John Koo et al.Download PDFPatent Trials and Appeals BoardSep 9, 201914064131 - (D) (P.T.A.B. Sep. 9, 2019) 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. 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. Appeal 2017-011530 Application 14/064,131 2 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. Appeal 2017-011530 Application 14/064,131 3 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. Appeal 2017-011530 Application 14/064,131 4 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 Appeal 2017-011530 Application 14/064,131 5 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., Appeal 2017-011530 Application 14/064,131 6 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 Appeal 2017-011530 Application 14/064,131 7 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). Appeal 2017-011530 Application 14/064,131 8 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 Copy with citationCopy as parenthetical citation