John Koo et al.

Patent Trials and Appeals Board

Sep 9, 2019

14064131 - (D) (P.T.A.B. Sep. 9, 2019)

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.
14/064,131 10/26/2013 John Koo 31045-154dp 8190
43914 7590 09/09/2019
JOSEPH SWAN, A PROFESSIONAL CORPORATION
1334 PARKVIEW AVENUE, SUITE100
MANHATTAN BEACH, CA 90266
EXAMINER
KAVANAUGH, JOHN T
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
09/09/2019 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):
JSWAN@PATENT-TECHLAW.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN KOO and JONATHAN GOLDBERG
____________

Appeal 2017-011530
Application 14/064,1311
Technology Center 3700
____________

Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 17–23 and 26–31. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 The Appellants identify Dynasty Footwear, Ltd. as the real party in
interest. Appeal Br. 2.
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ILLUSTRATIVE CLAIM
17. A shoe, comprising:
an outsole comprised of an outsole component formed
from a base material, including:
a first layer made of the base material alone, and
a second layer having individual particles embedded
within the base material,
wherein said individual particles comprise at least one of
hemp or corn husk.
CITED REFERENCES
The Examiner relies upon the following references:
Eggers US 1,782,382 Nov. 18, 1930
Koo US 2004/0194341 A1 Oct. 7, 2004
REJECTIONS2
I. Claims 17–23 and 26–31 are provisionally rejected on the
ground of nonstatutory double patenting, over the claims of Application No.
14/093,706.3
II. Claims 17–23 and 26–31 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Koo.

2 The Examiner (Answer 2) withdraws the following rejections included in
the Final Office Action (pages 4–9): the rejection of claims 17–23 and 26–
31 under 35 U.S.C. § 103(a) as unpatentable over Bingham US 3,303,250
(issued Feb. 7, 1967); the rejection of claims 17–23 and 26–31 under
35 U.S.C. § 103(a) as unpatentable over Bingham and Eggers; the rejection
of claims 26 and 31 under 35 U.S.C. § 103(a) as unpatentable over Koo and
Eggers; and the rejection of claims 17–23 and 26–31 on the ground of
nonstatutory obviousness-type double patenting, over claim 16 of
US 7,516,506.
3 Application No. 14/093,706 issued on February 20, 2018, as US 9,894,955.
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III. Claims 17–23 and 27–30 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Koo and Eggers.
RELATED CASES
At the time the Appeal Brief was filed in the present case, Notices of
Appeal had been filed in at least the following related applications: U.S.
Application 10/613,741 (Appeal 2009-002670 and Appeal 2012-006720);
U.S. Application 11/674,668 (Appeal 2011-002134); and U.S. Application
14/093,706 (Appeal 2016-002096). The Appellants failed to cite these
related Appeals as required by 37 C.F.R. § 41.37(c)(ii). See Appeal Br. 2.
We remind the Appellants and counsel to review prior and pending
proceedings before the Board, as well as any other qualifying matters, so as
to ensure that all related cases are identified. Representations to the Office
are subject to requirements of, e.g., 37 C.F.R. §§ 1.56, 11.18, and 11.303.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Double Patenting
The Appellants do not address the Examiner’s provisional rejection of
claims 17–23 and 26–31 on the ground of nonstatutory double patenting,
over the claims of Application No. 14/093,706. See Final Action 9. We
note that Application No. 14/093,706 issued on February 20, 2018, as
US 9,894,955. Absent any challenge by the Appellants, we summarily
sustain this double-patenting rejection.
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Obviousness
1. Obviousness Over Koo
Claims 17–23 and 26–31 stand rejected as obvious over Koo. The
Appellants argue that this rejection is erroneous, at least because Koo does
not disclose independent claim 17’s recitation “wherein said individual
particles comprise at least one of hemp or corn husk.” See Appeal Br. 7.
The Examiner’s position (Final Action 3–4; Answer 2–5) is that the
identified limitation of claim 17 would have been obvious over Koo’s
teaching of a shoe deemed to satisfy the other limitations of claim 17 and
having the “particles . . . formed from any type of material,” including
“natural or synthetic fibers; natural plant material (e.g., dried and ground
into small particles or else cut or separated into small, thin fibers) . . .
although natural and/or organic materials generally are preferred” (Koo
¶ 22).
Disputing the rejection, the Appellants argue that “Koo does not say
anything at all about the more-specific feature of embedded particles that are
comprised of hemp and/or corn husk, as presently recited.” Appeal Br. 7. In
addition, the Appellants emphasize:
Koo mainly just broadly mentions the use of “natural plant
material” (among a variety of other types of materials).
Moreover, to the extent Koo’s disclosure becomes more
specific than that, it refers to using materials having “thin
fibers” or materials that provide “a relatively soft fabric bottom
(primarily due to the flocking with fabric or other fibers)”. See,
e.g., paragraphs [0021], [0022] and [0028] of Koo.
Id. at 8. See also id. at 10 (“Koo expresses a clear preference for using thin,
soft fibers.”) According to the Appellants, a person of ordinary skill in the
art, at the relevant time, would not have “been motivated to use particles
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comprised of corn husk or hemp based on anything that is actually disclosed
in Koo.” Id. at 11. Thus, “the Examiner has not specifically pointed to
anything in Koo that would have suggested such materials,” but instead
“Koo expresses a clear preference towards the use of softer materials with
thinner fibers.” Id. Further, the Appellants argue:
[P]aragraph [38] of the present Specification clearly discloses
that one purpose of using particles of corn husk or hemp is for
“adding strength to the finished product for wear
improvement”. Moreover, even if Appellant had not pointed
out these particular advantages, such a situation would not have
reduced the Examiner’s burden of establishing a prima facie
case of obviousness based on what is actually disclosed or
suggested in Koo, without reference to Appellant’s own present
disclosure. Appellant does not believe that any such prima facie
case of obviousness has been established. In fact, as noted
above, if anything, Koo tends to point more toward the use of
different types of materials than what is recited in claim 17.
Id. The Appellants also point out that claims 26 and 31 are limited to
“particles” having “hemp” and that claims 27 and 30 are limited to
“particles” having “corn husk.” Id. at 12–14.
Contrary to the Appellants’ arguments, the claims in the Appeal do
not recite the proposed distinguishing features of thick fibers and “adding
strength to the finished product for wear improvement.” See id. at 11.
Limitations not appearing in the claims cannot be relied upon for
patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Accordingly, the Appellants’ associated arguments are not persuasive.
In addition, Koo broadly suggests the use of a wide variety of plant
materials as the “particles” in shoe soles:
Generally speaking, such particles may be formed from
any type of material. Examples include any of: wood (e.g.,
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ground into dust or converted into pulp and then formed into
small particles); paper (e.g., converted into pulp and then
formed into small particles); leather (e.g., dried and ground into
small particles); a composite leather and wood mixture; glass;
natural or synthetic fibers; natural plant material (e.g., dried and
ground into small particles or else cut or separated into small,
thin fibers), natural or synthetic rubber, any of a variety of
different types of metal (e.g., steel or aluminum), plastic,
silicone, Styrofoam, or any other type of material, although
natural and/or organic materials generally are preferred. In each
case, the material preferably is ground, cut, broken or formed
into small particles of a size appropriate for the intended
purpose, e.g., any of the sizes listed above.
Koo ¶ 22. Therefore, Koo’s disclosures of using “natural . . . fibers” and
“natural plant material” — along with the assertion that “[g]enerally
speaking, such particles may be formed from any type of material” and the
recommendation that organic materials generally are preferred — suggest
the use of alternative materials, such as the “corn husk” and “hemp” of
claims 17–23 and 26–31.
In view of the foregoing, we are not persuaded of error in the
rejection. We sustain the rejection of claims 17–23 and 26–31 under 35
U.S.C. § 103(a) as unpatentable over Koo.
2. Obviousness Over the Combination of Koo and Eggers
In view of the Examiner’s withdrawal of the rejection of claims 26
and 31 (see Answer 2), claims 17–23 and 27–30 stand rejected as obvious
over the combination of Koo and Eggers.
The Examiner relies upon Eggers for teaching the use of corn husks,
which the Examiner states may be combined with Koo, so as to provide an
inexpensive alternative to the materials identified in Koo. Final Action 6–7
(“[I]t would have been obvious to construct the natural plant fibers/particles
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as taught by Koo out of corn husk or hemp, as taught by official notice
and/or Eggers, to construct the ground contact surface out of natural
materials to save on cost.”) See also Answer 6 (“[U]sing a fiber which
would be readily available to the manufacturer and/or cheaper would be a
motivation. The manufacture could be located in the ‘Corn Belt’, i.e.[,] a
region in the Midwestern U.S. excellent for raising corn. In such a location
corn husk fibers would be readily available and cheap.”)
The Appellants contend that there is insufficient factual support for
the Examiner’s stated reason to combine or modify the prior art. As the
Appellants state: “The Examiner does not provide any evidence at all that it
is common to manufacture paper from corn husk in the ‘Corn Belt’ or that
manufacturing paper from corn husk actually would be less expensive, in
any location whatsoever, or under any circumstance.” Reply Br. 7.
We agree with the Appellants. Furthermore, it is unclear how a
document published in 1930, such as Eggers, would bear upon the
Examiner’s identified economic factors (e.g., the cost of raw materials) at
the time of the invention of the claims in this Appeal. Accordingly, the
reason for combining Koo with Eggers, as stated in the rejection, lacks
adequate supporting evidence.
Therefore, we do not sustain the rejection of claims 17–23 and 27–30
under 35 U.S.C. § 103(a) as unpatentable over Koo and Eggers.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 17–23 and 26–
31 on the ground of nonstatutory double patenting.
We AFFIRM the Examiner’s decision rejecting claims 17–23 and 26–
31 under 35 U.S.C. § 103(a).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED