Ex Parte Pacheco

Patent Trials and Appeals Board

Jun 7, 2019

13463800 - (D) (P.T.A.B. Jun. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/463,800 05/03/2012
106635 7590
Mahurin IP Law, LLC
P. 0. Box 18703
Golden, CO 80401
06/11/2019
FIRST NAMED INVENTOR
Israel Junior Pacheco
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.
Pac-001-P 3336
EXAMINER
LYNCH, MEGAN E
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
06/11/2019 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):
jerry@mahurinip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ISRAEL JUNIOR PA CHECO
Appeal 2017-011722
Application 13/463,800
Technology Center 3700
Before FREDERICK C. LANEY, PAUL J. KORNICZKY, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). A hearing was
conducted on May 28, 2019.
We reverse.
Appeal 2017-011722
Application 13/463,800
CLAIMED SUBJECT MATTER
The claims are directed to lighted footwear. Claims 1 and 18,
reproduced below, are illustrative of the claimed subject matter:
1. Lighted footwear comprising:
at least one footwear of a pair of footwear; and
a light disposed in a top portion of an upper of said
footwear, said light directed to shine a focused beam of light
downward ahead of a toe of said footwear.
18. A lighted wading boot comprising:
at least one rubberized wading boot of a pair of rubberized
wading boots;
one or more light emitting diodes, emitting light of one or
more frequencies, colors or intensities, said one or more light
emitting diodes disposed in a waterproof light housing molded
into a top portion of an upper of said wading boot in a top cuff of
said wading boot, said one or more light emitting diodes directed
to shine a focused beam of light downward, ahead of a toe of said
wading boot;
a waterproof battery compartment molded into said top
portion of said upper of said wading boot, in said top cuff of said
wading boot, a battery therein operatively coupled to said one or
more light emitting diodes to power said one or more light
emitting diodes; and
a switch disposed in a waterproof switch housing molded
into said top portion of said upper of said wading boot in said top
cuff of said wading boot, operatively coupled to said battery and
said one or more light emitting diodes to control operation of said
one or more light emitting diodes.
REFERENCES
The prior art relied upon by the Examiner in the rejection is:
Waits
Thomas
Ellenburg
US 6,293,032 B 1
US 2004/0020077 A 1
US 2008/0253108 Al
2
Sept. 25, 2001
Feb. 5,2004
Oct. 16, 2008
Appeal 2017-011722
Application 13/463,800
REJECTIONS
Claims 1, 2, 6-8, 10, and 14-16 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Waits.
Claims 5, 9, 13, and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Waits and Ellenburg.
Claims 3, 4, 11, and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Waits and Thomas.
Claims 18-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Waits, Ellenburg, and Thomas.
OPINION
35 U.S.C. § 102(b) over Waits-Claims 1, 2, 6---8, 10, 14-16
Claim 1 requires, among other features, a "light directed to shine a
focused beam of light downward ahead of a toe of said footwear." The
Specification teaches that an LED can be an example of a "light source 102
having a focused beam of light" and that "[r]egardless, light 102 shines a
beam that allows the wearer to see directly in front of his [ footwear, such as
a] boot." Spec. ,-J 14. Figure 3 of the Specification, reproduced below,
illustrates how the light is focused downward and in front of a boot. Id.
3
Appeal 2017-011722
Application 13/463,800
Fig, 3
Appellant's Figure 3 shows a boot 100 with a light 102 attached
thereto with beams of light directed in front of the toe 108 of the boot.
The Examiner finds that Waits teaches footwear where "the light is
projected to illuminate the path of a wearer; the path of a wearer would be
downward, ahead of a toe of the wearer." Final Act. 11; see also id. at 2,
Ans. 3. Appellant argues that, though Waits "may shine light forward," it
does not teach a light "directed downward." Appeal Br. 8.
Though we agree that some of the scattered light in Waits is likely to
travel downward from the footwear to the path in front of the wearer, the
light is not "directed to shine a focused beam of light downward ahead of a
toe of said footwear," as required by claim 1.
For this reason, we do not sustain the rejection of claim 1, or claims 2
and 6-8 which depend from claim 1. Claim 10 includes similar limitations
to claim 1. Thus, we do not sustain the rejection of claim 10, or dependent
claims 14-16 for similar reasons.
4
Appeal 2017-011722
Application 13/463,800
35 U.S.C. § 102(b) over Waits-Claims 2, 10, 14-16
Claim 2 depends from claim 1 and requires "wherein said at least one
footwear is a boot, and said light disposed in said top portion of said upper is
disposed in a top cuff of said boot." Independent claim 10, includes the
similar limitation of "a light disposed in a top cuff of said boot."
The Examiner states that the recitation of a boot is "a recitation with
respect to the manner in which a claimed apparatus is intended to be
employed" which "does not differentiate the claimed apparatus from a prior
art apparatus satisfying the claimed structural limitations." Final Act. 2-3.
We disagree. By claiming a "boot," Appellant is not reciting an intended
use, by rather requiring the lighted footwear to be a "boot." The Examiner
cannot ignore a recited element of the claim. Thus, the Examiner's
anticipation rejection does not identify where the prior art teaches a "boot"
or a "light disposed ... in a top cuff of said boot" 1 as required by the claims.
As a result, we do not sustain the anticipation rejection of claims 2 and 10,
or of claims 14-16 which depend from claim 10.
35 U.S.C. § 103(a) over Waits and Ellenburg-Claims 5 and 13
Claim 5 depends from claim 1. Claim 13 depends from claim 10.
The Examiner's obviousness rejection of claims 5 and 13 over Waits and
Ellenburg does not overcome any of the missing limitations identified above
1 It is unclear how the Examiner is interpreting Waits' upper 16 as a cuff
where it "folds over flange 21." Final Act. 2. This portion also is not a top
cuff of a boot as required by the claims.
5
Appeal 2017-011722
Application 13/463,800
as required by claims 1, 2, and 10. We do not sustain the rejection of claims
5 and 13 based on their respective dependence from claims 1 and 10.
35 U.S.C. § 103(a) over Waits and Thomas-Claims 3, 4, 11, 12
Claims 3 and 4 depend from claim 2, and claims 11 and 12 depend
from claim 10. Though Thomas teaches a boot, the Examiner's obviousness
rejection over Waits and Thomas does not address the limitation of a "light
disposed ... in a top cuff of said boot" as required by claims 2 and 10. As
no reason is provided to modify Waits to move the light at the foot portion to
a top cuff of a boot, we do not sustain the rejection of claims 3, 4, 11, and 12
based on their dependence from claims 2 or 10.
35 U.S.C. § 103(a) over Waits and Ellenburg-Claims 9, 17
Claim 9 depends from claim 1 and requires "wherein said light
comprises a light housing, and said light housing, said battery compartment,
and a switch housing in which said switch is housed are waterproof and
molded into said top portion of said upper of said footwear." The Examiner
states that Waits discloses molding, but also
that "is molded" recites a product-by-process limitation. Even
though product-by-process claims are limited by and defined by
the process, determination of patentability is based on the
product itself. The patentability of a product does not depend on
its method of production. See MPEP 2113. Patentability shall
not be given for the process by which the claimed product was
made. Waits discloses the structure of the invention as claimed
and therefore the process by which the product is made is not
germane to the issue of patentability.
Final Act. 5.
6
Appeal 2017-011722
Application 13/463,800
However, the Examiner does not show that Waits discloses molding
or a structure equivalent to a molded structure and we find none. Thus, we
do not sustain the rejection of claim 9. Claim 1 7, which depends from claim
10, includes a similar limitation. Thus, we do not sustain the rejection of
claim 1 7 for the same reasons as claim 9, but also because of its dependence
from claim 10.
35 U.S.C. § 103(a) over Waits, Ellenburg, and Thomas-Claims 18-20
Independent claim 18 includes limitations similar to claims 1, 2, 3,
and 9. The Examiner's rejection of claim 18 does not address any of the
shortcomings identified with respect to the rejections of claims 1, 2, 3, and 9.
Thus, we do not sustain the rejection of claim 18 or its dependents, claims
19 and 20, for reasons similar to those previously discussed.
DECISION
The Examiner's rejections of claims 1-20 are reversed.
REVERSED
7