Ex Parte RovelliDownload PDFPatent Trial and Appeal BoardMar 21, 201712374301 (P.T.A.B. Mar. 21, 2017) Copy Citation 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. 12/374,301 03/11/2010 Frank Rovelli 889-26-035 7379 23935 7590 03/23/2017 KOPPEL, PATRICK, HEYBL & PHILPOTT 2815 Townsgate Road SUITE 215 Westlake Village, CA 91361-5827 EXAMINER NGUYEN, SON T ART UNIT PAPER NUMBER 3643 NOTIFICATION DATE DELIVERY MODE 03/23/2017 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): GENERALMAIL@KOPPELPATENT.COM eofficeaction @ appcoll.com usptointake@koppelpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANK ROVELLI Appeal 2015-006633 Application 12/374,301 Technology Center 3600 Before THOMAS F. SMEGAL, LISA M. GUIJT, and GORDON D. KINDER, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s decision2 rejecting claims 1-8, 15, 17-26, 34, and 36^43. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter a NEW GROUND OF REJECTION of claims 2, 18, 15, and 34 under 35 U.S.C. § 112, fourth paragraph, pursuant to our authority under 37 C.F.R. § 41.50(b). 1 Appellant identifies the real party of interest as Vettic, Inc. Appeal Br. 1. 2 Appeal is take from the Final Office Action dated May 28, 2014 (“Final Act.”), as supplemented by the Advisory Action dated August 5, 2014. Appeal 2015-006633 Application 12/374,301 CLAIMED SUBJECT MATTER Claims 1,5, 17, 18, 22, 36, and 39 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. An all-in-one packing, pad, and shoe substitute for ground contact for barefoot horse hoof protection, comprising a plug of synthetic organic resin having lateral dimensions configured to conform to a cleaned, normally existing recess in a horse hoof, said hoof recess being the space in said hoof surrounded by the inner side walls of said hoof, the plug being further dimensioned for ground contact from within the hoof recess. REJECTIONS I. Claims 1-8, 15, 17-26, 34, and 37^43 stand rejected under 35 U.S.C. § 112, first paragraph, for failing to comply with the written description requirement. II. Claims 3-7, 15, 21-26, 34, and 36^43 stand rejected under 35 U.S.C. § 112, second paragraph, for being indefinite. III. Claims 1-3, 5, 6, 15, 17-20, 22, 23, 34, 36, 37, 39, and 40 stand rejected under 35 U.S.C. § 102(b) as anticipated by Kelly (US 2005/0121205 Al; pub. June 9, 2005). IV. Claims 4, 7, 8, 21, 24-26, 38, and 41^43 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kelly and Jacobs (US 4,869,400; iss. Sept. 26, 1989). ANALYSIS Rejection I Regarding independent claims 1,5, 17, 18, 22, and 39, the Examiner 2 Appeal 2015-006633 Application 12/374,301 determines that the claim limitation “lateral dimensions” lacks written description support in the Specification. Final Act. 2. Appellant argues that the Specification meets the written description requirement. Appeal Br. 9. In support, Appellant submits that “[t]he natural cavity in the horse hoof[] inherently has a depth and a width,” and that “‘lateral’ is a common anatomical term used to describe a measurement from, or a direction from a median point. Reply Br. 1. Appellant produces the figure below. Id. This figure depicts the torso of a human being with a horizontal line with a first end point on a vertical centerline of the torso identified as “Medial” and with a second end point at the side of the torso beyond an arm of the human being identified as “Lateral.” “[T]he test for sufficiency [of the written description] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharmas., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (quoting Vas-Cath. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991)). We agree with Appellant that the claimed plug inherently has dimensions, including lateral dimensions, and accept the definition of lateral dimensions as proposed by Appellant supra (i.e., dimensions extending to the right side and to the left side of the plug from a centerline). The Specification states that the plug “fill[s] the recess.” Spec., 3 Appeal 2015-006633 Application 12/374,301 p. 11; see also id. Fig. 1. Thus, the Specification reasonably conveys to those skilled in the art that Appellant had possession of the subject matter of independent claims 1,5, 17, 18, 22, and 39, and claims 2-4, 6, 7, 15, 19-21, 23-26, 34, 37, 38, and 40 43 depending therefrom, namely, that the plug has lateral dimensions configured to conform to the recess. Accordingly, we determine that the subject matter of claims 1-8, 15, 17-26, 34, and 37-43 complies with the written description requirement of 35 U.S.C. § 112, first paragraph. Rejection II Regarding claims 3-7, 21-24, and 37-41, the Examiner determines that Appellant is, in certain instances, claiming “the recess,” and in certain instances, not claiming “the recess,” and therefore, the scope of the claims is “inconsistent,” rendering the claims indefinite. Final Act. 3-6. For example, with respect to the dependent claims, the Examiner determines that the claims “positively claim[] the recess because the plug is formed in the recess and not configured to or adapted to [be] form[ed] in the recess.” Ans. 15. The Examiner also rejects any claim depending from claims 3-7, 21-24, and 37—41 pursuant to the same rejection, which includes claims 8, 25, 26, 42, and 43. Final Act. 6. Appellant argues that “‘[t]he recess’ is not part of the invention,” but “an anatomical feature of the horse hoof’ which “is set forth to define[] the invention in relationship” to the horse. Appeal Br. 8; see also Reply Br. 2. We determine that the claim language “configured to” or “adapted to” is not required to signal that a limitation is stating an intended use for the 4 Appeal 2015-006633 Application 12/374,301 plug within the recess of a horse hoof, and therefore, we agree with Appellant that these dependent claims are not indefinite. Accordingly, we do not sustain the Examiner’s rejection of claims 3- 8, 21-26, and 37^13 as indefinite under 35 U.S.C. § 112, second paragraph, based on their recitation of the claim term “recess.” Regarding claims 15, 26, 34, 36, and 43, the Examiner finds that limitations reciting the claim term “when” is unclear, because “‘when’ gives one the option of ‘when’ or ‘when not[’]; thus, if ‘when not’, then the claim is redundant.” Final Act. 4, 5, 6. The Examiner also rejects any claim depending from claims 15, 26, 34, 36, and 43 pursuant to the same rejection, which includes claims 37 and 38. Final Act. 6. Appellant does not address the Examiner’s rejection. See Appeal Br. 6-13; Reply Br. 1—4. We determine that the use of the claim term “when” does not render the claims indefinite, but further specifies a condition of an intended use. Accordingly, we do not sustain the Examiner’s rejection of claims 15, 26, 34, 36-38, and 43 under 35 U.S.C. § 112, second paragraph, based on their recitation of the claim term “when.” Rejection III Regarding claim 1, the Examiner finds, inter alia, that Kelly discloses “an all-in-one packing, pad and shoe substitute . . . comprising a plug of synthetic organic resin (14).” Final Act. 7. In support, the Examiner relies on Kelly’s disclosure that “the resin can be applied to the frog portion, the sole portion or any other portion of the foot/hoof.” Id. (citing Kelly ^ 27); see also Ans. 15-16 (citing Kelly, Abstract, ^ 31). In further support, the 5 Appeal 2015-006633 Application 12/374,301 Examiner relies on Kelly’s teaching that “the plug resin can be used as a packing material on the hoof’ and reasons that such an application would “include any recesses.” Ans. 16 (citing Kelly ^ 27, 34). The Examiner also determines that the claim recitation “configured to conform to a . . . recess” is functional, and that “Kelly is certainly capable of filling in any recess in the animals’ hoof because the resin is a free flowing material that contours to the shape of the area [to which] it is applied.” Id. The Examiner further finds that Kelly discloses that the plug is “dimensioned for ground contact from within the hoof recess.” Final Act. (citing Kelly 25^41); see, e.g., TJ 40 (“liquid urethane is poured in to the sole area of the hoof to create a pad material that [extends] Vs inch below shoe surface.”). The Examiner determines that Kelly discloses that the synthetic material “may be used separately or in conjunction with the molded horse shoes described herein.” Ans. 17 (citing Kelly ^ 29). Appellant argues that “Kelly specifically describes his invention as formulations used (as shown in the drawings) to form a synthetic ‘horse shoe,”’ and thus, for example, not as packing. Appeal Br. 10 (Kelly ]fl[ 8, 12). We disagree. Kelly discloses “in situ applications and devices” that include, but are not limited to, molded hoof shoes. As determined by the Examiner, Kelly discloses that “[depending on the needs of the animal, the synthetic material may be applied to the homy casing portion, the frog portion, the sole portion and/or any other portion of the animal’s foot,” and 6 Appeal 2015-006633 Application 12/374,301 may include “shock absorbent packing”3 that “adhere[s] to the sole of the animal.” Kelly ^ 27. In fact, Kelly discloses that [i]n another embodiment, instant shock absorbent hoof packing material is provided for improved protection and comfort for the feet of hoofed animals. The shock absorbent hoof packing material is particularly useful on animals with traumatized short sore feet, thin-soled feet with thin walls, choric or acute laminitis cases and animals that work on hard surfaces. The packing material is dispensed (and before cured) is generally the consistency of syrup and, therefore, advantageously flows to all[ Jedges of the sole for complete coverage. The packing material sets in approximately 25 to 30 seconds and when cured, has the firmness similar to a pencil eraser. The packing material advantageously adheres tightly to the sole and pad of the animal, so there is no migration of foreign material under the pad. However, the packing material may be used without a pad. Id. at 34, 35. Kelly further discloses that [i]n yet another embodiment a material is provided which vastly enhances hoofwall and heel growth by sharing the load of the sole. This non-toxic self-leveling liquid urethane is poured in to the sole area of the hoof to create pad material that levels out flush to the ground or Vs inch below shoe surface. . . . [T]he material allows for less wear on shoes . . . [and] is preferentially used without a pad. The material advantageously adheres[] to the sole thereby sealing out moisture and debris, stops heels from contracting, allows for faster thicker hoofwall and sole growth, and takes pressure off wall cracks. Furthermore, the material allows for less wear on shoes . . . [and] is preferentially used without a pad. 3 The Specification states that the recess is “defined by the hoof bottom wall and surrounding side wall” and that, in the prior art, “the recess is filled with a suitable material called packing.” Spec. p. 10. 7 Appeal 2015-006633 Application 12/374,301 Kelly ^ 40. We understand from these disclosures in Kelly that the packing fills the recess within the horse hoof and extends below the shoe surface such that the pad may contact the ground. Thus, Appellant’s argument does not apprise us of error in the Examiner’s findings that Kelly discloses a plug of synthetic organic resin having lateral dimensions configured to conform to the recess in a horse hoof and being dimensioned for ground contact from within the hoof recess, as required by claim 1. Appellant submits that the claimed invention is a polyurethane plug sized and shaped to fit fully within the naturally existing recess portion of the hoof and as such provides protection] to the central region of the hoof. . . . Because the thickness of the plug is greater than the depth of the recess, when the plugged hoof rests on the ground that thickness provides support pad for the horse leg such that the hoof lower face does not touch the ground. Therefore, a horseshoe on the bottom face of the hoof is not used (i.e., there is a barefoot hoof) and the plug acts as a substitute for the shoe and provides the protective benefits of a shoe without the need for a horseshoe. Appeal Br. 10-11. Appellant argues that “Kelly does not disclose or suggest a plug within the recess in the absence of a horseshoe.” Id. at 11. We agree with Appellant that Kelly is silent as to whether the packing material described for use on the soles of hoofed animals includes hoofed animals without horseshoes. And, at least with respect to the packing described as extending from the sole, Kelly’s packing extends below the surface of the shoe, meaning a shoe is present. Notwithstanding, we determine that whether the claimed plug is used in the recess of a horse hoof that has a horse shoe or in the recess of a horse hoof that does not have a 8 Appeal 2015-006633 Application 12/374,301 horse shoe is not a patentable distinction from the packing disclosed in Kelly. Put another way, the new use of Kelly’s packing on a barefoot horse, rather than a horse with shoes, does not result in patentable subject matter. “It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” Schreiber, 128 F.3d at 1477 (citations omitted). As our reviewing court stated in Schreiber, “Schreiber’s contention that his structure will be used to dispense popcorn does not have patentable weight if the structure is already known, regardless of whether it has ever been used in any way in connection with popcorn.” Id. Here, the Examiner finds that Kelly discloses the structure recited in claim 1 and thus anticipates the claim, regardless of whether Kelly’s device has ever been used on a horse hoof without a horse shoe. Appellant’s argument regarding the presence or absence of a horseshoe does not apprise us of error in the Examiner’s findings with respect to Kelly and the structure of the plug. For example, Appellant’s argument does not point us to a distinguishing feature of the plug that is necessary when a horseshoe is absent, but unnecessary when a horseshoe is present. Independent claims 5, 17, 22, 36, and 39 positively recite use of the plug on a hoof free of an external horse shoe, and, as is true with respect to all of the independent claims, clai m 18 recites use for barefoot horse hoof protection in the preamble of the claim. However, as discussed supra, we determine that such a statement of intended use is not entitled to patentable weight. 9 Appeal 2015-006633 Application 12/374,301 Accordingly, we sustain the Examiner’s rejection of independent claims 1, 5, 17, 18, 22, 36, and 39. Appellant chose not to present a separate argument for the patentability of the dependent claims 2, 3, 6, 15, 19, 22, 23, 34, 37, and 40 depending therefrom, and therefore, we also sustain the Examiner’s rejection of these dependent claims. Rejection IV The Examiner determined that Kelly does not disclose “a urethane resin formed from reactive components jointly introduced within said hoof recess,” and relies on Jacobs for teaching “a urethane resin formed from reactive components.” Final Act. 13 (citing Jacobs 2:50-63). The Examiner reasons that it would have been obvious “to employ a urethane resin formed from reactive components as taught by Jacobs as the preferred resin in the packing of Kelly in order to provide ease of delivery and sets up free of sagging immediately upon being dispensed.” Id. Appellant acknowledges that “Kelly already describes a two part resin such as set forth in Jacobs.” Appeal Br. 12; see Kelly ^ 32. Notwithstanding, Appellant contends that “Jacobs makes no suggestion that his two part resin, useful for doing auto body repair, has any utility for in situ formation of an external horseshoe, or filling the recess in the horse hoof.” Id. Appellant’s argument that Jacobs must suggest use of the two part resin for in situ horseshoe repair appears to be holding the Examiner to the old TSM (teaching, suggestion, or motivation) standard; such a standard is not required. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). 10 Appeal 2015-006633 Application 12/374,301 Critically, Appellant does not address the Examiner’s rationale for using Jacob’s urethane resin, for example, in place of the liquid urethane disclosed as a suitable packing material (without a pad) in Kelly, as discussed supra, namely, “to provide ease of delivery and set[ting] up free of sagging immediately upon being dispensed.” Regarding forming the urethane resin from reactive components jointly introduced within the hoof recess, such limitation is a product-by-process limitation. See SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1315 (Fed. Cir. 2006) (“A product- by-process claim is ‘one in which the product is defined at least in part in terms of the method or process by which it is made.’”) (quoting Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 158 (1989)). The relevant inquiry is directed to the particular structure being claimed. SmithKline at 1317 (“Regardless of how broadly or narrowly one construes a product-by-process claim, it is clear that such claims are always to a product, not a process.”). Here, the Examiner has accounted for the structure in the prior art, i.e.. a plug of urethane resin, and the Examiner is not required to establish that Kelly’s packing is formed from reactive components jointly introduced within the hoof recess or that it would have been obvious to do so. Appellant has not presented separate arguments based on other limitations in the rejected claims. Accordingly, we sustain the Examiner’s rejection of claims 4, 7, 8, 21, 24, 25, 26, 38, 41, 42, and 43. 11 Appeal 2015-006633 Application 12/374,301 NEW GROUND OF REJECTION Dependent claims must further limit claims from which they depend. See 35 U.S.C. § 112, fourth paragraph. Claim 2, which depends from claim 1, recites “[t]he . . . substitute . . . according to claim 1, in which said hoof is free of a horseshoe on a lower surface of the hoof exterior of the recess,” and claim 19, which depends from claim 18 similarly recites “[t]he . . . substitute for barefoot horses according to claim 18, in which said hoof face is free of an external horseshoe.” Appeal Br. (Claims App.). Further, claim 15, which depends from claim 1, recites “[t]he . . . substitute set forth in claim 1, when configured for placement in the hoof recess, eliminating the need for a separate horseshoe on a lower surface of said horse hoof external of the recess,” and claim 34, which depends from claim 18 similarly recites “[t]he . . . substitute set forth in claim 18, when placed in the hoof interior, eliminating the need for a separate external horseshoe on the face of said horse hoof.” Appeal Br. (Claims App.). Because these statements of intended use do not further limit the structure of the claimed “substitute,” as discussed supra, but only specify that the claimed plug is used with a horse hoof not having a shoe, we reject claims 2, 15, 19, and 34 under 35 U.S.C. § 112, fourth paragraph, for failing to further limit claims from which they depend. DECISION The Examiner’s rejection of claims 1-8, 15, 17-26, 34, and 37^13 under 35 U.S.C. § 112, first paragraph, is REVERSED. 12 Appeal 2015-006633 Application 12/374,301 The Examiner’s rejection of claims 3-7, 15, 21-26, 34, and 36^13 under 35 U.S.C. § 112, second paragraph, is REVERSED. The Examiner’s rejection of claims 1-3, 5, 6, 15, 17-20, 22, 23, 34, 36, 37, 39, and 40 under 35 U.S.C. § 102(b) is AFFIRMED. The Examiner’s rejection of claims 4, 7, 8, 21, 24-26, 38, and 41—43 under 35 U.S.C. § 103(a) is AFFIRMED. We enter a NEW GROUND OF REJECTION of claims 2, 15, 19, and 34 under 35 U.S.C. § 112, fourth paragraph. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground 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 of rejection is 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 of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (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 of rejection and state with particularity the points 13 Appeal 2015-006633 Application 12/374,301 believed to have been misapprehended or overlooked in entering the new ground 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. 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)(l)(iv). AFFIRMED; 37 C.F.R, § 41.50(b) 14 Copy with citationCopy as parenthetical citation