Ex Parte SNYDER et al

Patent Trial and Appeal Board

Sep 18, 2018

13831387 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/831,387 03/14/2013
23117 7590 09/20/2018
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Julie B. SNYDER
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.
AMK-6188-0002 1757
EXAMINER
POON, PETER M
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
09/20/2018 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIE B. SNYDER and TODD G. LYND
Appeal2017-000681
Application 13/831,3 87
Technology Center 3600
Before: WILLIAM A. CAPP, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's
decision to reject claims 8, 9, 25-28, and 33. We have jurisdiction under 35
U.S.C. § 6(b ).
We REVERSE.
1 The Appellant is Dr. Buzby's Innovations, LLS, which the Appeal Brief
indicates is also the real party in interest. Appeal Br. 3.
Appeal2017-000681
Application 13/831,387
CLAIMED SUBJECT MATTER
The claims are directed to a method of attaching animal accessories,
particularly, to animal toenail grips for purposes of providing traction on
hard-surface flooring. Spec. ,r 2. Claim 8, reproduced below, is illustrative
of the claimed subject matter:
8. A method for reducing slippage of an animal on a hard
surface, comprising attaching one or more annuluses to one or
more toenails of the animal, wherein the one or more annuluses
each comprises an elongated, tubular member having an upper
end, a lower end, and a hollow interior, the attaching step being
practiced by positioning the tubular member such that an edge of
the tubular member lower end sits at a caudodistal edge of the
animal toenail and such that a distal portion of the animal toenail
protrudes through the lower end.
Appeal Br. 13 (Claims App.).
Appellant's Summary of the Claimed Subject Matter refers to
Figure 5. Appeal Br. 6.
FIG. 5
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Application 13/831,387
Appellant's Figure 5 above depicts "a partial perspective view
illustrating animal nail grips removably attached to respective nails of a
canine's pair of paws." Spec. ,r 34.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wexler
Gat
US 7,703,419 Bl Apr. 27, 2010
US 2003/0145805 Al Aug. 7, 2003
REJECTIONS
(I) Claims 8, 9, 25-28, and 33 are rejected under 35 U.S.C. §
102(b) as anticipated by Gat.
(II) Claims 8, 9, 25-28, and 33 are rejected under 35 U.S.C. §
102(b) as anticipated by Wexler.
OPINION
Re} ection (I); Gat
The Examiner finds that Gat discloses attaching one or more
annuluses to one or more toenails of an animal and that, before piece 34 of
Gat's device is attached, the animal toenail will protrude from piece 30,
satisfying the requirement in claim 8 that the "distal portion of the animal
toenail protrudes through the lower end." Final Act. 2-3.
Appellant contends that in Gat, piece 32 and piece 34 are joined
together to form cover 30 before cover 30 is applied to the toenail. Appeal
Br. 8.
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Appeal2017-000681
Application 13/831,387
In response, the Examiner states, "at the step or time frame as shown
in fig. 2[,] before the user attaches the second piece 34, at that moment in
time, it meets the claimed limitation. Nothing in claimed limitation indicates
what the finished product is, thus, appellant is arguing a limitation that is not
claimed." Ans. 4 (emphasis added) The Examiner further states, "[t]he
attaching step is further defined as positioning the tubular member such that
the tip of the animal's toe nail protrudes out through the lower end. This
step is exactly taught by Gat's intermediate step as shown in fig. 2." Id. We
reproduce Figure 2 of Gat below.
Figure 2
Above Figure 2 of Gat "is a cutaway view of the two pieces of the
cover during manufacture." Gat. ,r 17.
Paragraph 20 of Gat states:
FIG. 2 shows one possible method of manufacture. A
cover 30 is fabricated in two pieces, 32, 34. The first piece 32
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Appeal2017-000681
Application 13/831,387
incorporates an opening 36 through which the animal's nail is
introduced. The second piece 34 is enclosed and forms a
reservoir 38 for the adhesive 40. A membrane 42 is fabricated as
part of either of the two main pieces 32, 34, or both. The two
pieces 2, 34 are then joined together to form the finished nail
cover 30.
Emphasis added. Accordingly, as Figure 2 depicts a method of
manufacturing cover 30, this figure does not depict any animal nail. We
understand the statement "first piece 32 incorporates an opening 36 through
which the animal's nail is introduced" in paragraph 20 to be a description of
the function of opening 36 in a completed version cover 30, not a disclosure
that the animal's nail is introduced in first piece 32 before the attachment of
second piece 34 to first piece 32. In other words, a preponderance of the
evidence does not support the finding that, at any point in time, the animal's
nail will protrude from the lower end of finished nail cover 30. Rather, we
understand Gatto provide a completed version of 30 into which an animal's
nail will be introduced via opening 36. Accordingly, we do not sustain the
rejection of claim 8 and claims 9 and 25-27 depending therefrom as
anticipated by Gat. As claim 28 recites the same requirement as discussed
above regarding claim 8, we likewise do not sustain the rejection of claim 28
or claim 33 depending therefrom as anticipated by Gat.
Rejection (II); Wexler
Claim 8
In finding that Wexler discloses all of the steps required by claim 8,
the Examiner refers to Figure 6, which we reproduce below. Final Act. 5.
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Application 13/831,387
12
22
M_q.6
PRIOR ART
Above Figure 6 of Wexler depicts nail cap 16, which is prior art in Wexler,
after being worn on dog toenail 12 "for quite some period of time," and
through which toenail 12 "begins to extend." Wexler, 4:7-29.
Appellant contends that when nail cap 16 "reaches the stage described
in FIG. 6 [of Wexler], it is discarded," and "[i]t is unreasonable to assume
that the resulting worn product at the end of the product life cycle is
intentionally positioned such that an edge of the tubular member lower end
sits at a caudodistal edge of the animal toenail as claimed." Appeal Br. 11.
In response, the Examiner states, "[ A Jppellant failed to define the
distance of what is considered a caudodistal edge, thus, as long as one do not
considered the tip of the nail or the middle portion of the nail, anywhere in
between can be considered caudodistal edge." Ans. 12.
Appellant disputes the Examiner's interpretation of caudodistal edge,
provides an alternative definition based on several medical dictionaries, and
reiterates that Wexler fails to disclose positioning nail cap 16 at the
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Appeal2017-000681
Application 13/831,387
caudodistal edge of dog toenail 12. See Reply Br. 2-3. In this regard,
Appellant states, "with reference to the figures and corresponding
description, ['caudodistal edge'] refers to the posterior line where the nail tip
ends and the nail shaft begins. In most dogs, for example, there is a
definitive edge there." Id. at 3, emphasis omitted.
Appellant has the better position on this point. Referring to Figure 4,
Appellant's Specification states, "the tubular member 20 is slid onto the
nail 4 so as to rest at the caudodistal edge of the nail tip 9 to create the grip
zone 11." Spec. ,r 45. In view of Appellant's disclosure, we agree that the
caudodistal edge of the dog's toenail is the posterior edge, not a point of a
toenail and not merely anywhere between the tip of the nail or the middle
portion of the nail as proposed by the Examiner (see Ans. 12). Accordingly,
the Examiner's interpretation of the limitation "the attaching step being
practiced by positioning the tubular member such that an edge of the tubular
member lower end sits at a caudodistal edge of the animal toenail" in
claim 8 is unreasonably broad. The Examiner's finding that Figure 6 of
Wexler meets this limitation is based on this overly broad claim
interpretation. Accordingly, we do not sustain the Examiner's rejection of
claim 8 and claims 9 and 25-27 depending therefrom as anticipated by
Wexler.
Claim 28
Independent claim 28 recites, in part, "the attaching step is practiced
such that the one or more annuluses engage both of the top and bottom surf
ace of the animal toenail and such that a distal portion of the animal toenail
protrudes through the lower end and is exposed." Appeal Br. 13 (Claims
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Application 13/831,387
App.). Thus, claim 28 limits the attaching step in terms of exposure of the
distal portion of the toenail. 2
The Examiner refers to Figure 6 of Wexler and finds that Wexler
discloses the attaching step recited in claim 28. Final Act. 6. Appellant
contends that because the arrangement depicted in Figure 6 of Wexler is the
result of wearing the nail cap 16, Wexler fails to disclose an attaching step
in which the distal portion of the animal toenail is exposed. Appeal Br. 11.
In response, the Examiner takes the position that Figure 6 of Wexler depicts
the animal toenail protruding from the distal end of nail cap 16, and,
regardless of when this occurs, it meets the requirement in claim 28
regarding protrusion of the toe nail. Ans. 14.
We do not agree that Wexler discloses an attaching step as recited in
claim 28. Specifically, what is depicted in Figure 6 is the direct result of
"nail regeneration and cap wear," not the step of attaching anything.
Wexler 2:54--56; see also id. at 4:20-24 ("The cap 16 generally wears away
until the tip 22 of the nail 12 grows out and begins to extend through the
cap 16 and the configuration of the nail changes thereby breaking the
adhesive bond."). In contrast, the plane language of claim 28 indicates that
the arrangement in which the animal toenail protrudes through the lower end
and is exposed is a result of the attaching step. Accordingly, we do not
sustain the Examiner's rejection of claim 28 and claim 33 depending
therefrom as anticipated by Wexler.
2 Unlike claim 8, the method recited in claim 28 does not refer to the placing
an edge of the tubular member on the caudodistal edge.
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DECISION
The Examiner's decision to reject claims 8, 9, 25-28, and 33 is
reversed.
REVERSED
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