Ex Parte SNYDER et alDownload PDFPatent Trial and Appeal BoardSep 18, 201813831387 (P.T.A.B. Sep. 18, 2018) Copy Citation 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 2 Appeal2017-000681 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. 3 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 4 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. 5 Appeal2017-000681 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 6 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 7 Appeal2017-000681 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. 8 Appeal2017-000681 Application 13/831,387 DECISION The Examiner's decision to reject claims 8, 9, 25-28, and 33 is reversed. REVERSED 9 Copy with citationCopy as parenthetical citation