Ex Parte Thompson

Patent Trial and Appeal BoardMay 10, 2017

13449535 (P.T.A.B. May. 10, 2017)

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. 13/449,535 04/18/2012 Ronnie Thompson 2904354-000031 5860 49840 7590 05/12/2017 Atlanta Raker Dnnelsinn EXAMINER Intellectual Property Department Monarch Plaza, Suite 1600 HICKS, VICTORIA J 3414 Peachtree Rd. ATLANTA, GA 30326 ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 05/12/2017 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): atlip@bakerdonelson.com tdavis@bdbc.com ipdocketing @bakerdonelson. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RONNIE THOMPSON Appeal 2015-005638 Application 13/449,535 Technology Center 3700 Before JENNIFER D. BAHR, ARTHUR M. PESLAK, and SEAN P. O’HANLON, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s non- final decision rejecting claims 1—16. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal 2015-005638 Application 13/449,535 THE CLAIMED SUBJECT MATTER Appellant’s invention is related to “limb protective coverings and more specifically to non-slip or slip resistant limb protective coverings.” Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A limb protective covering comprising: an elongated, tubular, flexible, and waterproof sleeve having a closed end and an open end opposite said closed end, said elongated, tubular, flexible, and waterproof sleeve being made of a solid film of styrene-butadiene-styrene material, and a retaining member configured to fit about said elongated, tubular, flexible, and waterproof sleeve when donned upon a limb. REJECTION Claims 1—16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hewitt (US 7,762,968 Bl, issued July 27, 2010) and Koide (US 5,395,305, issued Mar. 7, 1995). DISCUSSION Claims 1—5 and 12 16 The Examiner finds that Hewitt discloses the limitations of claims 1 and 12 except for “the solid film material is styrene-butadiene-styrene.” Non-Final Act. 3, 6 (citing Hewitt, Abstract, Figs, 1, 2, 6:30-35, 58—62). The Examiner finds that Koide discloses a solid film material that is styrene- butadiene-styrene (“SBS”). Id. at 3 (citing Koide, Abstract, 3:3—7, 4:1—5, 5:15—17, 7:65—68, claim 1). The Examiner concludes that it would have been obvious to modify the solid film material taught by Hewitt to be SBS as taught by Koide because the material is known in the art to be water repellant. Id. 2 Appeal 2015-005638 Application 13/449,535 Appellant contends that the Examiner’s combination does not produce a solid film of SBS because Koide discloses “a wound covering material that is made of a cloth of highly aqueous gel forming substance . . . having a coating of a water-repellent substance (such as styrene-butadiene-styrene) attached to a moisture permeation controlling layer.” Br. 5, 13. Appellant argues that “a ‘coating’ typically cannot exist alone” and is therefore “not a stand alone solid layer.” Id. at 5, 13—14. Appellant also argues that Hewitt discloses a cast accessory made of a single layer of waterproof material and there would be “no reason to coat a first water repellant material with a second water repellant material.” Id. at 6, 14. Appellant also argues that the result of the combination would be “a cloth material with interstices or spaces between threads” coated with SBS which would not be a solid film material. Id. For the following reasons, we do not sustain the rejection of claims 1 and 12. Koide discloses a “wound-covering material 1 . . . made of the support layer 3 and the moisture permeation-controlling layer 4.” Koide, 6:48—50, Fig. 1. Support layer 3 is “coated with a water-repellent substance.” Id. 2:31—32. The coating of water-repellant substance on support layer 3 may be formed of “styrene-butadiene-styrene.” Id. 3:6. We are persuaded by Appellant’s contention that the limitation in claim 1 of “a solid film of’ SBS material does not read on Koide’s disclosure of a coating of SBS on Koide’s support layer 3. Appellant’s Specification provides that sleeve 11 “is made of a high performance elastomeric polymer blend, such as a styrene-butadiene-styrene (SBS) based monolayer elastomeric antistatic solid film.” Spec. 3,11. 7—10. Sleeve 11 is not illustrated as a coating on an underlying material. See id. Fig. 2. A 3 Appeal 2015-005638 Application 13/449,535 coating, as disclosed by Koide, of one material onto another material does not necessarily take the form of a solid film, and the Examiner has not directed us to any disclosure in Koide that the SBS coating on layer 3 forms a solid film. Therefore, we do not sustain the rejection of independent claims 1 and 12. We also do not sustain the rejection of claims 2—5, which depend from claim 1, and claims 13—16, which depend from claim 12 for the same reasons. Claims 6—11 New Ground of Rejection-3 5 U.S.C. § 112, Second Paragraph We exercise our discretion under 37 C.F.R. § 41.50(b) and enter a NEW GROUND OF REJECTION against claim 6 under 35 U.S.C. § 112, second paragraph as being indefinite for failure to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. “As the statutory language of ‘particularity]’ and ‘distinctness]’ indicates, claims are required to be cast in clear — as opposed to ambiguous, vague, indefinite —terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (citation omitted). “It is the [Appellants’] burden to precisely define the invention, not the PTO’s.” In re Morris, 111 F.3d 1048, 1056 (Fed. Cir. 1997). Claim 6 recites the “film of high performance elastomeric polymer blend having a coefficient of friction of at least 0.6.” Coefficient of friction is not an inherent property of a material such as the recited high performance elastomeric polymer blend, but rather is dependent on the characteristics of both the surface of that material and the surface that is in contact therewith. See http://www.engineeringtoolbox.com/friction-coefficients-d_778.html, Friction and Friction Coefficients, last accessed May 1, 2017; see also 4 Appeal 2015-005638 Application 13/449,535 Marks ’ Standard Handbook for Mechanical Engineers, Section 3.2 Friction (Eugene A. Avallone & Theodore Baumeister III eds., 9th ed. 1987) (“The coefficients of friction for dry surfaces (dry friction) depend on the materials sliding over each other and on the finished condition of the surfaces.”). In addition, there are two types of coefficient of friction, static and kinetic. Id. Appellant’s Specification provides both static and kinetic coefficients of friction for SBS and Polyethylene “on a linoleum surface.” Spec. 4—5, 7. In addition, Appellant’s data show a distinction in coefficient of friction depending on whether the linoleum surface is wet or dry. Therefore, we determine that the recitation in claim 6 “having a coefficient of friction of at least 0.6” is unclear without further claim limitations concerning how the coefficient of friction is to be determined. We enter a new ground of rejection against claim 6 and claims 7—11 which depend from claim 6 for indefmiteness under 35 U.S.C. § 112, second paragraph. In light of the New Ground of Rejection, we do not sustain the rejection of claims 6—11 under 35 U.S.C. § 103(a) as being unpatentable over Hewitt and Koide because this rejection is necessarily based on speculative assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862—63 (CCPA 1962). Our decision regarding this rejection is based solely on the indefmiteness of the claims. We emphasize that our decision does not mean the claims are patentable. Rather, we leave the patentability determination of these claims to the Examiner. See MPEP § 1213.02. DECISION The Examiner’s decision rejecting claims 1—16 under 35 U.S.C. § 103(a) is reversed. 5 Appeal 2015-005638 Application 13/449,535 We enter a new ground of rejection of claims 6—11 for indefiniteness under 35U.S.C. § 112, second paragraph. FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides: When the Board enters such a non-final decision, the Appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the Examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in this decision. Should the examiner reject the claims, [Appellants] may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 6 Appeal 2015-005638 Application 13/449,535 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)(l)(iv). REVERSED; 37 C.F.R, $ 41.50(b) 7