NIKE, Inc.

Patent Trials and Appeals BoardMar 2, 2021

2020004658 (P.T.A.B. Mar. 2, 2021)

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. 15/431,307 02/13/2017 Timothy A. Clark 201882-408594/10-0258US97 9771 126323 7590 03/02/2021 Honigman LLP/Nike 650 Trade Centre Way Suite 200 Kalamazoo, MI 49002-0402 EXAMINER SZAFRAN, BRIEANNA TARAH LARELL ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 03/02/2021 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): Patents@honigman.com araymond@honigman.com nike_docketing@cardinal-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TIMOTHY A. CLARK ____________ Appeal 2020-004658 Application 15/431,307 Technology Center 3700 ____________ Before JOHN C. KERINS, STEFAN STAICOVICI, and EDWARD A. BROWN, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 21–44, which are all the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter NEW GROUNDS OF REJECTION. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies NIKE, Inc., as the real party in interest. Appeal Br. 2. Appeal 2020-004658 Application 15/431,307 2 CLAIMS Claims 21, 28, 35, and 40 are independent. Claim 21, reproduced below, illustrates the claimed subject matter. 21. A system for conveying a message, the system comprising: a first glove member including a first palm portion, first finger sheaths extending from the first palm portion in a first direction parallel to a longitudinal axis of the first glove member, a first thumb sheath, and a first portion of a first word displayed on the first palm portion and having a first baseline axis that is oriented at a first oblique angle relative to the longitudinal axis of the first glove member and extends through an area disposed between the first finger sheaths and the first thumb sheath; and a second glove member including a second palm portion, second finger sheaths extending from the second palm portion in a second direction parallel to a longitudinal axis of the second glove member, a second thumb sheath, and a second portion of the first word displayed on the second palm portion and having a second baseline axis that is oriented at a second oblique angle relative to the longitudinal axis of the second glove member and extends through an area disposed between the second finger sheaths and the second thumb sheath, the first portion of the first word being aligned with the second portion of the first word to spell the first word when the second baseline axis is aligned with the first baseline axis in a first position. Appeal Br. 26 (Claims App.). REJECTIONS Claims 21–23, 26–30, 33, and 34 are rejected under 35 U.S.C. § 102(e) as anticipated by Warman (US D635,736 S, issued Apr. 12, 2011). Final Act. 4. Appeal 2020-004658 Application 15/431,307 3 Claims 24, 25, 31, 32, and 35–44 are rejected under 35 U.S.C. § 103(a) as unpatentable over Warman. Final Act. 14. ANALYSIS Anticipation by Warman Claims 21–23, 26, and 27 The Examiner finds Warman discloses a system for conveying a message meeting all limitations of claim 21. Final Act. 4–9. Particularly, the Examiner finds that Warman discloses a first glove member (Fig. 1) including a first palm portion, first finger sheaths, and a first thumb sheath, and a second glove member (Fig. 2) including a second palm portion, second finger sheaths, and a second thumb sheath, as recited in claim 21. Final Act. 4–7. The Examiner also finds the first glove member includes a first portion (“W”) of a first word (“WV”) displayed on the first palm portion and having a first baseline axis, and the second glove member includes a second portion (“V”) of the first word displayed on the second palm portion and having a second baseline axis. Id. at 5, 7. In support, the Examiner provides annotated versions of Warman’s Figures 1 and 2. Id. at 6 (annotated Fig. 1, hereinafter “first figure”), 8 (annotated Fig. 2, hereinafter “second figure”). The Examiner determines that Warman’s gloves “may be moved when worn or not such that ‘the first portion of the first word [is] aligned with the second portion of the first word to spell the first word when the second baseline axis is aligned with the first baseline axis in a first position,’ as claimed.” Id. at 9 (see Examiner’s figure combining Warman’s Figures 1 and 2, hereinafter “third figure”). Appeal 2020-004658 Application 15/431,307 4 Appellant does not contest the Examiner’s findings that Warman’s finger gloves each include the claimed structural elements of a palm portion, finger sheaths, and a thumb sheath. Instead, Appellant’s argument is directed to purported differences between the information displayed on the claimed first and second glove members versus the information displayed on Warman’s left hand and right hand gloves. Appellant asserts that system 300 shown in Appellant’s Figure 3 “is configured such that the entire word is legibly displayed in a continuous and uninterrupted manner when the palm portions (102, 202) of the glove members (100, 200) are interlocked with each other to align the baseline axes (A100, A200).” Appeal Br. 9 (emphasis added). Appellant contends that, in Warman, “the ‘W’ and the ‘V’ are separately displayed when the gloves are in a parallel, spaced-apart arrangement.” Id. The Examiner responds that claim 21 does not recite that “the entire word [would] be legibly displayed in a continuous and uninterrupted manner when the palm portions of the glove members are interlocked with each other to align the baseline axes.” Ans. 4. We agree. Accordingly, Appellant’s contention is unpersuasive. Appellant notes that Warman explains the intended configuration and use of its gloves, as follows: West Virginia is one of a few states that you can use your fingers to make the state’s abbreviation. I have included drawings of the gloves that show the W on the right hand palm side and the V on the left hand palm side. To my knowledge, I have never seen gloves with a state’s abbreviation on fingers at any sporting event to show state spirit. Appeal Br. 9. Thus, Appellant states, Appeal 2020-004658 Application 15/431,307 5 Warman does not disclose portions of a word formed on palm portions of first and second glove members, but instead discloses letters of an abbreviation formed on the fingers of gloves. To be clear, the description of Warman specifies that the letters are formed on the ‘palm sides’ of the gloves, not on the palms themselves. Id. at 10 (emphasis added). Appellant contends that Warman’s gloves do not disclose the formation of a word, regardless of how the gloves are arranged. Appeal Br. 11. In support, Appellant proffers several definitions of the term “word.” Id. One definition defines a “word” as “‘a written or printed character or combination of characters representing a spoken word.’”2 Id. Appellant contends that “‘WV’ does not represent a spoken word, but is instead a combination of two letters to form an abbreviation.” Id. Appellant also provides a definition of the term “abbreviation” as “‘a shortened form of a written word or phrase used in place of the whole word or phrase.’”3 Id. Appellant contends that “[a]n abbreviation, and specifically, the abbreviation ‘WV,’ is not a word.” Id. Appellant asserts that an abbreviation is used in place of a word. Id. Appellant also contends that, even assuming the letters “W” and “V” were considered to be portions of a word, Warman still fails to disclose first and second glove members each having a respective portion of a word displayed on a palm portion thereof according to claim 21. Appeal Br. 11. 2 Citing “Word Definition, Merriam-Webster.com, https://www.merriam- webster.com/dictionary/word.” 3 Citing “Abbreviation Definition, Merriam-Webster.com, https://www.merriam-webster.com/dictionary/word.” Appeal 2020-004658 Application 15/431,307 6 The Examiner responds that the claim language does not require “the entire first and second portions of the first word to be displayed on the majority of the palms or only on the palms of the first and second gloves.” Ans. 10 (emphasis added). We agree. In Warman’s Figures 1 and 2, portions of Warman’s letters are formed on the fingers, and the bases of the letters joining the finger portions are on the palm. As such, we are unpersuaded that Warman’s letters are not displayed, at all, on palm portions of the respective gloves. The Examiner further submits that “the letters ‘W’ and ‘V’ are well- known abbreviated letters for the word/logo of ‘West Virginia’ or ‘WV’ on its own . . . [and] the ‘W’ and ‘V’ are written, printed characters representing a word as suggested by applicant’s above definition of ‘word.’” Ans. 6 (emphasis added). The Examiner submits that Appellant’s definition of an “abbreviation” “in itself explains that an abbreviated form of a word is still a word via ‘a shortened form of a written word or phrase used in place of the whole word or phrase.’” Id. We agree with the Examiner that Warman’s abbreviations can be considered as a written or printed character (“W” or “V”), or a combination of characters (“WV”), representing the spoken words “West,” “Virginia,” and “West Virginia,” respectively. Accordingly, we are unpersuaded that Warman’s abbreviations cannot be considered as corresponding to the claimed “first word.” Appellant further contends that, even assuming Warman’s letters could be interpreted as portions of a word and as being displayed on palm portions of glove members, “Warman still fails to disclose a first portion of a first word and a second portion of the first word each having a respective Appeal 2020-004658 Application 15/431,307 7 baseline axis that is oriented at an oblique angle relative to a longitudinal axis of the respective glove member,” as claimed. Appeal Br. 12 (emphasis added). According to Appellant, a “baseline” is commonly understood in the art to mean “the imaginary line on which the majority of the characters in a typeface rest.” Id. Appellant contends that, “as shown in Figures 1 and 2 of Warman, the ‘W’ and ‘V’ are aligned along the longitudinal axes of the gloves such that the baselines of the letters would be perpendicular to the longitudinal axes.” Id. at 13 (emphasis added). Appellant asserts that the first “baseline axis” and the second “baseline axis” added to the first and second figures (see Final Act. 6, 8) are not consistent with a broadest reasonable interpretation of a “baseline axis” (i.e., a line upon which characters of a word rest), but are drawn along edges of the letters in an arbitrary manner to provide axes oriented at an oblique angle, as claimed. Appeal Br. 14. Appellant also contends that, even assuming the baseline axes superimposed onto Warman’s Figures 1 and 2 (Final Act. 6, 8) are consistent with a reasonable claim interpretation (of “baseline axis”), these figures still do not teach or disclose “first and second glove members that can be arranged such that a word is spelled when the second baseline axis is aligned with the first baseline axis.” Appeal Br. 16. Appellant contends that the Examiner’s third figure (Final Act. 9) does not disclose “a first portion of a first word being aligned with a second portion of the first word to spell the first word when a second baseline axis of the second portion is aligned with a first baseline axis of the first portion in a first position.” Id. Appellant contends that no word is shown in that figure, but only “an illegible, abstract shape.” Id. Appeal 2020-004658 Application 15/431,307 8 Appellant still further contends that Warman is a design patent and does not contemplate positioning the gloves as suggested by the Examiner (see Final Act. 9). Appeal Br. 17. Rather, Appellant contends, “the entire purpose of the gloves of Warman is to display a separate ‘W’ and a separate ‘V’ to identify the wearer of the gloves as being a fan of West Virginia.” Id. at 18. The Examiner responds that Appellant’s original disclosure does not mention the term “baseline” or the term “baseline axis,” and a “baseline axis” is not depicted in the original drawing figures. Ans. 13. The Examiner also maintains that claim 21 does not “claim further how the word is to be spelled other than that . . . ‘the first portion of the first word [is] aligned with the second portion of the first word to spell the first word when the second baseline axis is aligned with the first baseline axis in a first position.’” Id. at 16. We are not persuaded by Appellant’s arguments because the Examiner’s first and second figures correctly illustrate a “baseline axis,” as called for by claim 21. In particular, the baseline axis depicted in each of the first and second figures is: (1) oriented at an oblique angle relative to a longitudinal axis of the glove, (2) extends through an area disposed between finger sheaths and a thumb sheath, and (3) constitutes an imaginary line on which portions of the word rest. Although Warman does not explicitly describe the arrangement of the gloves depicted in the Examiner’s third figure, we are unpersuaded that this establishes error in the Examiner’s position. Claim 21 recites functional limitations that pertain to spelling the first word. It is the Examiner’s Appeal 2020-004658 Application 15/431,307 9 position that Warman is capable of meeting these functional limitations by arranging the gloves as shown in the third figure. We agree with Appellant, however, that the complete “word” “WV” is not clearly visible in the third figure. As shown, the “V” is clearly legible, whereas the “W” is partially covered. However, a skilled artisan would readily understand that by moving the hands slightly outwardly (left and right) from the position shown in the Examiner’s third figure, the first baseline axis would still be aligned with the second baseline axis such that the first portion of the first word would align with the second portion of the first word to form first word “WV.” But even assuming the Examiner’s third figure does not clearly disclose a first portion of a word being aligned with a second portion of the word to spell the word when a second baseline axis is aligned with a first baseline axis in a first position, as claimed, we determine that the limitations in claim 21 pertaining to the first word recite non- functional descriptive material, or “printed matter.” “[A] limitation is printed matter only if it claims the content of information.” See In re Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015). Printed matter itself is non-statutory subject matter, and accordingly, it must have a functional relationship to a physical substrate holding the printed matter in order to be given patentable weight. See, e.g., In re Miller, 418 F.2d 1392, 1396 (CCPA 1969). Non-functional descriptive material cannot lend patentability to an invention that would have otherwise been anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (“Where the printed matter is not functionally related Appeal 2020-004658 Application 15/431,307 10 to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.”). Moreover, even if a functional relationship exists, the descriptive material must be functionally different from the prior art. That is, the functional relationship must be “new and nonobvious.” See King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any new and unobvious functional relationship between the printed matter and the substrate.’”) (citations omitted). In claim 21, the first and second portions of the first word and the spelled first word recite the content of the information on the first and second glove members. As such, this information is printed matter. We also determine that the recited printed matter lacks a functional relationship to the first and second glove members. Claim 21 recites where the first and second word portions are displayed, that is, on the first and second palm portions. However, neither the specific content nor the location of the printed matter provides a functional relationship to the first and second glove members. In this regard, the spelled first word is intended to convey a “message.” However, the recited message (i.e., visual effect) of the printed matter could also be provided with different substrates, such as glove members without the recited first and second finger sheaths (e.g., “mittens”). In other words, the recited printed matter does not depend on the first and second glove members, as recited, to convey the “message.” Furthermore, in Warman, the abbreviations (letters) on the gloves convey a visual message, either when the abbreviations are considered individually or in combination, such as when the gloves are worn by a user. Appeal 2020-004658 Application 15/431,307 11 And even assuming Warman’s abbreviations are not word portions or a word, as claimed, this difference only reflects the content of the recited printed matter. This difference is not a patentable distinction. See, e.g., In re Xiao, 462 Fed. Appx. 947, 950–52 (Fed. Cir. 2011) (Non-precedential) (holding that use of “wildcard position labels,” instead of letters or numbers on combination lock, had no patentable weight, because they performed the same function as a letter or a number on the lock). Accordingly, we agree with the Examiner that Warman teaches all limitation of claim 21. Any purported difference between Warman and the claimed system is simply a substitution of one piece of printed matter (a portion of a “word”) for another piece of printed matter (a letter), which does not change the functioning of the claimed system. Therefore, we sustain the rejection of claim 21, and dependent claims 22, 23, 26, and 27, which are not separately argued. However, because our findings and reasoning differ from the Examiner’s, pursuant to 37 C.F.R. § 41.50(b), we designate our affirmance as a new ground of rejection to provide Appellant with a full and fair opportunity to respond. Claims 28–30, 33, and 34 The only difference between independent claim 28 and claim 21 is that claim 28 recites the term “logo” instead of the term “word.” Compare Appeal Br. 27 (Claims App.) with id. at 26. The Examiner finds that Warman discloses a system for conveying a message meeting all limitations of claim 28. Final Act. 11–12. Appellant does not contest the Examiner’s findings that Warman’s finger gloves each include the structural elements of a palm portion, finger sheaths, and a thumb sheath, as recited in claim 28. Rather, Appellant’s Appeal 2020-004658 Application 15/431,307 12 argument again focuses on the purported differences between the information displayed on the claimed first and second glove members versus the information displayed on Warman’s left hand and right hand gloves. As for this displayed information, the Examiner finds that Warman’s first glove member (Fig. 1) includes a first portion (“W”) of a first logo (“WV”) displayed on the first palm portion and having a first baseline axis, and the second glove member (Fig. 2) includes a second portion (“V”) of the first logo displayed on the second palm portion and having a second baseline axis. Final Act. 11–12. The Examiner also finds that the first portion of the first logo is aligned with the second portion of the first logo to form the first logo when the second baseline axis is aligned with the first baseline axis in a first position, as claimed. Id. at 12 (referencing the third figure). Appellant contends that “one of ordinary skill in the art also would not interpret abstract geometry formed by the misaligned, overlapping fingers of Warman as being associated with any logo.” Appeal Br. 18. In this regard, Appellant contends that common dictionary definitions of the term “logo” include “‘an identifying symbol (as for use in advertising)’ or ‘an identifying statement,’” and “‘[a] symbol or other small design adopted by an organization to identify its products, uniform, vehicles, etc.’” Id. at 18–19. Appellant concedes that Warman considers forming the abbreviation “WV” when the gloves are positioned in a parallel, spaced-apart arrangement, but contends that the Examiner’s combined figure does not form a “logo.” Id. at 19. In response, the Examiner submits that, although Appellant provides dictionary definitions of a “logo,” Appellant’s Specification states, “[a]s used herein, ‘logo’ can include any team name, nickname, mascot, symbol, Appeal 2020-004658 Application 15/431,307 13 icon, team city, or other symbol or word associated with an athletic team.” Ans. 20; see Spec. ¶ 19 (emphasis added). The Examiner also provides a dictionary definition of “logo” as meaning “a graphic representation or symbol of a company name, trademark, abbreviation, etc., often uniquely designed for ready recognition.”4 Id. at 20. Based on this definition, the Examiner submits: It is noted that the “WV”, when overlapped, represents not only the logo of “WV” overlapped for “West Virginia” but also the abstract image (logo image) that the “W” and “V” create as literally shown across the first and second gloves collectively in the annotated Figure . . . [Final Act. 9]. A “logo” and what it looks like does not necessarily have boundaries, just as long as it’s a graphic representation, image, or symbol that can be readily recognized for something. Id. at 20–21. Although we agree with Appellant that “WV” is not clearly visible in the Examiner’s third figure, the Examiner finds that the Specification describes the term “logo” as having a broad meaning. See Spec. ¶ 19. Claim 21 does not require the logo to be associated with an athletic team, and the combination of the “W” and “V” depicted in the third figure can be considered to form a “symbol,” for example. Consistent with Appellant’s Specification, we thus determine that this figure can be reasonably considered to display a “logo.” However, even assuming the Examiner’s third figure does not disclose a first portion of a logo being aligned with a second portion of the word to form the first logo word when a second baseline axis is aligned with a first baseline axis in a first position, as claimed, the limitations in claim 28 that 4 Citing “https://www.dictionary.com/browse/logo?s=t.” Appeal 2020-004658 Application 15/431,307 14 pertain to the first logo recite non-functional descriptive material, or “printed matter,” and additionally, there is no new and unobvious functional relationship between the logo (printed matter) and the first and second glove members (substrate), for the same reasons as discussed above for claim 21. Accordingly, we sustain the rejection of claim 28, and dependent claims 29, 30, 33, and 34, which are not separately argued, as anticipated by Warman. We designate our affirmance as to claims 28–30, 33, and 34 as a new ground of rejection. Obviousness over Warman Claims 35–39 The Examiner finds that Warman discloses most limitations of independent claim 35. Final Act. 16–21. In support, the Examiner provides different annotated versions of Warman’s Figure 1 (id. at 18) and 2 (id. at 20) and also references the annotated third figure (id. at 20–21; see also id. at 9) discussed above. The Examiner concedes that Warman does not meet the limitations that “the first portion [‘W’] of a first word [‘WV’] displayed on the first palm portion extends to an edge of the first glove member and wherein the second portion [‘V’] of the first word extends from an edge of the second glove member,” as recited in claim 35. Id. at 21 (emphasis added). The Examiner concludes, however, that it would have been obvious to one of ordinary skill in the art to modify Warman to include these missing limitations as an obvious matter of design choice. Id. at 21–22. The Examiner asserts, “[Appellant] has not disclosed that extending the first and second portions of the first word to an edge of the respective, first and second glove members solves any stated problem or is for any particular Appeal 2020-004658 Application 15/431,307 15 purpose and it appears that the invention would perform equally with the first and second portions of the first word extending on the palm portions as disclosed by Warman.” Id. at 22. First, Appellant contends that Warman does not disclose: a system for conveying a message and including a first glove member having a first portion and a common third portion of a first word displayed on a first palm portion, and a second glove member having a second portion and the common third portion displayed on a second palm portion, where (i) the common third portion of the first word on the first glove member overlaps the common third portion of the first word on the second glove member and (ii) the first portion of the first word is aligned with the second portion of the first word to spell the first word when a longitudinal axis of the first glove member and a longitudinal axis of the second glove member are convergent and the first finger sheaths and the second finger sheaths are overlapping. Appeal Br. 19–20 (emphasis added). Appellant references Figure 2, in which glove 100 includes full letters “K” and “I” and portions of letters “N” and “G,” and glove 200 includes full letters “G” and “S” and portions of letters “I” and “N.” Id. at 20. Appellant contends that gloves 100 and 200 both include a common third portion, which includes shared portions of letters “I,” “N,” and “G.” Id. Appellant’s Figure 3 shows gloves 100 and 200 as overlapped displaying the word “KINGS.” Id. The Examiner determines that Warman’s first glove member includes a common third portion (i.e., a portion of letter “W”) and the second glove member also includes the common third portion (i.e., a portion of letter “V”). See Final Act. 18, 20. In contrast, Appellant contends that Warman does not include a common third portion provided on both gloves, but instead “includes (i) a portion of a W on the first glove – which is not Appeal 2020-004658 Application 15/431,307 16 provided on the second glove, and (ii) a portion of a V on the second glove – which is not provided on the first glove.” Appeal Br. 21. Appellant also contends that when Warman’s gloves overlap as shown in the Examiner’s combined figure, the “V” and “W” do not align to form a word. Id. at 23. Second, Appellant contends that “[p]roviding the common third portion is more than mere design choice, and provides the benefit of allowing the gloves to be overlapped with each other in either a left-over- right or a right-over-left arrangement, while still conveying the message.” Appeal Br. 22. That is, referring to Figure 3, Appellant explains, “because of the common third portion on both gloves, and because the portions of the words extend to the edges of the palm portions, the word ‘KINGS’ will also be formed when the right-hand glove is arranged in front of the left-hand glove.” Id. We are not persuaded. First, we agree with the Examiner that the purported glove overlap described by Appellant is not claimed. Ans. 25. Thus, we are unpersuaded that the provision of the “common third portion” is more than mere design choice, contrary to Appellant’s argument. Second, the Examiner points out that the term “common” is not used in the Specification, and thus, the Specification does not describe the meaning of a “common third portion.” Ans. 23. Even assuming the Examiner’s third figure does not establish that Warman’s gloves both include a common third portion of a first word, and thus, that Warman also does not disclose or suggest the recited “overlapping” of the common third portions of the first word on the first and second glove members “when the longitudinal axis of the first glove member and the longitudinal axis of the second glove member are convergent and the first finger sheaths and the Appeal 2020-004658 Application 15/431,307 17 second finger sheaths are overlapping,”, we determine that the limitations in claim 35 that pertain to the first word recite non-functional descriptive material, or “printed matter,” and there is no new and unobvious functional relationship between the first word and the first and second glove members recited in claim 35, for the same reasons as for claim 21. Thus, we sustain the rejection of claim 35, and claims 36–39 depending therefrom and not separately argued, as being unpatentable over Warman. We designate our affirmance for claims 35–39 as a new ground of rejection. Claims 40–44 Appellant notes that claim 40 includes similar limitations as claim 35, but is directed to forming a logo instead of a word. Appeal Br. 23. As Appellant does not apprise us of error, we sustain the rejection of claim 40, and claims 41–44 depending therefrom and not separately argued, as being unpatentable over Warman for reasons similar to those discussed for claim 35, and for claim 28 in regard to a “logo.” We designate our affirmance for claims 40–44 as a new ground of rejection. Claims 24, 25, 31, and 32 Appellant points out that claims 24 and 31 specify that “the first portion of the first word extends across a portion of the first palm portion to an edge of the first glove member,” and claims 25 and 32 specify that “the second portion of the first word extends from an edge of the second glove member and across a portion of the second palm portion.” Appeal Br. 23– 24; see id. at 26–28. The Examiner concedes that Warman does not disclose the limitations of claims 24, 25, 31, and 32, but concludes that modifying Warman to include them would have been an obvious matter of design Appeal 2020-004658 Application 15/431,307 18 choice, as Appellant has not shown that the claimed configuration solves any stated problem or is for any particular purpose. Final Act. 15–16. Appellant contends that the limitations recited in claims 24, 25, 31, and 32 “facilitate displaying a complete image when the gloves are interlocked to convey a message,” whereas “Warman simply is not capable of providing a continuous and uninterrupted message, in part because it fails to provide portions of an image that extend to respective edges of the gloves.” Appeal Br. 24 (citing Spec. ¶¶ 29, 32, Figs. 3, 6). In response, the Examiner points out that the claims do not recite “a complete image portion” or “a continuous and uninterrupted message.” Ans. 31 (emphasis omitted). We agree. Appellant’s contention does not apprise us of error in the Examiner’s proposed modification of Warman, and thus, is unpersuasive. Furthermore, the limitations recited in claims 24 and 25 pertaining to the first word and the limitations recited in claims 31 and 32 pertaining to the first logo recite non-functional descriptive material, or “printed matter.” Additionally, there is no new and unobvious functional relationship between the first word or the first logo and the first and second glove members recited in claims 24, 25, 31, and 32 for the same reasons discussed for claims 21 and 28. Accordingly, we sustain the rejection of claims 24, 25, 31, and 32 as unpatentable over Warman. We designate our affirmance as a new ground of rejection. Appeal 2020-004658 Application 15/431,307 19 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 21–23, 26–30, 33, 34 102(e) Warman 21–23, 26–30, 33, 34 21–23, 26–30, 33, 34 24, 25, 31, 32, 35–44 103(a) Warman 24, 25, 31, 32, 35–44 24, 25, 31, 32, 35–44 Overall Outcome 21–44 21–44 FINALITY OF DECISION AND RESPONSE This Decision contains new grounds 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, [Appellant], within two months from the date of the decision, must exercise one of the following two options with respect to the new ground[s] 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[s] of rejection [are] 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[s] of rejection designated in the decision. Should the examiner reject the claims, [Appellant] may again appeal to the Board pursuant to this subpart. Appeal 2020-004658 Application 15/431,307 20 (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[s] of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground[s] 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 (9th Ed., Rev. 10.2019, June 2020). 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)(1)(iv) (2019). AFFIRMED; 37 C.F.R. § 41.50(b)