Ex Parte PachecoDownload PDFPatent Trials and Appeals BoardJun 7, 201913463800 - (D) (P.T.A.B. Jun. 7, 2019) Copy Citation 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 Copy with citationCopy as parenthetical citation