Ex Parte Barnard

Patent Trial and Appeal BoardSep 17, 2012

11588957 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DILLON C. BARNARD ____________________ Appeal 2010-005483 Application 11/588,957 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, CHARLES N. GREENHUT, and JAMES P. CALVE, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005483 Application 11/588,957 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 15. App. Br. 6. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a grip pad. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A pad for use in gripping a portion of a generally bar-shaped object, wherein the bar-shaped object defines a longitudinal axis, and wherein the pad is to be interposed between the bar- shaped object and a user’s hand at the palm and fingers, the pad comprising: a first surface defining a first outer edge, the first surface for facing the user's palm and fingers; a second surface defining a second outer edge, the second surface for facing the bar-shaped object; and a cushioning body between the first and second surfaces, the body defining, along a direction parallel to the longitudinal axis of the bar-shaped object, a substantially flat shape, and the body defining, in a direction perpendicular to the longitudinal axis of the bar-shaped object, a substantially curved shape that follows the natural curve of the hand. REJECTIONS Claims 1, 5, 8-10, and 13 are rejected under 35 U.S.C. § 102(b) as being anticipated by Reis (US 5,603,679 iss. Feb. 18, 1997). Ans. 3. Claims 2, 3, 4, 6, 7, 11, 12, 14, and 15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Reis. Ans. 5. Appeal 2010-005483 Application 11/588,957 3 OPINION The central issue in this appeal regarding the Examiner’s rejection of independent claim 1 is the Examiner’s interpretation of the scope of the recited cushioning body defining a “substantially curved shape.” App. Br. 14-16. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). The Examiner correctly declined to import limitations from the Specification limiting that cushioning body to structures that were substantially curved by some specific unrecited process, for example, a molding process. See App. Br. 18; Reply Br. 2; Spec. 5:2-6. Reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from reading limitations of the specification into a claim, to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). The Examiner reasonably interpreted the recited cushioning body to include structures that were substantially curved by outside forces, for example, by the hand or bar during use. Ans. 6. This is consistent with the Specification which states that the curved shape “may be obtained by any suitable means.” Spec. 5:5-6. We recognize that in the state depicted in Reis’s figures, Reis’s pad assumes a flat, as opposed to a curved, shape. App. Br. 14. However, the fact that the state in which Reis assumes a curved shape is only temporary does not detract from the efficacy of Reis as an anticipatory reference. See In re Herbert, 461 F.2d 1390, 1394 (CCPA 1972). Appellant apparently recognized the Examiner’s position that the claim language did not create a structural distinction from Reis. App. Br. 16. Appeal 2010-005483 Application 11/588,957 4 Appellant does not provide any arguments to demonstrate error in this position. Those arguments directed to teaching away and secondary considerations, such as unexpected results, are not pertinent to a rejection under 35 U.S.C. § 102(b). See App. Br. 16-17; see Seachange Int’l, Inc. v. C-COR, Inc. 413 F.3d 1361, 1380 (Fed. Cir. 2005)(“Teaching away is irrelevant to anticipation”); WL Gore & Assoc., Inc. v. Garlock, Inc., 721 F. 2d 1540 (Fed. Cir. 1983)(DAVIS, Circuit Judge, concurring in the result in part and dissenting in part.) (“discussion of ‘secondary considerations,’. . . is irrelevant to the issue of anticipation”). Regarding dependent claims 2 and 3, Appellant relies on the arguments advanced concerning claim 1 and not the specific language of claim 2 or 3. App. Br. 19-24. The fact that Reis discloses a flat shape in one configuration does not “teach away” from curving Reis’s pad in another configuration, particularly because that is exactly how Reis’s pad is intended to be used. Contra App. Br. 20, 21. For objective indicia or secondary considerations of obviousness to be relevant to the Examiner’s conclusion of obviousness regarding the subject matter of claims 2 and 3 there must be a nexus between the limitations of claims 2 and 3 and the secondary considerations. Ashland Oil, Inc. v. Delta Resins & RefractoReis, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985). ). “Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (citation omitted). Thus, evidence pertaining to the features of independent claim 1, which the Examiner found was anticipated, is of little or no probative value as to the correctness of the Examiner’s conclusion that the subject matter of Appeal 2010-005483 Application 11/588,957 5 claims 2 and 3 would have been obvious to one having ordinary skill in the art. See App. Br. 22-24; Gracia Decl. p. 3, para. 10. Appellant’s argument concerning claim 11, advancing patentability for the same reasons as claim 2 (App. Br. 30), is unpersuasive for the same reasons. We turn to the rejection of independent claim 8 and claim 13 depending therefrom. The recitation of the size of the pad body with respect to the hand when the pad is held in a specific orientation in the hand relates to how the device will be used. Ans. 7; contra App. Br. 24-28. Indeed, the claim is directed to a pad, not the combination of a pad and hand. Thus, a prior art pad body need not actually be shown with a hand relatively sized or oriented according to the claim in order to fall within the scope of claim 8. See In re Schreiber, 128 F. 3d 1473 (Fed. Cir. 1997)(recitations related to dispensing popcorn did not limit the claimed subject matter to devices actually used to dispense popcorn). In addition to defining the claimed structure by how it will be used, Appellant elected to broadly define that use by reference to an object that is variable—the size of a hand. See, e.g., Ex parte Brummer, 12 USPQ2d 1653 (BPAI 1989); Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,806 F.2d 1565 (Fed. Cir. 1986); MPEP § 2173.05(b). We agree with the Examiner that the claim encompasses any pads that would meet the recitations regarding the size of the body with respect to the hand for any reasonably sized hand. As the Examiner points out, hands come in a variety of sizes. Ans. 5- 6. The pad body of the embodiment depicted in Figure 4 of Reis reasonably meets the limitations pertaining to size relative to a hand for a hand of a certain size, slightly smaller than that depicted in Reis’s Figure 1, gripping it at an orientation rotated ninety degrees from the hand depicted in Figure 1. The hand size and orientation depicted in Figure 1, and that size and Appeal 2010-005483 Application 11/588,957 6 orientation specifically suggested by Reis is of little consequence. Contra App. Br. 26-7. It may be probative as to the approximate size of the pad relative to an average hand, as the Examiner found regarding claim 14, but it does not alter the structure of Reis’s pads. Those pads fall within the scope of claim 8 regardless of how Reis intends to orient them in a hand or what size hand Reis suggests using them with. As discussed above, “teaching away” is not relevant to the issue of anticipation. Contra App. Br. 25, 26, 28, 29. Appellant mentions the limitations of claim 14 (App. Br. 25) but does not appear to present any arguments germane to the Examiner’s position. The Examiner found that Reis’s figures in combination with Reis’s description were sufficient to teach an oval shape about 4.5 inches in length. Ans. 5. Appellant has not apprised us of any error in this finding. Appellant’s argument concerning claim 10 (App. Br. 30) is unpersuasive for reasons already discussed: Teaching away and secondary considerations are not relevant to the issue of anticipation. To the extent Appellant argues claims 10-12 for the same reasons as claims 1-3 (App. Br. 29), our reasoning discussed above remains applicable. DECISION The Examiner’s rejections of claims 1-15 are affirmed. 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). AFFIRMED mls