Ex Parte Snider-Tornetta et alDownload PDFPatent Trial and Appeal BoardFeb 24, 201613196473 (P.T.A.B. Feb. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/196,473 08/02/2011 23446 7590 02/26/2016 MCANDREWS HELD & MALLOY, LTD 500 WEST MADISON STREET SUITE 3400 CHICAGO, IL 60661 FIRST NAMED INVENTOR Jennifer Snider-Tornetta 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. 24009US01 3899 EXAMINER COLLIER, JAMESON D ART UNIT PAPER NUMBER 3765 NOTIFICATION DATE DELIVERY MODE 02/26/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): mhmpto@mcandrews-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JENNIFER SNIDER-TORNETT A and CHARLESFRANKTORNETTA Appeal2014-000817 Application 13/196,473 Technology Center 3700 Before CHARLES N. GREENHUT, LYNNE H. BROWNE, and ERIC C. JESCHKE, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON i\.PPEi\L STATEMENT OF THE CASE Jennifer Snider-Tometta and Charles Frank Tometta (Appellants) appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to a pedicure protector for use before, during, and after a pedicure and a method of using the same. Claim 1, reproduced below, is illustrative of the claimed subject matter: Appeal2014-000817 Application 13/196,4 73 1. An apparatus, comprising: a pedicure protector, the pedicure protector comprising: a main body sized to extend from a ball of a foot to just beyond toes of the foot, the main body comprising a plurality of toe loop separators for wrapping around individual toes to align, separate and inhibit vertical or horizontal movement of the toes; and an upper surface that is repeatedly detachable and attachable to the main body, wherein the upper surface comprises at least one ventilation hole. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Kelly Palm Allen Condie us 4,439,935 US 6,704,941 Bl US 2007/0011915 Al US 2007 /0068045 Al REJECTIONS 1 Apr. 3, 1984 Mar. 16, 2004 Jan. 18,2007 Mar. 29, 2007 I. Claims 1, 2, 9-11, 15-17, and 20 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Condie. II. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Condie. III. Claims 3-8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Condie and Kelly. IV. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Condie and Allen. 1 The Examiner has withdrawn the rejection of claims 1-14 under 35 U.S.C. § 112, second paragraph, in view of the amendment after final filed February 6, 2013. See Adv. Act. (dated Feb. 21, 2013). 2 Appeal2014-000817 Application 13/196,4 73 V. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Condie and Palm. DISCUSSION Rejection I The Examiner finds that Condie discloses each and every limitation of claim 1. In particular, the Examiner finds that Condie discloses "a main body [ 101] sized to extend from a ball to just beyond toes of a foot." Final Act. 3. Appellants argue that: as illustrated in Condie' s Figure 2A, for example, Condie' s main body 101 extends from just beyond a heel of a foot to partially over the beginning of the toes, which is different than "a main body sized to extend from a ball of a foot to just beyond toes of the foot," as set forth in Appellant's independent claim 1 (and similarly with regard to Appellant's independent claim 15). Appeal Br. 12 (emphasis omitted). Responding to this argument, the Examiner determines that "Appellant has not positively recited structure as it relates to the 'main body' (i.e. the structure of the main body has not been positively recited). Appellant has only claimed how far the main body can extend." Ans. 4. The Examiner further determines that: The claim language recites the open-ended transitional phrase "comprising" (lines 1 and 2 of claim 1; line 1 of claim 15). The use of the term "comprising" allows for additional structure to be present in the prior art. Appellant has not positively eliminated the "main body" from having any additional structure nor has Appellant positively eliminated the "main body" from extending for a farther length than from a ball of a foot to just beyond toes of the foot. 3 Appeal2014-000817 Application 13/196,4 73 Id. at 4--5. The Examiner's determinations are in error. The main body has been positively recited in the claim, although all of its structure has not been recited in the claim. See Appeal Br. 20. Moreover, claim 1 requires a main body that is "sized to extend from a ball of a foot to just beyond toes of the foot." The fact that a dimension of the main body is defined in relative terms, does not render that dimension "not positively recited" in the claim. Further, the Examiner's claim construction is in error. Although, the transitional phrase "comprising" does not exclude additional, unrecited elements or method steps (see MPEP § 2111.03), the use of the transitional phrase "comprising" is not carte blanche to ignore the limitations recited with respect to the structure specified by the claim. For example, the use of the transitional phrase "comprising" in this instance allows for prior art to have additional elements, such as Condie's heel 115, sole 107, and toe cover 200; however, it does not permit a main body that is sized to extend from the heel of the foot to behind the toes of the foot, as Condie' s main body l 0 l is sized. See Condie, Fig. 2A and 13. For these reasons, we do not sustain the Examiner's decision rejecting independent claim 1. We do not sustain the Examiner's decision rejecting claims 2, 9-11, which depend from claim 1, for the same reasons. Independent claim 15 also requires a "main body sized to extend from the ball to just beyond the toes of the foot." Appeal Br. 29. For claim 15, the Examiner relies on the same position discussed above. See Final Act. 4; Ans. 4--5. Accordingly, we do not sustain the Examiner's decision rejecting claim 15, and claims 16, 17, and 20 which depend therefrom. 4 Appeal2014-000817 Application 13/196,4 73 Rejections 11-V Each of Rejections II-IV rely on the same erroneous finding as Rejection I discussed supra. Accordingly, we do not sustain the Examiner's decision rejecting 12 under 35 U.S.C. § 103(a) as being unpatentable over Condie, the rejection of claims 3-8 under 35 U.S.C. § 103(a) as being unpatentable over Condie and Kelly, and claim 13 under 35 U.S.C. § 103(a) as being unpatentable over Condie and Allen. DECISION The Examiner's rejections of claims 1-21 are REVERSED. REVERSED 5 Copy with citationCopy as parenthetical citation