 13-16 as a group (App. Br. 9- 13). We select claim 1 as the representative claim for this group, and the remaining claims 2, 3, 5-9, and 13-16 each stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). We find not persuasive Appellant’s argument that because the invention claimed is recited as “consisting of” a glove, it is distinguished over the glove disclosed by Reimers merely because Reimers’ glove is described as including a cuff securing feature. We agree with the Examiner that Reimers discloses a unitary glove structure, the cuff securing feature of which is not a separate element. Appellant does not suggest that one of ordinary skill in the art would fail to recognize Reimers’ glove as “a glove.” Moreover, Appellant’s recitation of characteristics of the glove in claims 1 and 16, such as the color, thickness, and intended use, provide no structural elements to distinguish the claimed invention over the prior art. We therefore conclude that Appellant has not shown that the claimed glove is structurally distinguishable over the glove disclosed by Reimers, and therefore has not overcome the Examiner’s obviousness determination merely by using “consisting of” in the claim. We also note that Georgia- Pacific Corp. v. U.S. Gypsum Co., the case Appellant cites, does not suggest a contrary outcome. 195 F.3d 1322, 1327-28 (1999) (holding that a claim reciting “consisting of” a series of elements was “merely an obvious variation” of a broader claim reciting “comprised of” the same elements). Appeal 2011-002028 Application 10/331,296 4 We also find not persuasive Appellant’s argument that claim 1 may be distinguished over the prior art because it requires the glove to be black. Contrary to Appellant’s argument, Appellant’s Specification (para [0011]) states that in the late 90’s black gloves became more popular in salons because they were more efficient at hiding all haircoloring stains. Likewise, Appellant cannot overcome the Examiner’s rejection by merely asserting that the gloves, as claimed, are disposable. The characterization of the glove as “disposable” does not suffice to distinguish the claimed invention from what would have been obvious in view of Reimers. Even a reusable glove is nevertheless capable of being “disposable after a single use,” as claimed. CONCLUSIONS OF LAW We conclude that Appellant has not overcome the Examiner’s rejection of claims 1-3, 5-9, and 13-16 under 35 U.S.C. § 103(a) as unpatentable over Reimers and Appellant’s Specification (US 2004/0123369 A1). DECISION We AFFIRM the decision of the Examiner to reject claims 1-3, 5-9, and 13-16. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED mls Copy with citationCopy as parenthetical citation