Ex Parte Thompson et al

Patent Trial and Appeal Board

May 8, 2018

14152338 (P.T.A.B. May. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/152,338 01/10/2014 Eric Thompson
99653 7590 05/10/2018
Moser Taboada I Ansell Limited
1030 Broad Street
Suite 203
Shrewsbury, NJ 07702
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.
A0116-00CON2 5302
EXAMINER
WORRELL JR, LARRY D
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
05/10/2018 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):
docketing@mtiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC THOMPSON, DA VE NARASIMHAN,
JEFFREY C. MORELAND, and HAFSAH BINTI MOHD
Appeal2017-007103 1
Application 14/152,33 82
Technology Center 3700
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 2, 4---6, 8-11, and 13-20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Our Decision references Appellants' Appeal Brief ("App. Br.," filed
October 26, 2016) and Reply Brief ("Reply Br.," filed April 6, 2017), the
Examiner's Answer ("Ans.," mailed February 28, 2017), and Final Office
Action ("Final Act.," mailed June 20, 2016).
2 Appellants identify Ansell Limited as the real party in interest. App. Br. 3.
Appeal2017-007103
Application 14/152,338
THE INVENTION
Independent claim 1, reproduced below with added emphasis, is
illustrative of the subject matter on appeal.
1. A glove, comprising:
a knitted liner having a plurality of stitches comprising a
yam having a diameter that fits within at least one 18 gauge
needle, the knitted liner comprising a plurality of finger
components, a thumb component, and a palm component; and
a polymeric coating adhered to at least a portion of the
knitted liner,
wherein a ratio of a thickness of the polymeric coating to
a thickness of the knitted liner is approximately 0. 7 5 to
approximately 1.25.
App. Br. 22 (Claims App'x.).
THE REJECTIONS
I. Claims 1, 4, 6, 8-11, 14, and 16-20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Narasimhan et al.
(US 2007 /0022511 Al, pub. Feb. 1, 2007) ("Narasimhan") and
Edwards (US 1,725,065, iss. Aug. 20, 1929)3.
II. Claims 2 and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Narasimhan, Edwards, and Skinner (US 2,694,029, iss. Nov. 9,
1954).
III. Claims 5 and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Narasimhan, Edwards, and Vero et al. (US 6,823,699 Bl, iss.
Nov. 30, 2004).
3 Although the Examiner did not specifically address claim 20, we treat the
omission as a typographical error and interpret the rejection of claim 4,
which recites similar subject matter, as applicable to claim 20.
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Application 14/152,338
ANALYSIS
Rejection I
Independent claim 1 and dependent claims 4, 6, and 8-10
Independent claim 1 requires, in part, (1) a knitted liner, (2) a
polymeric coating, and (3) "wherein a ratio of a thickness of the polymeric
coating to a thickness of the knitted liner is approximately 0.75 to
approximately 1.25." See App. Br. 22 (Claims App'x.).
The Examiner finds that Narasimhan discloses limitations (1) and (2),
but "Narasimhan does not expressly teach the specific ratio of a thickness of
the polymeric coating to a thickness of the knitted liner as approximately
0.75 to approximately 1.25." Final Act. 4. As for the "ratio" in
limitation (3), the Examiner finds that "Edwards teaches a coated glove
([F]igures 2 and 3) which shows polymeric coating (5) continuously
changing across the glove surface" and "[ s ]elf-evidently parts of this coating
would fall within the claimed ratio thickness of the polymeric coating to a
thickness of the knitted liner as approximately 0.75 to approximately 1.25."
Id. And the Examiner concludes that:
Id.
[i]t would have been obvious at the time then invention was made
to choose from a number of different thickness of the polymeric
coating to a thickness of the knitted liner ratios including
approximately .75 to approximately 1.25 in order to enhance the
protection provided by the polymer coating while optimizing the
suppleness of the glove for the wearer.
Responding to Appellants' arguments in the Answer, the Examiner
maintains that "Edward [sic] shows a coated glove in which the ratio of
coating thickness to fabric thickness varies and is adjusted for different areas
of the glove" and that "this variable coating thickness clearly provides the
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Application 14/152,338
suggestion to adjust the ratio of coating thickness to fabric thickness in order
to enhance the protection provided by the polymer coating while optimizing
the suppleness of the glove for the wearer." Ans. 14.
The legal conclusion of obviousness must be based on the particular
facts of each case, not on per se rules. In re Ochiai, 71 F .3d 1565, 1571
(Fed. Cir. 1995). Indeed, as the Court in KSR made clear, "'[r]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness."' KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (citing In re Kahn, 441F.3d977, 988
(Fed. Cir. 2006)).
In cases involving the optimization of a result-effective variable,
"evidence that the claimed ... dimensions are result-effective variables" is
generally sufficient to "render[] their optimization within the ordinary skill
in the art." In re Applied Materials, Inc., 692 F.3d 1289, 1296 (Fed. Cir.
2012) (citing In re Boesch, 617 F.2d 272, 276 (CCPA 1980)). And in cases
where "the prior art discloses dimensional values overlapping the ranges
claimed," "[ s ]uch overlap itself provides sufficient motivation to optimize
the ranges." Id. at 1295 (citing In re Peterson, 315 F.3d 1325, 1330 (Fed.
Cir. 2003)). However, even where the prior art discloses dimensional values
overlapping the claimed range, "[ t ]he question is whether the dimensions
were known to be result-effective variables." Id. Moreover, "the absence of
any disclosure regarding the relationship between the variable and the
affected property may preclude a finding that the variable is result-
effective." Id. at 1297. See also In re Antonie, 559 F.2d 618, 620 (CCPA
1977) (One exception to "the rule that the discovery of an optimum value of
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Application 14/152,338
a variable in a known process is normally obvious" applies where "the
parameter optimized was not recognized to be a result-effective variable.")
Here, the Examiner has not made a finding that the claimed "ratio of a
thickness of the polymeric coating to a thickness of the knitted liner" is a
result-effective variable. The Examiner finds that "Edwards self-evidently
has a thickness ... [falling] within the claimed ranges" and "the thickness
varies from almost nothing to at least 2 times the relative thickness of the
glove fabric" (Ans. 14) (citing Edwards Figs. 2, 3). In other words, Edwards
only shows a wide thickness range of the rubber coating, which overlaps the
claimed range. However, the Examiner has not pointed to any recognition in
Edwards that "the ratio of a thickness of the polymeric coating to a thickness
of the knitted liner" (emphasis added) is a result-effective variable.
The Examiner does not direct us to any discussion of adjusting or
optimizing the "self-evident" ratio in Edwards and appears to rely on the
theory of inherency. In particular, the Examiner does not provide any
technical reasoning or point to any teaching in Edwards as to the thickness
of the woven fabric glove itself, or any discussion of the ratio of the
thickness of the rubber coating to the thickness of the glove fabric. Rather,
the evidence shows that Edwards discloses adjusting the thickness of the
rubber coating (alone) at certain portions of the glove. See, e.g., Edwards
col. 1, 11. 32-37 ("gradually reduce the thickness of the rubber coating
between the finger stalls and thereby allow these portions of the glove to be
protected but at the same time prevent the glove from being uncomfortable
when worn"); id. at col. 2, 11. 85-88 ("portions 7 of the rubber covering
which extend along the sides of the stalls are gradually reduced in thickness
as clearly shown in Figure 3 "). Therefore, we do not to see, and the
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Application 14/152,338
Examiner does not adequately explain, how Edwards recognized that the
ratio of the thickness of the rubber coating to a thickness of the glove fabric
is a result-effective variable, the optimization of which would have been
obvious to a person of ordinary skill in the art.
Absent recognition in the prior art of the claimed relationship as
result-effective, the Examiner's finding of dimensional values overlapping
the claimed range in Edwards is not sufficient to establish a prima facie case
of obviousness. In re Antonie, 559 F.2d at 620. Therefore, the Examiner
has provided insufficient reasoning as to why a person of ordinary skill in
the art at the time of the invention would have modified the knitted glove of
Narasimhan to have a polymeric coating "wherein a ratio of a thickness of
the polymeric coating to a thickness of the knitted liner is approximately
0.75 to approximately 1.25," as required by claim 1.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1 and dependent claims 4, 6, and 8-10 as unpatentable
over Narasimhan and Edwards.
Independent claims 11 and 17 and dependent claims 14, 16, and 18-20
Independent claims 11 and 1 7 recite a similar limitation as
independent claim 1, and are rejected based on the same unsupported
reasoning discussed above. See Final Act. 3--4; see also Ans. 3--4. Thus, we
do not sustain the rejection of independent claims 11 and 17, as well as their
dependent claims 14, 16, and 18-20 as unpatentable over Narasimhan and
Edwards.
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Application 14/152,338
Re} ections II and III
Dependent claims 2, 5, 13, and 15
Claims 2, 5, 13, and 15 depend, either directly or indirectly, from
independent claims 1 and 11. The Examiner's reliance on the additional
prior art references in Rejections II and III does not remedy the deficient
reasoning discussed above. Thus, we do not sustain the rejections of
dependent claims 2, 5, 13, and 15 under 35 U.S.C. § 103(a).
DECISION
The Examiner's rejections under 35 U.S.C. § 103(a) are reversed.
REVERSED
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