Ex Parte TerpinskiDownload PDFPatent Trial and Appeal BoardOct 31, 201211346474 (P.T.A.B. Oct. 31, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/346,474 02/02/2006 Casper M. Terpinski P-8607.001 2448 29767 7590 10/31/2012 ERIC W. CERNYAR, P.C. 1122 GOLDEN CYCLE CIRCLE CRIPPLE CREEK, CO 80813 EXAMINER HADEN, SALLY CLINE ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 10/31/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CASPER M. TERPINSKI ____________________ Appeal 2010-007126 Application 11/346,474 Technology Center 3700 ____________________ Before: KEN B. BARRETT, PHILLIP J. KAUFFMAN, and WILLIAM V. SAINDON, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007126 Application 11/346,474 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-16 and 21-24. We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A magnetic, single-finger glove designed to conform to an adult human index finger, the magnetic, single-finger glove comprising: a fabric assembly sized and shaped to be worn by the index finger, the fabric assembly defining regions corresponding to the proximal, middle, and distal segments of the index finger; and the fabric assembly including a substantially elastic top panel corresponding to substantially only the dorsal side of the finger and a substantially inelastic bottom panel corresponding to substantially only the palmar side of the finger; and a small magnet affixed to the fabric assembly in the region corresponding to the distal segment of the index finger, the small magnet being confined within an area on the fabric assembly of less than 0.5 square inches; whereby the single-finger glove is operable to magnetically grasp small metal objects near the fingertip of a person wearing the single-finger glove. References The Examiner relies upon the following prior art references: Bradford Calvert Lopez Widdemer US 1,301,093 US 4,944,437 US 5,720,046 US 6,052,828 Apr. 22, 1919 Jul. 31, 1990 Feb. 24, 1998 Apr. 25, 2000 Appeal 2010-007126 Application 11/346,474 3 Rejections I. Claims 23 and 24 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. II. Claims 1, 4-6, 9-13, 16, and 22-24 are rejected under 35 U.S.C. § 103(a) as unpatentable over Calvert and Bradford. III. Claims 2-3 and 14-15 are rejected under 35 U.S.C. § 103(a) as unpatentable over Calvert, Bradford, and Widdemer. IV. Claims 7, 8, and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Calvert, Bradford, and Lopez. SUMMARY OF DECISION We REVERSE. OPINION Rejection I – Written Description The Examiner found that the limitation “gripping members” in claims 23 and 24 is new matter. Ans. 3. The Examiner does not explain why this limitation is new matter. Appellant points to paragraph 30 of the Specification, which states: “[s]ilicone ovals 170 may be affixed to the outside surface 134 of the bottom side fabric piece 130 to facilitate gripping ….” App. Br. 46. This disclosure appears to provide support for the limitation of “gripping members.” We do not sustain Rejection I. Rejection II – Calvert and Bradford Appellant alleges that the Examiner erred in Rejection II by failing to address properly the limitations of claims 1 and 10 regarding an elastic upper surface and an inelastic lower surface. App. Br. 41-43; Reply Br. 1. Appeal 2010-007126 Application 11/346,474 4 The Examiner addressed these limitations by acknowledging that the prior art did not disclose these limitations but noting: [r]egarding the limitation of the elastic and inelastic material, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Ans. 4. The Examiner provides no further explanation. While Leshin-like reasoning may apply to many situations, Leshin does not set forth a blanket rule that any time the difference between the claimed invention and the prior art is a material, an examiner is excused from providing the requisite underpinning and reasoning for concluding that the claimed invention is obvious. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006) (requiring “some rationale, articulation, or reasoned basis to explain why the conclusion of obviousness is correct”). Here, the Examiner has not offered any explanation why it would have been obvious to one of ordinary skill to choose an inelastic lower and elastic upper based on those materials’ suitability for an intended use. Accordingly, we do not sustain the rejection of claims 1 or 10, or of claims 4-6, 9, 11-13, and 22-24, which depend therefrom. Because the Examiner has not presented a prima facie case of obviousness, we do not reach the issue of secondary considerations raised by Appellant. Rejections III & IV – Calvert, Bradford, and either Widdemer or Lopez The claims of these rejections depend from claims 1 or 10. The Examiner makes no additional findings that cure the deficiency identified above in Rejection II. Accordingly, we do not sustain Rejections III and IV. Appeal 2010-007126 Application 11/346,474 5 DECISION We reverse the Examiner’s decision regarding claims 1-16 and 21-24. REVERSED hh Copy with citationCopy as parenthetical citation