Ex Parte Rastegar et al

Patent Trial and Appeal Board

Oct 12, 2016

11479768 (P.T.A.B. Oct. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111479,768
79998 7590
Thomas Spinelli, Esq.
14 Mystic Lane
Northprot, NY 11768
07/01/2006
10/13/2016
FIRST NAMED INVENTOR
Johangir S. Rastegar
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.
10050C 1115
EXAMINER
BAYS, MARIE D
ART UNIT PAPER NUMBER
3765
MAILDATE DELIVERY MODE
10/13/2016 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
Appeal2014-009943
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
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.
Appeal2014-009943
Application 11/479,768
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 consisting
essentially of:
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:
Adair
Nakayama
Larson
us 3,643,352
US 6,502,332 B 1
US 6,836,977 B2
The following rejections are before us for review:
Feb.22, 1972
Jan. 7,2003
Jan.4,2005
1. Claims 1, 4---6, and 8-10 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Adair.
2. Claims 1, 4---6, and 8-10 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Adair.
3. Claims 7 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Adair and Larson.
4. Claims 18, 20, and 21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Adair and Nakayama.
2
Appeal2014-009943
Application 11/479,768
OPil-JION
Procedural Posture of this Appeal
This patent application returns to us after further prosecution
following our previous decision to affirm the Examiner's final rejection in
Ex Parte Rastegar, App. No. 2011-003770, 2013 WL 3326109 (PTAB
May 6, 2013) (hereinafter the "2013 Decision"). This decision presumes
familiarity with the 2013 Decision which is incorporated herein by
reference.
After receiving the 2013 Decision, Appellants filed a Request for
Continued Examination (RCE) and, contemporaneously therewith, filed a
claim amendment. See RCE, May 25, 2013. Notably, the only amendment
to the claims was to change the transitional phrase in the preamble of
claims 1, 6, 10, 18, and 21 from "comprising" to "consisting essentially of."
Id. Less than one week later, the Examiner issued a non-final rejection over
the same primary reference, Adair, relied on by the Examiner in Appellants'
previous unsuccessful appeal. See Non-Final Rejection, May 30, 2013.
Thereafter, Appellants filed a response to the Examiner's May 30 non-final
rejection which presented arguments traversing the rejection, but otherwise
presented no new evidence or further amendments to the claims. See
Response, September 30, 2013.
On October 15, 2013, the Examiner issued a Final Rejection as to all
pending claims. See Final Action. Appellants subsequently filed a Notice of
Appeal initiating the instant appeal on January 18, 2014.
Anticipation and/or Unpatentability
of Claim 1 over Adair
In our 2013 Decision, we affirmed the Examiner's 35 U.S.C. § 102(b)
anticipation rejection of claim 1 over Adair. See 2013 Decision, 4.
3
Appeal2014-009943
Application 11/479,768
Similarly, we maintained that claim 1 was unpatentable under 35 U.S.C.
§ 103 over Adair. See 2013 Decision at 5. 1 Claim 1, as currently presented
on appeal, is identical to the version presented in the 2013 Appeal, with the
sole exception that the transition phrase has been amended from
"comprising," to "consisting essentially of." See 2013 Decision, 2; Claims
App.
Consistent with the position taken in the previous appeal, the
Examiner, once again, finds that Adair discloses all of the limitations of
claim 1. Final Action 2. With respect to Appellants' "consisting essentially
of' transition, the Examiner finds that Adair's pads 27 and 28 are optionally
attached. Id. The Examiner further finds that it is "well known" and
conventional to make inner sole elements removable so as to allow the
footwear to be used with or without the inner soles. Final Action 3. In
support of this position, the Examiner cites three prior art patents as non-
applied art to substantiate the finding of what is "well known. "2
Appellants traverse the rejection by drawing our attention to Adair's
disclosure of sole and heel pads 27 and 28. Appeal Br. 10. Appellants argue
that the Examiner's finding that pads 27 and 28 are "optionally" attached is
incorrect. Id. 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
1 "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)." Id.
2 Specifically, the Examiner cites to Pedersen (US 4,246,707, iss. Jan. 27,
1981), Cross (US 466,297, iss. Dec. 29, 1891), and Ferguson (US 2,901,840,
iss. Sept. 1, 1959).
4
Appeal2014-009943
Application 11/479,768
to satisfy the limitation of claim 1 directed to an exterior bottom of
elastomer. Id.
In response, the Examiner takes the position that Appellants' newly
amended "consisting essentially of' transition does not limit the claim to
only the elements positively recited therein. Ans. 2--4.
In reply, Appellants reiterate the argument from their appeal brief,
namely, that the claimed invention distinguishes over Adair because Adair
discloses the presence of non-removable sole and heel pads. Reply Br. 2.
Appellants contend that Adair requires the sole and heel pads to be secured
by adhering or vulcanizing. Id.
Adair discloses a flexible, resilient overshoe for use in playing golf
and other sports. Adair, Abstract. Adair's overshoe has a plurality of cleats
with threaded stems that engage threaded openings in washers located on the
inside of the overshoe. Id. Adair's overshoe has a rubber outsole 10 and a
rubber insole 30. Adair col. 1, 11. 7-72, col. 2, 11. 37--41. The insole is
secured to the overshoe by vulcanizing. Id. col. 2, 11. 42--44.
Adair's cleats 20 engage washers 16, comprised of disk 17 with
central opening 18 around which is secured tubular sleeve 19. Id. col. 2,
11. 7-13. Sleeves 19 are disposed in holes 15 in outsole 10. Id. Fig. 3.
Adair's cleats have ground engaging spike section 20, screw threaded
stem 22, and annular flange 23 that separates spike 20 from stem 22. Id. col.
2, 11. 13-18. Stems 22 are screwed into sleeves 19 of washers 16. Id. col. 2,
11. 20-24.
Disposed between Adair's outsole 10 and insole 30 are sole and heel
pads 27 and 28. Id. col. 2, 11. 29-31. The pads are preferably of relatively
stiff leather so that the slight projection of the securing washers over the
5
Appeal2014-009943
Application 11/479,768
inner surface of the outsole of the shoe cannot be felt. Id. col. 2, 11. 28--41.
Contrary to Appellants' allegations, Adair's spikes are not attached to the
sole and heel pads. As explained above, Adair's sole and heel pads merely
overlie washers 16 that are attached to cleats 20 via a threaded connection
between screw stem 22 of cleat 20 and sleeve 19 of washer 16.
Appellants' Specification teaches that its spikes can be secured to the
bottom portion of the elastomeric body of the shoe covering. Spec. 2-3. In
embodiments with either fixed or removable spikes, the covering comprises
a washer and a head portion of a spike that "sandwich" the bottom portion.
Id. In the embodiment depicted in Figure 1, a traction surface element 10
includes a base element 11 made from a variety of materials such as plastic,
metal, and leather. Spec. 5. Such materials are used to provide strength to
resist the forces applied to the spikes during walking. Id.
After reviewing Appellants' briefs and their amended claims, we
reach the same conclusion regarding the patentability of the current,
"consisting essentially of," version of claim 1 as we reached in our 2013
Decision regarding the "comprising" version of claim 1. In short, we agree
with the Examiner that Appellants' amendment changing the transition term
from "comprising" to "consisting essentially of' does not materially alter the
scope of the claims.
"Consisting essentially of' is a transition phrase commonly
used to signal a partially open claim in a patent. Typically,
"consisting essentially of' precedes a list of ingredients in a
composition claim or a series of steps in a process claim. By
using the term "consisting essentially of," the drafter signals
that the invention necessarily includes the listed ingredients and
is open to unlisted ingredients that do not materially affect the
basic and novel properties of the invention.
6
Appeal2014-009943
Application 11/479,768
PPG Ind. v. Guardian Ind. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998).
Using the "consisting essentially of' transition does not necessarily narrow
the scope of a claim relative to using the "comprising" transition.
For the purposes of searching for and applying prior art under
35 U.S.C. 102 and 103, absent a clear indication in the
specification or claims of what the basic and novel
characteristics actually are, "consisting essentially of' will be
construed as equivalent to "comprising."
MPEP § 2111. 03. If an applicant contends that additional steps or materials
in the prior art are excluded by the recitation of "consisting essentially of,"
applicant has the burden of showing that the introduction of additional steps
or components would materially change the characteristics of applicant's
invention. See In re De Lajarte, 337 F.2d 870 (CCPA 1964).
In the instant case, Appellants never identify what they consider to be
the "basic and novel characteristics" of their invention. See generally
Appeal Br., Reply Br. Moreover, Appellants fail to meet their burden of
showing that Adair's sole and heel pads materially affect the basic and novel
properties of their invention. See, e.g., PPG, 156 F.3d at 1355 ("PPG could
have defined the scope of the phrase 'consisting essentially of for purposes
of its patent by making clear in its specification what it regarded as
constituting a material change in the basic and novel characteristics of the
invention.").
We have reviewed Appellants' Specification. The Specification
contemplates the use of unclaimed structure to secure the spikes to the
exterior bottom of the shoe covering. See Spec. 3 (bottom portion
'sandwiched" between washer and head portion). Claims 5, 6, and 9-11
depend from claim 1 and claim additional structure directed to a mechanism
for securing a spike to the body. Claims App. Appellants present neither
7
Appeal2014-009943
Application 11/479,768
evidence nor argument that accounts for "basic and novel characteristics" of
claim 1 that contemplate the additional structure included in claims 5, 6, and
9-11, but exclude the sole and heel pads of Adair.
In summary, we determine and find, by a preponderance of the
evidence, that Adair's sole and heel pads do not materially affect the basic
and novel properties of the invention of claim 1. Accordingly, we sustain
the Examiner's Section 102 anticipation rejection and also the Examiner's
section 103 unpatentability rejection of claim 1. 3
Unpatentability of Claim 18
over Adair and Nakayama
Claim 18 is an independent claim that is substantially identical in
scope to claim 1, except that the spikes are golf spikes with a plurality of
fingers. Claims App. The Examiner finds, and Appellants do not dispute,
3 For purposes of disposing of the instant appeal, we need not reach the
factual issue of whether Adair's sole and heel pads (27, 28) are optional or
removable. Furthermore and although unnecessary for reaching our
determination, we agree with the Examiner that it is well known in the art to
use heel and sole pads that are removable. We also agree with the Examiner
that it would have been obvious to modify Adair so as to use it without heel
and sole pads 27, 28. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975)
(deletion of a component in the prior art whose known function was not
needed was an obvious expedient). A person of ordinary skill in the art
would have understood that heel and sole pads 27, 28 merely operate to
distribute pressure from the underlying washers for the sake of comfort, but
are not necessary for the overshoes to be operable, particular where the
user/golfer is already wearing stiff soled shoes over which Adair's overshoe
is placed. In that regard, we note that Appellants present no evidence or
argument that making resilient, golf-spike overshoes without an intermediate
layer of stiff sole and heel pads results in any unexpected results. See KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (when a patent simply
arranges old elements with each performing the same function it had been
known to perform and yields no more than one would expect from such an
arrangement, the combination is obvious).
8
Appeal2014-009943
Application 11/479,768
that Nakayama discloses fingered golf spikes. Final Action 4. The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time the invention was made to use fingered golf spikes,
as taught by Nakayama, in the golf shoe covering of Adair. Id. According
to the Examiner, a person of ordinary skill in the art would have done this to
reduce damage to the golf course and to comply with golf course
requirements. Id.
Appellants argue that Nakayama's fingered spikes are on a golf shoe,
not a golf shoe covering. Appeal Br. 12. Appellants argue that the
Examiner has not sufficiently established the combinability of Adair and
Nakayama. Id.
Appellants' argument is not persuasive. Adair discloses a spiked
overshoe for golf. Nakayama discloses fingered spikes on a golf shoe.
Appellants do not challenge the underlying basis for the Examiner's reason
to combine, namely, to reduce damage to the golf course and comply with
golf course requirements.
Adair's spikes attach to an overshoe via screw threads. Adair, Fig. 3.
Nakayama's spike attaches to a golf shoe with screw threads. Nakayama,
Fig. 1. Using Nakayama's spikes on Adair's overshoe is nothing more than
a simple substitution of one element for another. "[W]hen a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result." KSR, 550 U.S. at 416, United
States v. Adams, 383 U.S. 39, 50-51 (1966).
9
Appeal2014-009943
Application 11/479,768
Appellants present neither evidence nor technical reasoning that tends
to show that their invention achieves more than a predictable result. We
sustain the rejection of claim 18.
Claims 4-11 and 20
Claims 4--11 depend, directly or indirectly, from claim 1. Claims
App. Claim 20 depends from claim 18. Appellants do not offer any
arguments or evidence for the separate patentability of these claims other
than those previously considered with respect to claims 1 and 18. Appeal
Br. 13. Accordingly, we sustain the Examiner's rejection of claims 4--11
and 8-10.
Unpatentability of Claim 21
over Adair and Nakayama
Claim 21 depends from claim 18 and adds the limitation: "further
consisting essentially of one or more of an indicia and a decoration printed
on the covering." Claims App. The Examiner finds that Adair as modified
by Nakayama discloses all of the limitations of claim 21 except for indicia.
Final Action 4. The Examiner takes official notice 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. 13. We fully considered and addressed this argument in connection
with our 2013 Decision.
10
Appeal2014-009943
Application 11/479,768
[T]he 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.
2013 Decision, 7. As explained above, we found Appellants' indicia
argument unpersuasive in our 2013 Decision and we find it equally
unpersuasive here, notwithstanding the amendment to Appellants' transition
term from "comprising" to "consisting essentially of." In that regard, our
previous discussion of transition terms as applied to the claim 1 rejection
applies, with equal force, to the Examiner's rejection of claim 21.
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.
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)(l )(iv).
AFFIRMED
11