Ex Parte Wexler

Board of Patent Appeals and Interferences

Aug 13, 2008

10824889 (B.P.A.I. Aug. 13, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TOBY WEXLER
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Appeal 2008-0813
Application 10/824,889
Technology Center 3600
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Decided: August 13, 2008
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Before WILLIAM F. PATE, III, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-7, 11, 14-17, and 27-39. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
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This appeal arises from the Examiner’s Final Rejection, mailed
January 3, 2006. The Appellant filed an Appeal Brief in support of the
appeal on January 16, 2007. An Examiner’s Answer to the Appeal Brief
was mailed on May 25, 2007. A Reply Brief was filed on June 29, 2007.

SUMMARY OF DECISION
We AFFIRM IN PART.

THE INVENTION
Appellant claims a protective polymeric sheathing for animal toenails
which is said to relate more particularly to the manufacture and adaptation of
such polymeric sheathings to the animal's nails. (Specification 2:14-16.)
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. An animal toenail covering having an opening at
one end and an internal and external shape
defining a pliable sheath generally consistent with
that of an animal's toenail, said polymeric sheath
comprising an external coating of polymer
encompassing at least a portion of said polymeric
sheath.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Johns US 2,285,981 Jun. 9, 1942
Field US 4,908,881 Mar. 20, 1990

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The following rejections are before us for review.
1. Claims 1, 2, 5, 27, 28, 30, and 32-35 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Field.
2. Claims 3, 6, 7, and 14-17, 29, 36, and 38-39 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Field.
3. Claims 4, 11, 31, and 37 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Field in view of Johns.

ISSUES
The anticipation issue before us is whether Appellant has shown that
the Examiner erred in rejecting claims 1, 2, 5, 27, 28, 30, and 32-35 under
35 U.S.C. § 102(b) as anticipated by Field.
The second issue is whether Appellant has sustained its burden of
showing that the Examiner erred in rejecting claims 3, 6, 7, 14-17, 29, 36,
and 38-39 on appeal as being unpatentable under 35 U.S.C. § 103(a) over
Field.
The third issue is whether Appellant has sustained its burden of
showing that the Examiner erred in rejecting claims 4, 11, 31, and 37 on
appeal as being unpatentable under 35 U.S.C. § 103(a) over Field in view of
Johns.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. Field discloses “a sheath-like device adapted to fit over the distal
portion of a human finger. Such sheath-like device may be formed of
rigid or pliable material such as plastic or cloth fabric. Each sheath-
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like finger guard is shaped to fit slideably over the distal portion of a
human finger or thumb. (Field, col. 2, ll. 65-68.)
2. Field discloses that “a false fingernail-shaped insert 48 may be
detachably mounted within a recessed notch 50 formed on the upper
surface of the sheath 40. Such fingernail-shaped insert 48 may be
formed of rigid plastic or similar material and may be prepared in
various colors and designs for aesthetic purposes.” (Field, col. 3, ll.
24-28.)
3. The Merriam-Webster definition of “animal” is: 1: any of a kingdom
(Animalia) of living things including many-celled organisms and
often many of the single-celled ones (as protozoans) that typically
differ from plants in having cells without cellulose walls, in lacking
chlorophyll and the capacity for photosynthesis, in requiring more
complex food materials (as proteins), in being organized to a greater
degree of complexity, and in having the capacity for spontaneous
movement and rapid motor responses to stimulation 2 a: one of the
lower animals as distinguished from human beings b: mammal;
broadly : vertebrate 3: a human being considered chiefly as physical
or nonrational; also: this nature 4: a person with a particular interest or
aptitude .
(http://www.merriam-webster.com/dictionary/animal).
4. The Merriam-Webster definition of “anticline” is: an arch of stratified
rock in which the layers bend downward in opposite directions from
the crest — compare syncline (http://www.merriam-
webster.com/dictionary/anticline).
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5. Field discloses “…a fingernail-shaped insert may be detachably
affixed to the outer surface of the finger guard, so as to approximate
the appearance of a human fingernail. Such detachably connectable
fingernail-shaped insert may be prepared in various colors and/or
designs for purposes of further enhancing the appearance of the finger
guard. (Field, col.1, ll. 53-59.)
6. Field discloses it is well-known for people, primarily women, to
synthetically bond artificial fingernails over the top of their natural
nails. (Field, col. 1, ll. 8-10.)
7. We understand that such synthetically bonded artificial nails (FF 6)
are often colored with a color (e.g., red) different from that of the skin
color which surrounds the artificial nail.
8. The Examiner found with respect to the sheathing and coating
connection that “…it would have been obvious to one having ordinary
skill in the art that such an adhesive element must be present as there
is no structural mechanism in which to retain the second polymer
layer onto the sheath.” (Final Rej. 8.)
9. The Examiner found that “[o]ne of skill in the art would consider the
use of a liquid adhesive, a powered adhesive or an aerosol adhesive as
a matter of obvious routine choice of design rather than constitute a
patentably distinct inventive step barring a convincing showing of
evidence to the contrary. (Final Rej. 8.)
10. We understand that the use of adhesive in laminates is generally well
known to secure one layer to the next.
11. Johns discloses ribs 7 circumferentially around the wall and as shown
in Figures 2 are perpendicular to the surface of the sheath. (Johns,
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col. 1, ll. 28-35.)
PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations and internal quotation marks omitted).
"[A] prima facie case of anticipation [may be] based on inherency."
In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). Once a prima facie case
of anticipation has been established, the burden shifts to the Appellant to
prove that the prior art product does not necessarily or inherently possess the
characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255
(CCPA 1977) ("Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.") See also In re Spada, 911 F.2d 705,
708-09 (Fed. Cir. 1990).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
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invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 127 S.Ct. at 1739 (citing Graham, 383 U.S.
at 12 (emphasis added)), and reaffirmed principles based on its precedent
that “[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.” Id.
The Court explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
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the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
The Supreme Court stated that there are “[t]hree cases decided after
Graham [that] illustrate the application of this doctrine.” Id. at 1739. “In
United States v. Adams, … [t]he Court recognized that when a patent claims
a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” Id. at 1739-40. “Sakraida
and Anderson’s-Black Rock are illustrative – a court must ask whether the
improvement is more than the predictable use of prior art elements according
to their established function.” Id. at 1740.
The Supreme Court stated that “[f]ollowing these principles may be
more difficult in other cases than it is here because the claimed subject
matter may involve more than the simple substitution of one known element
for another or the mere application of a known technique to a piece of prior
art ready for the improvement.” Id. The Court explained:
Often, it will be necessary for a court to look to
interrelated teachings of multiple patents; the
effects of demands known to the design
community or present in the marketplace; and the
background knowledge possessed by a person
having ordinary skill in the art, all in order to
determine whether there was an apparent reason to
combine the known elements in the fashion
claimed by the patent at issue.
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Id. at 1740-41. The Court noted that “[t]o facilitate review, this
analysis should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”)). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”

ANALYSIS
We affirm the rejection of claims 1, 2, 5, 27, 28, and 30 under
35 U.S.C. § 102(b) as being anticipated by Field and reverse the rejection of
claims 32-37 made thereunder.
We affirm the rejection of claims 3, 6, 7, 14-17, 29, and 38-39 under
35 U.S.C. § 103(a) as being unpatentable over Field.
We affirm the rejection of claim 11 under 35 U.S.C. § 103(a) as being
unpatentable over Field in view of Johns and reverse the rejection of claims
4 and 31 made thereunder.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Brief and the Answer for their respective details. Only
those arguments actually made by Appellants have been considered in this
opinion. Arguments which Appellants could have made but chose not to
make in the Brief have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2007).
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Claims 1, 27, 38, and 39 rejected under 35 U.S.C. § 102(b)
Appellant’s arguments against each of the rejections of independent
claims 1, 27, 38, and 39 are based on perceived deficiencies of Field.
Inasmuch as Appellant raises the same issues with respect to each of these
claims, we discuss these claims together, addressing each of Appellants’
arguments in turn.
Appellant “disputes examiner's contention that the Field '881 patent is
a proper reference in this case.” (Appeal Br. 12.) In support of this position,
Appellant cites to the USPTO classification of the Field patent as not being
classified with the closest prior art. (Id.) We disagree. The classification of
a device while being some evidence of “analogy” is far outweighed by the
similarities and differences in structure and function of the devices found in
the prior art. See In re Ellis, 476 F.2d 1370, 1372 (CCPA 1973).
The Appellant argues:
Examiner, repeatedly erroneously describes the
Field '881 apparatus as having applicant's claimed
"internal and external shape generally consistent
with that of an animal's toenail" when in fact there
is no indication in the Field specification that
mentions such shape or a drawing that would lead
any rational person to that conclusion. In fact Field
describes his finger covering as ‘corresponding to
the anatomical shape of a human finger’. A human
finger shape is simply not consistent with an
animal's toenail.
(Appeal Br. 13-14.)
However, we are not persuaded by Appellant’s argument that a human
finger shape is simply not consistent with an animal's toenail because the
scope of the argument exceeds that of the claims. The claims only require
that the covering be pliable generally consistent with that of an animal
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toenail. Nothing in the claims require the argued (Appeal Br. 13) triangular
shape of a nonhuman nail which, at its proximate end, tapers and curves to a
point at it’s distil end. Moreover, an animal is defined as any of a kingdom
of living things which would include a human (FF 3). Further, the definition
of animal identifies a human as one, albeit a higher animal (Id.) Thus,
Appellant’s arguments “fail from the outset because . . . they are not based
on limitations appearing in the claims . . . ,” and are not commensurate with
the broader scope of claims 1, 27, 38, and 39 which merely recites that the
covering be pliable generally consistent with that of an animal toenail. In re
Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellant further contends that the covering 48 over the nail region in
Field is not “a second layer of polymer covering at least a portion of the
sheath….” (Appeal Br. 14.) We disagree with Appellant. The independent
claims only require that an external coating encompass, or overlay the
polymeric sheath. The layer 48 in Field is attached to the sheath in Field via
a recessed notch 50 (FF 5) so as to overlay or encompass the underlying
sheath material.
Appellant next argues that because Field discloses that the sheath can
be made of either plastic or cloth fabric, the embodiment where the sheath is
made of fabric would not meet requirement of the claims. (Appeal Br. 14.)
Although Field does disclose using two such kinds of material to fabricate
its sheath, the plastic form of the sheath meets the claim requirements.

Claims 2 and 28, rejection made under 35 U.S.C. § 102(b)
Claims 2 and 28 recite the external coating has a greater hardness than
said covering. The Examiner position is that “…the fingernail insert which
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is of a thinner structural thickness [than the sheath] and thereby, along with
the positive statement that the fingernail insert is a rigid material, it is
therefore maintained that Field discloses the second layer of polymer is
harder than that of the polymeric sheath.” (Final Rej. 3.) However,
Appellant argues that because “Field makes no mention of hardness … any
assumption made regarding hardness of the materials is purely speculation.
No comparison can be made without knowing the material specification of
each member.” (Appeal Br. 15.) We find that the Examiner has established
a prima facie case of anticipation based on inherency based on the
explanation established in the record (Final Rej. 3) and that Appellant has
failed to prove that the prior art product does not necessarily or inherently
possess the characteristics of the claimed product. Accordingly, we sustain
the rejection of claims 2 and 28.

Claims 3 and 29, rejection made under 35 U.S.C. § 103(a) using Field
Claims 3 and 29 recite that the sheath and the external coating are
different colors. Field discloses that it is known to use artificial nails over
the natural nails (FF 6), and we find that the layer 48 may be colored
differently. Further, we understand that with artificial nails a person often
colors the artificial nail differently from that of the skin which surrounds the
nail (FF 7). We conclude that such color difference as between the sheath
and the nail overlay is a predicable result of the known practice of nail
coloring and the prior art taught by Field. Where, as here “[an application]
claims a structure already known in the prior art that is altered by the mere
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substitution of one element for another known in the field, the combination
must do more than yield a predictable result,” KSR, 127 S.Ct. at 1740 (citing
United States v. Adams, 383 U.S. 50-51 (1966)).

Claims 32-35 rejected under 35 U.S.C. § 102(b)
Claim 32 requires the sheath having a non-uniform wall thickness
having a greater thickness at said distal end than at said proximate end. The
Examiner interprets the feature in Field as the non-uniform wall thickness
where the lamination of layers occurs. We disagree. The sheath in Field has
a recess which accounts for the thickness of the superimposed layer 48 so as
to effect a contiguous top surface, and hence a uniform thickness. Thus, this
region cannot be read as creating a thickness greater at the distal end. We
therefore do not affirm the rejection of claim 32 and those claims 33-37
which depend therefrom.

Claim 5 rejection made under 35 U.S.C. § 102(b) using Field
Claim 5 recites a partial delamination between said polymeric sheath
and a portion of said external coating of polymer. The Examiner reasoned
that since “…Field discloses that the second layer may be removable from
the sheath [it] thereby provid[es] the sheath with the delamination between
the sheath and the second layer of polymer .…” (Final Rej. 7.) While we
agree with this reasoning, we do not deem it necessary because the limitation
goes only to the process by which the layer is created and thus does not add
structure to the claim. “If the product in a product-by-process claim is the
same as or obvious from a product of the prior art, the claim is unpatentable
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even though the prior product was made by a different process.” In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
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Claims 6, 7, 14, 15, 16, and 17 rejected under 35 U.S.C. § 103(a) using
Field
Claims 6, 7, 14, 15, 16, and 17 recite various adhesive forms for
attaching the sheath to the external coating. The Examiner found that: 1)
“…one having ordinary skill in the art would know that an adhesive element
must be present…” (FF 8); and 2) that “[o]ne of skill in the art would
consider the use of a liquid adhesive, a powered adhesive or an aerosol
adhesive as a matter of obvious routine choice of design rather than
constitute a patentably distinct inventive step barring a convincing showing
of evidence to the contrary (FF 9). Further, we understand that the use of
adhesive in laminates is generally well known to secure one layer to the next
(FF 10). Thus we conclude that using an adhesive to attach the sheath to the
appendage in Field and to use the various forms thereof as recited in claims
14-17 is a predicable result of the known practice of artificial nail
application and the prior art taught by Field. Where, as here “[an
application] claims a structure already known in the prior art that is altered
by the mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result,” KSR, 127 S.Ct. at
1740 (citing United States v. Adams, 383 U.S. 50-51 (1966)).

Claims 4, 11, 31 and 37 rejected under 35 U.S.C. § 103(a) using
Field and Johns
Claims 4, 31, and 37 require anticline cleats. We find that the term
anticline means that the cleats bend downward in opposite directions from
the slope of the sheath inner surface as would be the case if the cleats were
arched stratified rock formations (FF 4). In Johns the ribs 7 extend
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perpendicularly to the surface of the sheath (FF11) and therefore do meet the
requirements of claims 4 and 31. We thus cannot affirm the rejection of
claims 4, 31, and 37. However claim 11 only requires that the inner wall be
textured. We read the ribs 7 in Johns as constituting a textured surface, and
hence they meet the requirement of claim 11. We thus affirm the rejection
of claim 11.

CONCLUSIONS OF LAW
We conclude:
1. We affirm the rejection of claims 1, 2, 5, 27, 28, and 30 under
35 U.S.C. § 102(b) as being anticipated by Field and reverse the rejection of
claims 32-37.
2. We affirm the rejection of claims 3, 6, 7, 14-17, 29, and
38-39 under 35 U.S.C. § 103(a) as being unpatentable over Field.
3. We affirm the rejection of claim 11 under 35 U.S.C. § 103(a) as
being unpatentable over Field in view of Johns and reverse the rejection of
claims 4 and 31.

DECISION
The decision of the Examiner to reject claims 1-3,5-7, 11, 14-17, 27-
30, 38, and 39 is affirmed.
The decision of the Examiner to reject claims 4, 31-37 is reversed.
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) (2007).

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AFFIRMED-IN-PART

hh

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