Ex Parte Boorsma et al

Patent Trial and Appeal BoardJun 3, 2016

12134862 (P.T.A.B. Jun. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/134,862 06/06/2008 28863 7590 06/07/2016 SHUMAKER & SIEFFERT, P, A, 1625 RADIO DRIVE SUITE 100 WOODBURY, MN 55125 FIRST NAMED INVENTOR JimBoorsma 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. l 126-009US01 2530 EXAMINER MORAN, KATHERINE M ART UNIT PAPER NUMBER 3765 NOTIFICATION DATE DELIVERY MODE 06/07/2016 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): pairdocketing@ssiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JIM BOORSMA and NICOLE SMITH1 Appeal2014-002011 Application 12/134,862 Technology Center 3700 Before LINDA E. HORNER, JOSIAH C. COCKS, and MARK A. GEIER, Administrative Patent Judges. COCKS, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is Higher Dimension Materials, Incorporated. Appeal2014-002011 Application 12/134,862 l. STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. Â§ 134(a) from a Final Rejection of claims 1-12 and 20 of Application No. 12/134,862 ("the '862 Application").2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. A. References Relied on by the Examiner Cunningham Post Park Williams us 5,601,895 us 6,044,493 US 2005/0009429 Al US 2007/0031601 Al B. The Rejections on Appeal The Examiner rejected: Feb. 11, 1997 Apr. 4, 2000 Jan. 13, 2005 Feb. 8,2007 (1) claims 1-12 and 20 under 35 U.S.C. Â§ 1123 as failing to comply with the written description requirement; (2) claims 1, 7-9, 11, and 12 under 35 U.S.C. Â§ 103(a) as unpatentable over Park and Post; (3) claims 2-6 and 20 under 35 U.S.C. Â§ 103(a) as unpatentable over Park, Post, and Cunningham; and (4) claim 10 under 35 U.S.C. Â§ 103(a) as unpatentable over Park, Post, and Williams. Ans. 3-7. 2 In this Opinion, we make reference to: (1) the Final Office Action mailed January 23, 2013 ("Final Act."); (2) the Appeal Brief filed August 20, 2013 ("App. Br."); (3) the Examiner's Answer mailed September 23, 2013 ("Ans."); and (4) the Reply Brief filed November 25, 2013 ("Reply Br."). 3 The Examiner characterizes the rejection as one based "under 35 U.S.C. [Â§] l 12(a) or 35 U.S.C. [Â§] 112 (pre-AIA), first paragraph." Ans. 3. 2 Appeal2014-002011 Application I2/134,862 C. The Invention The '862 Application describes a protective knitted glove assembly including a knitted glove and printed guard plates arranged on a surface of the glove. Spec. i-f 8. Figures IA and IC of the '862 Application are reproduced below: FIG. 1A FIG. 1C Figure IA above illustrates a front view of glove assembly I with guard plates 2 covering the palm side of glove assembly I. Spec. i-f 24. Figure IC above illustrates a back view of glove assembly I with guard plates 2 on the sides of the thumb and forefinger and in the crotch of the thumb and forefinger in addition to on the back of glove assembly I. Id. Figure 2A is reproduced below: 3 / 1 Appeal2014-002011 Application 12/134,862 FIG. 2A Figure 2A above illustrates an array of guard plates 2 according to an embodiment of the invention. Spec. i-f 25. Guard plates 2 are screen-printed onto outer surface 4 of knitted glove 3 to enhance the abrasion, wear, and cut resistance of knitted glove 3. Id. Guard plates 2 can be printed onto knitted glove 3 in a variety of geometries and patterns. Id. i-f 31. Gaps 5 between guard plates 2 enable glove assembly 1 to retain flexibility while inhibiting objects from abrading directly against knitted glove 3. Id. i-f 33. Knitted glove 3 can be made of polyester, aramid, ultra-high molecular weight polyethylene, blends of the aforementioned materials, or a blend of aramid and thin steel wires. Id. i-f 30. Guard plates 2 can be made from resins and can include additives added to the resins to increase abrasion, wear, cut, and/or heat resistance. Id. i-f 51. 4 Appeal2014-002011 Application 12/134,862 Claim 1 is independent and is reproduced below:4 l, A protective knitted glove assembly comprising: a seamless knitted glove including an outer surface; and two or more arrays of non-overlapping, cured polymer material guard plates arranged in a predetermined pattern and having an area parallel to a surface of the glove, \vherein the t\VO or more arrays of non-overlapping, cured polymer material guard plates comprise a first anay of guard plates and a second an-ay of guard plates formed of a polymer material screen printed onto the outer surface of the glove~ wherein the polymer material of the first array of guard plates is partially cured after being screen printed onto the outer surface of the glove but before the second array of guard plates is screen printed onto the outer surface of the glove. See App. Br. Claims App. 11.:; II. ISSUES We consider if the record before us supports the Examiner's rejection of claims 1-12 and 20. In particular, we inquire: (1) whether the Examiner correctly determined that the amendment to claim 1 reciting that the knitted glove is "seamless" constitutes new matter; and (2) whether the Examiner correctly determined that Park and Post teach a seamless knitted glove as recited in claim 1. 4 Claims 2-12 and 20 ultimately depend from claim 1. 5 Claim 1 as it appears in the Claims Appendix of the Appeal Brief does not include the word "seamless." The word "seamless," however, was added to claim 1 by an Amendment filed on July 9, 2012. It is apparent from the record before us that claim 1 involved in this appeal is understood as including the "seamless" recitation. 5 Appeal2014-002011 Application 12/134,862 Ill. ANALYSIS The Examiner determined that claims 1-12 and 20 fail to comply with the written description requirement of 35 U.S.C. Â§ 112, and are unpatentable based on obviousness over the prior art. A. The 35 U.S. C. Â§ 112 Rejection In response to the Examiner's rejection of claim 1 as being anticipated by Park in an Office Action mailed on April 9, 2012, the Appellants amended claim 1 to recite that the knitted glove is "seamless." In response to the amendment, the Examiner rejected claims 1-12 and 20 under 35 U.S.C. Â§ 112 as failing to provide adequate support for the "seamless" limitation. Ans. 3--4. The Appellants argue that the phrase "knitted glove" is a term of art that one of ordinary skill in the art would recognize as implicitly referring to a knitted glove without seams. App. Br. 4--5; id. at 6; Reply Br. 6. In support of that position, the 1A .. ppellants cite to Post and U.S. Patent No. 7,836,839 B2 as providing evidence for such an interpretation. 6 App. Br. 5- 7; Reply Br. 6 (citing Post col. 4, 11. 65-67 and Park-2 col. 1, 11. 6-7 and 13- 18). Appellants have not provided adequate evidence that the phrase "knitted glove" is a term of art that one of ordinary skill in the art would recognize as implicitly referring to a knitted glove without seams. At the outset, we observe that the Specification of the '862 Application does not set forth that any knitted gloves described therein are seamless. Furthermore, 6 U.S. Patent No. 7,836,839 B2 issued to Park, and is, hereinafter, referenced as "Park-2." 6 Appeal2014-002011 Application 12/134,862 we observe that the portion of Post on which the Appellants rely states the following: Preferably, the entire glove 18 is integrally knitted such that the glove body, thumb stall and finger stalls are all integrally formed with one another in a seamless construction. Although the glove can be woven instead of knitted, knitting is preferred since knitted garments conform more easily to the contours of the human body than woven garments. Moreover, the seamless construction of knitted garments avoids any irritation that could be caused to the wearer from seams. Post 4:59---67. Thus, Post simply conveys that in one embodiment of its invention a knitted glove is "[p ]referably" formed in a manner regarded as "seamless." Id. The Appellants do not explain why Post's expression of a preference for a seamless construction with respect to a knitted gloves establishes that such a construction is inherent or implicit in connection with all knitted gloves. Indeed, that Post views such a construction as preferable suggests that other constructions of knitted gloves not recognized as seamless were known, albeit, not preferred. Nor do we agree with the Appellants that Park-2 provides suitable evidence of the inherent nature of seamlessness in knitted gloves. Park-2 states the following: In general, gloves can be roughly divided into sewn gloves and knitted gloves according to a manufacturing method thereof. The sewn gloves are manufactured by sewing the sections for the palm and the back of the hand along a cut line, whereas the knitted gloves are manufactured integrally without a separate seam. Park-2, 1: 13-18. 7 Appeal2014-002011 Application 12/134,862 The Appellants do not explain adequately why a "general" recognition that gloves may be "roughly divided" into those that are sewn and those that are knitted without seams conveys that such knitted gloves are necessarily in all cases understood in the art as seamless. Furthermore, other art of record in this proceeding undermines the Appellants' assertions. In particular, we take note of Park, which is discussed in detail below in conjunction with the Examiner's obviousness showing. Park conveys that one of ordinary skill in the art knew that protective garments, such as gloves, may be formed from heat-resistant fibers that are "knit" together. Park i-fi-12, 4. Park also describes that the fabrics of its particular disclosed invention may be "knit." Id. i1 4 7. The Examiner characterized Park as being directed to a "knitted glove" (Final Act. 3; Ans. 4 ), and the Appellants do not dispute that characterization. Indeed, during the course of prosecution of the '862 Application, the Appellants represented that Park fails to disclose a "knitted glove [that] comprises a seamless knitted glove. "7 The Appellants do not reconcile their apparent contradictory positions that Park teaches a "knitted glove" that is not seamless, yet a "knitted glove" is recognized in the art as always being of seamless construction. We have considered the record before us, including the Appellants' arguments, but are not persuaded that they show error in the Examiner's rejection of claims 1-12 and 20 as failing to satisfy the written description requirement of 35 U.S.C. Â§ 112. We sustain the Examiner's rejection. 7 See page 6 of the "Amendment" filed July 9, 2012. 8 Appeal2014-002011 Application 12/134,862 B. The Prior Art Rejections The Examiner rejected claim 1 as being unpatentable over Park in view of Post. Ans. 4--5. The Examiner relied upon Park to account for all the features of claim 1 except for the requirement that the knitted glove is seamless. To make up for that deficiency, the Examiner relied on Post as teaching a seamless knitted glove. Id. The Appellants contend that one of ordinary skill in the art would not have modified Park with the teachings of Post because of alleged "complications" associated with screen-printing the resin materials used to form the guard plates onto non-planar surfaces, such as the surface of a seamless knitted glove. App. Br. 8-9. The Appellants also argue that "the cited art fails to teach or suggest that it is even possible to [screen-print] resin materials used to form guard plates 102 onto non-planar surfaces of a knitted glove." Id. at 9. In response, the Examiner urges that the Appellants' allegations of complications are mere speculation. Ans. 8. We do not agree with the Appellants. Park discloses knitted gloves that are flame-retardant and puncture-resistant. Park i-fi-147, 49. The gloves include a substrate and guardplates affixed to the substrate. Id. i18. Park's Figure 2 is reproduced below: 9 Appeal2014-002011 Application 12/134,862 Figure 2 above illustrates guardplates 102 affixed to substrate 205 by a screen-printing process. Park i-fi-1 45, 48. Substrate 205 can be a knit fabric such as Kevlar. Id. i147. Guardplates 102 can be made from resins, such as an elastomer (i.e., a polymer). Id. i-fi-134, 40, 48. Post discloses knitted gloves that are puncture-resistant. Post 1 :5-11; 2:12-15. Post's Figure 3 is reproduced below: "'' "''Â·Â·Â·Â·Â·Â·Â· f~ ,;:.~~ ~- ., 1 i Â· ''Â·Â·Â·'I i \ '{ \\. Â·><:> \ // ) )' \ \ \\ '-'>< )/ ~cÂ§Â·' \\."'"._... .. Â·' \>\. _, .. > ...... Â·Â· "*.\ . ~; .. :~ ~~ .:' ~ 00 Â·llp FIG, 3 10 Appeal2014-002011 Application 12/134,862 Figure 3 above illustrates glove 18 including glove body 20, finger stalls 22, thumb stall 24, and palm coating 30. Post 5:10-12. Glove 18 is made of a knitted protective garment material such as Kevlar. Id. at 3:50- 64; 4:23-30. The glove is integrally knitted such that glove body 20, finger stalls 22, and thumb stall 24 are formed integrally in a "seamless" construction. Id. at 4:59-62. Palm coating 30 is an elastomeric material that is bonded to glove 18 by a screen-printing process. Id. at 5:10-14; 6:27-36. We observe that both Park and Post teach knitted gloves made of similar materials, that the knitted gloves including elastomer plates/coating, and that the plates/coating may be affixed to the knitted gloves by screen- printing. Thus, the teachings of the prior art convey readily that elastomeric material may be screen-printed onto the surface of a knitted glove, seamless or otherwise. We find unavailing the Appellants' general assertion that applying the teachings of Post regarding the seamless feature to the knitted glove of Park would somehow give rise to "complications" associated with screen-printing on a knitted glove. See App. Br. 8-9. That assertion simply fails to account appropriately for the clear disclosures of the prior art as would be understood by a skilled artisan. Indeed, that each reference already contemplates such screen-printing onto a knitted glove undermines the Appellants' contention that any "complications" present in applying screen-printing to such gloves would somehow preclude a skilled artisan from combining the teachings of Park and Post. We have considered the Appellants' arguments, but, for the foregoing reasons, we are not persuaded that they demonstrate error in the Examiner's rejection of claim 1. We sustain the Examiner's rejection of claim 1 as unpatentable over Park and Post. Claims 2-12 and 20 depend from claim 1. 11 Appeal2014-002011 Application 12/134,862 The Appellants do not challenge the rejections of claims 2-12 and 20 apart from claim 1. We also sustain the Examiner's rejections of those dependent claims over the prior art. IV. CONCLUSION We have reviewed the record before us and conclude that the Examiner's rejection of claims 1-12 and 20 under 35 U.S.C. Â§ 112 as failing to comply with the written description requirement is supported adequately. We have reviewed the record before us and conclude that the Examiner's rejections of claims 1-12 and 20 based on the prior art is supported adequately. V. ORDER The Examiner's decision to reject claims 1-12 and 20 as failing to comply with the written description requirement of 35 U.S.C. Â§ 112 is affirmed. The Examiner's decision to reject claims 1-12 and 20 over the prior art is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 12