Ex Parte Snider-Tornetta et al

Patent Trial and Appeal Board

Feb 24, 2016

13196473 (P.T.A.B. Feb. 24, 2016)

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