Ex Parte Rovelli

Patent Trial and Appeal Board

Mar 21, 2017

12374301 (P.T.A.B. Mar. 21, 2017)

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
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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.,
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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
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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
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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
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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.
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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
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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.
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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).
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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.
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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.
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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
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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)
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