Ex Parte Rastegar et al

Patent Trial and Appeal BoardMay 6, 2013

11479768 (P.T.A.B. May. 6, 2013)

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. 11/479,768 07/01/2006 Johangir S. Rastegar 10050C 1115 79998 7590 05/06/2013 Thomas Spinelli, Esq. 14 Mystic Lane Northprot, NY 11768 EXAMINER PATTERSON, MARIE D ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 05/06/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHANGIR S. RASTEGAR and THOMAS SPINELLI ____________ Appeal 2011-003770 Application 11/479,768 Technology Center 3700 ____________ Before WILLIAM V. SAINDON, WILLIAM A. CAPP and JEREMY M. PLENZLER, Administrative Patent Judges. CAPP, Administrative Patent Judge DECISION ON APPEAL Appeal 2011-003770 Application 11/479,768 - 2 - STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 1, 4-11, 18, 20 and 21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellants’ invention relates to shoe coverings for traction or sports. Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An elastomer covering for a shoe, the covering comprising: an elastomer body having a shape configured to enclose a perimeter of the shoe, the elastomer body having a size smaller than a size of the shoe such that the elastomer body is fitted on the shoe by being stretched over the shoe; the elastomer body having an exterior elastomer bottom portion corresponding to a sole and heel of the shoe; and one or more spikes directly arranged on the exterior bottom portion, the one or more spikes being configured for a sporting activity. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Gottschalk Bingham Adair Nakayama Larson US 2,423,143 US 3,158,558 US 3,643,352 US 6,502,332 B1 US 6,836,977 B2 Jul. 1, 1947 Nov. 24, 1964 Feb. 22, 1972 Jan. 7, 2003 Jan. 4, 2005 Appeal 2011-003770 Application 11/479,768 - 3 - The following rejections are before us for review: 1. Claims 1, 4-6, and 8-10 are rejected under 35 U.S.C. § 102(b) as being anticipated by Adair. 2. Claims 7 and 11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Adair and Larson. 3. Claims 18 and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Adair and Nakayama. 4. Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Adair and either Gottschalk or Bingham. OPINION Anticipation of Claims 1, 4-6, and 8-10 by Adair Claim 1 The Examiner finds that Adair discloses all limitations of claim 1. Ans. 3-4. Appellants traverse the rejection by arguing that Adair fails to disclose spikes that are directly arranged on the exterior bottom portion of Adair’s golf overshoe. App. Br. 9. Appellants argue that Adair’s spikes are attached to a sole and heel that are composed of a relatively stiff leather and, therefore, Adair fails to satisfy the limitation of claim 1 directed to an exterior bottom of elastomer. Id. The Examiner responds by stating that Adair’s exterior bottom is comprised of an elastomer. Ans. 5-6. The Examiner points out that the stiff leather components identified by Appellants are additional elements placed inside of the elastomer covering. Ans. 6. The Examiner further responds by observing that Adair’s spikes are “directly arranged” using a structure that is identical to the structure shown in Appellants’ drawings. Id. Appeal 2011-003770 Application 11/479,768 - 4 - Appellants have not shown error in the Examiner’s findings. Claim 1 uses an open-ended “comprising” transition that does not preclude the use of a stiff leather layer between an elastomer exterior bottom and an insole. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.Cir.1997) (‘Comprising’ means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim). Neither are we persuaded by Appellants’ “directly arranged” argument. Appellants do not operationally define what it means for spikes to be “directly arranged” and, therefore, the Examiner is entitled to apply a broad construction. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (during examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification). Appellants’ Specification states that: . . . the spikes 12 may be removably or fixedly disposed on the base element 11, such as by any number of methods known in the art, including a threaded stud arrangement similar to that shown in Figure 8a below. The stem 14 can be configured in any way known in the art, such as being long and somewhat sharp for snow as is shown in Figure 2a, such as being short and relatively sharp for ice as is shown in Figure 2b, such as being rounded as is known in the art of football and soccer cleats as is shown in Figure 2c, such as being plate-like as is known in the art of baseball spikes as is shown in Figure 2d, or have a number of prongs as is known in the art of golf shoes as is shown in Figure 2e. Specification, p. 6. We agree with the Examiner that the manner of attachment and the arrangement of the spikes in Adair comports with the scope of claim 1 as informed by Appellants’ Specification and we sustain the Examiner’s rejection of claim 1. Appeal 2011-003770 Application 11/479,768 - 5 - Claims 4-6 and 8-10 Claims 4-6 and 8-10 all depend, directly or indirectly, from claim 1. Clms. App'x. Appellants do not offer any arguments or evidence for the separate patentability of such claims other than those previously considered with respect to claim 1. Accordingly, we sustain the Examiner’s rejection of claims 4-6 and 8-10. Unpatentability of Claims 7 and 11 Claims 7 and 11 depend indirectly from claim 1. Clms. App'x. The Examiner finds that Adair discloses all of the limitations of claims 7 and 11, except for a counter bore for the spike fixing elements. Ans. 4. The Examiner relies on Larson as teaching counter bores. Id. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to provide counter bores as taught by Larson for the spike and spike securing elements in Adair. Id. According to the Examiner, a person of ordinary skill in the art would have been motivated to do this to provide secure and smooth attachment of the spikes. Id. In traversing the Examiner rejection, Appellants rely on the same arguments advanced with respect to claim 1. App. Br. 5-6. Claim 1 is unpatentable. See In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (A disclosure that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103 since anticipation is the epitome of obviousness). Appellants do not offer any arguments for the separate patentability of claims 7 and 11. Accordingly, we sustain the rejection of claims 7 and 11. Appeal 2011-003770 Application 11/479,768 - 6 - Unpatentability of Claims 18 and 20 Claim 18 The Examiner finds that Adair discloses all of the limitations of claim 18 except for the particular details of the spike. Ans. 4. The Examiner relies on Nakayama as disclosing a conventional golf spike configuration comprising a plurality of fingers. Id. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to provide fingered golf spikes on Adair. Ans. 4-5. According to the Examiner, a person of ordinary skill in the art would have been motivated to do this to reduce damage to the golf course and to comply with golf course requirements. Ans. 5. In traversing the Examiner’s rejection, Appellants rely on the same arguments advanced with respect to claim 1. App. Br. 5-6. Appellants do not otherwise challenge the Examiner’s findings and conclusions regarding the teaching of Nakayama or its combinability with Adair. Appellants have not shown error in the Examiner’s conclusion and we sustain the Examiner’s rejection of claim 18. Claim 20 Claim 20 depends from claim 18 and adds the limitation: “wherein the one or more spikes are removably secured to the bottom portion.” Clms. App’x. Appellants do not offer any arguments or evidence for the separate patentability of claim 20 other than those previously considered with respect to claim 18. We sustain the Examiner’s rejection of claim 20. Unpatentability of Claim 21 Claim 21 depends from claim 18 and adds the limitation: “further comprising one or more of an indicia and a decoration printed on the Appeal 2011-003770 Application 11/479,768 - 7 - covering.” Clms. App’x. The Examiner finds that Adair as modified by Nakayama discloses all of the limitations of claim 21 except for indicia. Ans. 5. The Examiner alternatively relies on Gottschalk or Bingham as disclosing that it is well known and conventional to provide indicia and/or decorations on footwear. Id. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to provide indicia on the modified Adair footwear. Id. A person of ordinary skill would have been motivated to do this for advertisement or amusement. Id. Appellants argue that, while it may be well known to have indicia on shoes, it is not well known to have indicia or decoration on a shoe covering. App. Br. 10. Appellants’ argument is not persuasive. We agree with the Examiner that both Gottschalk and Bingham teach providing indicia that is applicable to all types of footwear, which would include shoe covers. Ans. 6. Moreover, the claim to indicia and decoration relate to the appearance of the shoe cover and have no mechanical function, and thus cannot be relied upon for patentability. In re Seid, 161 F.2d 229, 231 (CCPA 1947) (features that relate to ornamentation only and have no mechanical function whatsoever cannot be relied upon for patentability of a claim in a utility patent application.). The details of the indicia are “useful and intelligible only to the human mind.” See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)). They do not exploit or interrelate with any structural elements of the underlying shoe cover. Accordingly, we do not find that the indicia and decoration limitation patentably distinguishes the subject matter of Appellants' claim and we sustain the Examiner’s rejection of claim 21. Appeal 2011-003770 Application 11/479,768 - 8 - DECISION The decision of the Examiner to reject claims 1, 4-11, 18, 20 and 21 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED mls