14260956 - (D) (P.T.A.B. Apr. 30, 2019)

Ex Parte VAN WIEMEERSCH

Patent Trials and Appeals BoardApr 30, 2019

14260956 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/260,956 04/24/2014 67318 7590 LeClairRyan (Ford Global) 2318 Mill Road Suite 1100 Alexandria, VA 22314 05/02/2019 FIRST NAMED INVENTOR JOHN ROBERT VAN WIEMEERSCH 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. 48259.2290/83438597 8990 EXAMINER SNOW, BRUCE EDWARD ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 05/02/2019 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): phoebe.jones@leclairryan.com marcia. taylor@leclairryan.com uspatentsalexandria@leclairryan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN ROBERT VAN WIEMEERSCH 1 Appeal2017-008491 Application 14/260,956 Technology Center 3700 Before LYNNE H. BROWNE, MICHELLE R. OSINSKI, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from a rejection of claims 1, 4, 5, and 8-10. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 The Appeal Brief indicates that Ford Global Technologies, LLC, Appellant, is the real party in interest. Appeal Br. 2. Appeal2017-008491 Application 14/260,956 CLAIMED SUBJECT MATTER The claims are directed to an add-on capacitive touchscreen aid. Claim 1, reproduced below with emphasis added, is illustrative of the claimed subject matter: 1. A prosthetic device comprising: a body portion including a limb-attachment end; a finger portion extending from said body portion, said finger portion including an integrated conductive tip and an attachment band, said conductive tip being attached to said finger portion by said attachment band; a conductive line attached at a first end to the integrated conductive tip and at least partially embedded in said body portion; a second conductive portion attached to a second end of the conductive line, wherein said limb-attachment end is selected from the group consisting of: (a) a forearm attachment end; and (b) an upper arm-attachment end. Appeal Br. 8 (Claims App.). REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Sanfilippo Farnan Spencer US 2008/0015426 Al Jan. 17, 2008 US 2011/0278061 Al Nov. 17, 2011 US 2013/0076699 Al Mar. 28, 2013 REJECTION Claims 1, 4, 5, and 8-10 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Spencer and Farnan (as evidenced by Sanfilippo). 2 Appeal2017-008491 Application 14/260,956 OPINION The Examiner finds that Spencer discloses many of the elements recited in claim 1 (Final Act. 2--4), but relies on Farnan to disclose an attachment band, integrated conductive tip, and partially embedded conductive line (id. at 4--6). With respect to the recited partially embedded conductive line, the Examiner refers to Figure 3 of Farnan and states, "[i]t is at least obvious that the conductive line [connector 120] and second conductive portion [proximal conductor 140] are within the glove fulfilling the language 'at least partially embedded in the body portion'."). Ans. 5. Appellant argues that, rather than at least partially embedding its connector 120 in a body portion, Farnan pierces the material of glove 170 by pushing a needle 180. Appeal Br. 5-6. Appellant contends that Farnan intends to use connector 120 to make contact with a user's hand, which means that it would be undesirable to embed connector 120. Id. at 6. In response, the Examiner states, "[a]ny portion of the conductive line extended through or within the glove is at least partially embedded." Ans. 6. "It is well-settled that, in interpreting an asserted claim, the [USPTO] should look first to the intrinsic evidence of record." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Appellant's Specification does not express a clear intent to deviate from the plain meaning of the word "embedded." See Spec. ,r,r 29, 38, 42, 56. Thus, we see no reason the broadest reasonable interpretation of claim 1, in light of the Specification, would be different from its plain and ordinary meaning. A common dictionary definition of the word "embedded" is "enclosed closely in or as if in a matrix : set firmly into a mass or material." www.merriam- webster.com (last visited April 22, 2019). Accordingly, the broadest reasonable interpretation in light of the Specification of the term 3 Appeal2017-008491 Application 14/260,956 "embedded" in the phrase "a conductive line ... at least partially embedded in said body portion," requires more than merely piercing the material, extending the conducting line therethrough, and positioning the conductive line inside the cavity of a glove. Instead, it requires the conductive line to be at least partially enclosed in a surrounding material (as if in a matrix) or enveloped along a portion of its length. Thus, the Examiner's interpretation of claim 1 is unreasonably broad. This unreasonably broad claim interpretation led the Examiner to find that Farnan discloses connector 120 "at least partially embedded" in a body portion. Under the broadest reasonable interpretation of claim 1, in light of the Specification, this finding is not supported by a preponderance of the evidence. Accordingly, Appellant's argument on this point is persuasive, and we do not sustain the rejection of claim 1 and associated dependent claim 4 as unpatentable over Spencer and Farnan. Like claim 1, independent claims 5 and 10 require a conductive line at least partially embedded in a body portion. See Appeal Br. 8-9 (Claims App.). Accordingly, we do not sustain the rejection of claims 5 and 10 (and claims 8 and 9, which depend from claim 5) as unpatentable over Spencer and Farnan. DECISION The Examiner's rejection of claims 1, 4, 5, and 8-10 is reversed. REVERSED 4