Ex Parte Wiseman et al

Patent Trials and Appeals Board

Jun 26, 2019

14037524 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/037,524 09/26/2013
132435 7590 06/28/2019
CGD Legal Services, P.C. d/b/a
Darrow Mustafa PC
410 N. Center Street
Suite 200
Northville, MI 48167
FIRST NAMED INVENTOR
Matthew Nicholas Wiseman
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.
WISE-100-A 1964
EXAMINER
SPATZ,ABBYM
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
06/28/2019 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@darrowmustafa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW NICHOLAS WISEMAN and
STACI LYNN HAYMAN
Appeal2018-009177
Application 14/037,524 1
Technology Center 3700
Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 25-27, 29, 34, 36, 43, 45, and 47, as set forth in the
Final Office Action ("Final Act.," mailed Nov. 27, 2017) 2-6. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify "RMS Glove, LLC" as the real party in interest.
Appeal Brief ("Appeal Br.," filed Apr. 23, 2018) 1.
Appeal2018-009177
Application 14/037,524
CLAIMED INVENTION
Appellants' claimed invention is directed to a "GOLF GLOVE
WITH CLEANING MEMBERS." Spec., Title.
Independent claim 25, reproduced below, is illustrative of the subject
matter on appeal.
25. A golf glove, comprising:
a cover configured as a sheath for a hand and having an
outermost surface and an innermost surface defining a hand
cavity, the cover including a hand opening that opens to the
hand cavity, a palm portion, a back portion opposing the palm
portion, and a slit across the back portion enabling different
sizes of the hand opening;
a flap member permanently attached to the cover on one
side of the slit, and having a free end, the free end detachably
and reattachably attached to the cover on the other side of the
slit in an overlying relationship with the outermost surface of
the cover to maintain a size of the hand opening; and
a cleaning member overlying the outermost surface of the
cover and underlying the free end of the flap member in the
footprint of the free end of the flap member, and attached to the
cover, the cleaning member including a retaining material
configured to absorb and retain liquid, a wear-resistant porous
outermost surface in liquid communication with the retaining
material and sized and configured to scrub dirt and debris from
a golf ball, and a barrier material completely separating the
retaining material from liquid communication with the cover,
wherein the attachment between the cleaning member and the
cover engages a perimeter of the porous outermost surface to
the outermost surface of the cover.
Appeal Br. 16, Claims App.
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Appeal2018-009177
Application 14/037,524
REJECTION2
Claims 25-27, 29, 34, 36, 43, 45, and 47 are rejected 040780, as
failing to comply with the written description requirement. Final Act. 2.
ANALYSIS
Written Description Requirement
Claims 25, 26, and 43- "engages a perimeter"
In rejecting independent claim 25, and similarly claims 26 and 43, as
failing to comply with the written description requirement, the Examiner
finds "the specification and drawings do not show or describe an attachment
between the cleaning member and the cover engaging a perimeter of the
porous outermost surface to the outermost surface of the cover." Final
Act. 3 ( emphasis added). According to the Examiner, the "specification and
drawings do not show any interlocking or other[] physical engagement of the
perimeter of the porous outermost surface to the outermost surface of the
cover." Ans. 2-3.
Appellants contend "[i]n contrast to the Examiner's claim
interpretation, the ordinary meaning of engage is 'to attract and hold fast'
and, although engage could connote 'interlocking' in the context of
'mechanics,' no ordinary meaning of engage requires touching." Appeal
Br. 5 (citing Dictionary.com). Citing paragraphs 26, 33, 38, 44, and Figures
1, 2, 4, and 6 of the Specification (id.), Appellants argue that a person of
ordinary skill in the art "could reasonably conclude that the perimeters of the
porous outermost surfaces of the attached cleaning members are engaged to
2 "The[§] 112(b) rejection of claims 25-29 [and] 31--48 has been
withdrawn." Answer ("Ans.," mailed July 26, 2018) 2.
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Appeal2018-009177
Application 14/037,524
the outermost surface of the cover, and that the reason for such perimeter
engagement is the attachment of the cleaning members to the glove." Id. at
IO; see also Reply Brief ("Reply Br." filed Sept. 26, 2018) 1-2.
We agree with the Examiner that Appellants' proffered "definition 'to
attract and hold fast' ... is referring to holding a person's attention, not the
relationship between physical parts." Ans. 2. We also agree that although
the drawings and Specification support the cleaning member being attached
to the outermost surface of the cover, and that the outermost layer of the
cleaning member is attached to the cover, there is no disclosure of an
engagement or interlocking between the cleaning member and the cover
engaging a perimeter of the porous outermost surface to the outermost
surface of the cover. Id. at 3. The term "engage" is also defined as
"to fit one part of a machine into another so they move together, or
cause something to fit into and move together."3 This definition is
consistent with Appellants' use of the term "engage" in the Specification.
See, e.g., Spec. ,r,r 25 ("An example of a releasable fastener configuration
may include a hook-and-loop fastener having a loop portion and hook
portion that cooperatively engages the loop portion and which enables the
two fastener portions to be repeatedly connected and disconnected from one
another."), 44 ("The cleaning member fastener 82 may include a first
cleaning member fastener 86 that cooperatively engages the second fastener
member 50 attached to the second back section 36 of the glove 10, and a
second cleaning member fastener 88 that cooperatively engages the first
3 Engage Definition, CAMBRIDGE ON-LINE DICTIONARY,
https://dictionary.cambridge.org/us/dictionary/english/engage (last visited
June 20, 2019).
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Appeal2018-009177
Application 14/037,524
fastener member 48 attached to the flap member 40."). Therefore, upon
reviewing the Specification, Appellants' disclosure would convey to a
person of ordinary skill in the art the same meaning of the term "engage"
above as ascribed by the Examiner. Accordingly, we agree with the
Examiner that the disclosure of the application relied upon could not
reasonably convey to those skilled in the art that the Appellants had
possession of the contested claimed subject matter as of the filing date. As
such, we sustain the rejection of claims 25, 26, and 43 under 35 U.S.C.
§ 112(a) as to the phrase "engages a perimeter."
Claims 26, 27, 29, 34, 36, 43, 45, and 47- ''permanently attached to"
We disagree with the Examiner's additional finding that "the
application as filed fails to support the phrase "permanently attached to"
because "[ s ]titches can be undone and elements united by adhesive can be
pulled apart." Ans. 5 ("One of ordinary skill in the art does not necessarily
view stitching and adhesives as permanent attachment techniques.").
Instead, we agree with Appellants:
There is no basis in reality for speculating that a POSIT A using
stitching and adhesives to attach things in a glove would not
"intend" for them "to exist or function for a long, indefinite
period without regard to unforeseeable conditions." See
dictionary.com. Actually, rather than explaining why they are
not permanent attachment techniques, the fact that stitches
would have to [be] "undone" and elements united by adhesive
would have to be "pulled apart" alludes to the very same
"unforeseeable conditions" that positively qualify them as such.
Relatedly, when speculating the views of a POSIT A, the
Examiner fails to reconcile that the Examiner's claim
interpretation is inconsistent with both the disclosure and a
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Appeal2018-009177
Application 14/037,524
POSITA's interpretation, to the point where nothing being
described as permanent actually qualifies as such.
Reply Br. 2-3
In view of the foregoing, we do not sustain the rejection of claims 26,
27, 29, 34, 36, 43, 45, and 47 under 35 U.S.C. § 112(a) as to the phrase
"permanently attached to."
DECISION
The rejection of claims 25, 26, and 43 under 35 U.S.C. § 112(a) as to
the phrase "engages a perimeter" is affirmed.
The rejection of claims 26, 27, 29, 34, 36, 43, 45, and 47 under 35
U.S.C. § 112(a) as to the phrase "permanently attached to" is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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