Ex Parte Hauser

Patent Trial and Appeal Board

Jul 11, 2018

15187124 (P.T.A.B. Jul. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/187,124 06/20/2016
36822 7590 07/12/2018
GORDON & JACOBSON, P.C.
60 LONG RIDGE ROAD
SUITE407
STAMFORD, CT 06902
FIRST NAMED INVENTOR
Frank G. Hauser
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.
HAU-001 5248
EXAMINER
MOHANDESI, JILA M
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
07/12/2018 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 FRANK G. HAUSER1
Appeal2017-010293
Application 15/187, 124
Technology Center 3700
Before DANIEL S. SONG, JEFFREY A. STEPHENS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
Final Office Action (hereinafter "Final Act.") rejecting claims 1-22 in the
present application. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134.
We REVERSE.
1 Referred to as "Appellant" herein.
Appeal2017-010293
Application 15/187,124
The claimed invention is directed to a disposable, low friction,
breathable bootie made from a thin, flexible polymer sheet-like material, and
includes a series of air vents (Abstract). Representative independent claims
1 and 19 read as follows (Appeal Brief (hereinafter "App. Br.") 12, 15,
Claims App'x, emphasis added):
1. A bootie to be worn by a human foot to facilitate donning
and doffing ski boots, comprising:
a thin, flexible, low friction plastic sheet material in a
generally tubular form having an open upper end, a closed lower
end, an interior and an exterior, the tubular form sized to receive
the human foot between the upper end and the lower end, the
tubular form having a foot portion, a lower leg portion, and an
ankle portion therebetween,
the foot portion having an upper arch portion, a lower arch
portion, a ball portion, and a distal toe portion, corresponding to
respective portions of the human foot when positioned within the
bootie,
the lower leg portion having a front side, a rear side, and
lateral and medial sides, a top edge, and
the ankle portion having an ankle portion and a lower heel
portion,
the sheet material including at least one set of air vents to
provide breathability between the exterior of the tubular form
and the human foot at the interior of the tubular form, the at least
one set of air vents selected from:
(i) a first set of air vents located on a top side of the foot
portion of the bootie beginning behind the toe portion and
extending toward the lower leg portion to an area on the top side
of the foot portion just past where the ball of the foot portion of
the bootie ends,
(ii) a second set of air vents located on the bottom side of
the foot portion at a location past where the ball portion
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Application 15/187,124
proximally ends and the arch portion begins and then extending
for the length of the arch portion to an area where the arch portion
transitions into the heel portion, and
(iii) at least a third set of air vents located on one or more
of the front, rear, medial and lateral sides of the lower leg portion
above the ankle portion and below the top edge.
19. A method of donning and doffing a ski boot,
compnsmg:
a) providing a foot;
b) placing a thin, flexible, breathable low friction plastic
sheet material bootie onto the foot;
c) next, placing the foot with bootie into a ski boot,
wherein the bootie reduces friction between the foot and the ski
boot to facilitate insertion of the foot into the ski boot;
d) securing the ski boot onto the foot while the bootie
remains on the foot; and
e) after, doffing the ski boot from the foot, wherein the
bootie reduces friction between the foot and the ski boot to
facilitate removal of the foot from the ski boot.
REJECTIONS
The Examiner rejects various claims under 35 U.S.C. § 103(a) as
follows:
1. Claims 1-18 as obvious over Bradley (US 4,204,345, iss. May
27, 1980) in view of Caggiano (US 3,417,408, iss. Dec. 24, 1968) (Final
Act. 2).
2. Claims 1-18 as obvious over Branley (US 1,805,035, iss. May
12, 1931) in view of Guerra (US 4,708,272, iss. Nov. 24, 1987) (Final Act.
5).
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Application 15/187,124
3. Claims 19 and 20 as obvious over Hanson et al. (US 3,895,452,
iss. July 22, 1975 (hereinafter "Hanson")) (Final Act. 9).
4. Claims 21 and 22 as obvious over Hanson in view of Waite (US
250,114, iss. Nov. 29, 1881) (Final Act. 10).
ANALYSIS
Rejection 1
Claims 1-18 stand rejected as obvious over Bradley in view of
Caggiano, claims 2-18 depending from independent claim 1. The Examiner
finds that Bradley discloses most of the limitations of independent claim 1,
but concedes that Bradley "does not appear to disclose the sheet material
including at least one set of air vents to provide breathability." (Final Act.
2-3). The Examiner relies on Caggiano for disclosing "a bootie having at
least one set of air vents to provide breathability," and for teaching that any
desired number of ventilating holes may be provided at any desired
portion(s) of the bootie (Final Act. 3). The Examiner concludes that "it
would have been obvious to one of ordinary skill in the art to provide
ventilation holes to the bootie of Bradley as claimed and as taught by
Caggiano to provide better ventilation to the foot and lower leg of the
wearer." (Final Act. 3).
The Appellant disagrees and argues, inter alia, that "[p ]uncturing the
ventilation holes of Caggiano into the plastic sock of Bradley would defeat
the purpose of Bradley; i.e., to provide a 'liquid impermeable' sock to keep
one's feet dry--the holes would allow water to wet the wearer's feet," and
render the sock of Bradley unsuitable for its intended purpose (App. Br. 6).
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Application 15/187,124
Indeed, as the Appellant points out, "Bradley is directed to a 'means for
maintaining the feet dry while wearing boots' (col. 1, lines 19--20)," and
accordingly, "teaches a 'liquid impermeable material' ( col. 1, line 50), such
as a 'suitable plastic' ( col. 1, lines 53-54)." (App. Br. 5). We agree with the
Appellant that the suggested modification would render the plastic sock of
Bradley inoperable for its intended purpose of keeping the feet dry. If the
proposed modification would render the prior art invention being modified
"inoperable for its intended purpose," then there is likely no suggestion or
motivation to make the proposed modification. In re Gordon, 733 F.2d 900,
902 (Fed. Cir. 1984); see also In re Schulpen, 390 F.2d 1009, 1013 (CCPA
1968) ("Rather than being made obvious by the reference, such modification
would run counter to its teaching by rendering the apparatus inoperative.").
Moreover, as the Appellant notes, the Examiner's articulated reason
for applying the holes of Caggiano, that is, for ventilation, appears to be
addressed by Bradley in that "[ t ]he Bradley sock is already breathable: it is
made from a 'preferably air permeable' plastic." (App. Br. 6; Bradley, col.
1, 11. 52-56). Accordingly, it appears that the Examiner's articulated
reasoning is based on impermissible hindsight, and is not supported by
sufficient rational underpinnings. KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398,418,421 (2007).
Therefore, in view of the above, we reverse Rejection 1.
Rejection 2
Claims 1-18 stand rejected as obvious over Branley in view of
Guerra, the Examiner finding that Branley discloses most of the limitations
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recited in independent claim 1, except that it "does not disclose the bootie to
be made of low friction plastic sheet." (Final Act. 5-7). The Examiner
relies on Guerra for establishing that "it is old and conventional to make
booties from low friction plastic sheet" (Final Act. 7), and concludes that:
it would have been obvious to one of ordinary skill in the art to
make the bootie of Branley from plastic sheet material since it
has been held to be within the general skill of a worker in the art
to select a known material on the basis of its suitability for the
intended use as a matter of obvious design choice.
(Final Act. 7).
The Appellant disagrees and argues, inter alia, that a plastic sheet
material, even if ventilated, would not be considered a replacement for a
sock made of a woolen material as disclosed in Branley (App. Br. 7). We
generally agree. While the Examiner asserts that it would have been a
matter of design choice to "select a known material on the basis of its
suitability for the intended use" (Final Act. 7), the Examiner does not
provide us with adequate articulation as to what the intended use would have
been to motivate a person of ordinary skill in the art to have combined the
teachings of these references in the manner suggested. KSR, 550 U.S. at 418
("A patent composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art. . . . [I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.").
In the above regard, as the Appellant correctly points out, Branley
discloses "a ventilated stocking, sock or hose" with knitted holes or
openings (App. Br. 6-7, citing Branley, col. 1, 11. 8, 14--15; col. 2, 11. 60-61).
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The Examiner's rejection is based on implementing the hosiery of Branley
using the plastic film disclosed in Guerra, and as such, the plastic film would
have been worn like the hosiery of Branley, namely, against the skin of the
wearer. However, as the Appellant notes, "[i]t is notoriously well-known
that plastic sheet material directly against the skin induces perspiration."
(App. Br. 7). The Examiner's rejection fails to provide any reason with
rational underpinnings as to why a person of ordinary skill in the art would
construct and wear such a ventilated stocking, sock or hose made from the
plastic material disclosed in Guerra. In view of the above, we find the
Examiner's mere reliance on "design choice" is inadequate to support the
conclusion of obviousness as to claim 1.
Therefore, we reverse Rejection 2 as well.
Rejection 3
Method claims 19 and 20 stand rejected as obvious over Hanson, the
Examiner finding that Hanson discloses a "bootie to be made of a resilient
liner" that may be made of various different materials, and that "[ s ]uitable
materials for the construction of the liner will be apparent to those skilled in
the art." (Final Act. 9-10). The Examiner concedes that Hanson does not
disclose that the "polyurethane elastomer is a plastic sheet," but concludes
that "it would have been obvious to one of ordinary skill in the art to make
the bootie of Hanson from plastic sheet material since it has been held to be
within the general skill of a worker in the art to select a known material on
the basis of its suitability for the intended use as a matter of obvious design
choice." (Final Act. 10, emphasis added).
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The Appellant argues, inter alia, that this rejection is improper
because "the [E]xaminer fails to address and apply the teaching of Hanson to
any of the method steps, and the claimed order of the method steps. Rather,
the [E]xaminer limits the rejection to the structure disclosed in Hanson."
(App. Br. 10). Specifically, the Appellant argues that "the foot in Hanson is
not first inserted into the liner and then into the ski boot in sequential steps,
as required by the claim." (App. Br. 10).
We agree with the Appellant that the rejection of these method claims
is deficient because the rejection does not address the steps recited therein.
The Examiner responds that "Hanson discloses that a removable, resilient
inner padding/liner (11) that can be placed onto the foot prior to placing the
foot into the ski boot, since the liner is removable from the ski boot." (Ans.
5, emphasis added). However, the fact that the liner of Hanson "can be
placed onto the foot prior to placing the foot into the ski boot" is inadequate
to set forth a prima facie case of obviousness with respect to the claimed
method that recites a sequence of steps.
In addition, as the Appellant argues, there is no evidence that
"padding liner 11 of Hanson is placed onto the foot prior to placing the foot
into the ski boot." (Reply Br. 2). The Appellant is correct that in contrast to
the claim language, Hanson actually suggests that liner 11 is already
positioned within shell 12, prior to a foot being inserted therein (Reply Br.
2-3; Hanson, col. 2, 11. 56-60; col. 3, 11. 10-14; Fig. 3).
The Examiner further responds that "Hanson clearly shows a
bootie/liner/sock, i.e. foot covering placed onto the foot as shown in Figure
3, prior to inserting the foot into a ski boot." (Ans. 6). To any extent that
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Application 15/187,124
the Examiner is referring to the sock worn on the foot of the user in Figure 3
of Hanson, we observe that the rejection modifies resilient inner padding
liner 11 so as to be a bootie made of "a thin, flexible, breathable low friction
plastic sheet material" as required by these claims (Final Act. 10). The
rejection does not rely on the sock worn by the user.
We further agree with the Appellant that "to modify Hanson by
replacing the padding liner with a thin, flexible, breathable low friction
plastic sheet material would destroy the function of the liner." (Reply Br. 3).
A "thin, flexible ... plastic sheet material" would not provide "padding" that
is "resilient to provide firm support for the skier's foot yet sufficiently
flexible to conform to the contours thereof so as to avoid localized pressure
areas which might cause discomfort." (Hanson, col. 2, 11. 42--46). It is
rather apparent that a liner made of a "thin, flexible ... plastic sheet
material" would likely result in localized pressure areas and cause
discomfort to the skier.
Therefore, in view of the above, we reverse Rejection 3.
Rejection 4
Claims 21 and 22 stand rejected as obvious over Hanson as applied to
claim 19 in view of Waite, the Examiner relying on Waite for disclosing
ventilation holes in booties (Final Act. 10). The Appellant relies on
arguments submitted above in support of patentability, and argues that
"Waite fails to cure any of the deficiencies noted with respect to Hanson."
(App. Br. 11 ). Indeed, these claims ultimately depend from method claim
19, and the Examiner's rejection does not address the deficiencies explained
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above relative to the rejection of claim 19 over Hanson. Accordingly,
Rejection 4 is also reversed.
CONCLUSION
The Examiner's rejections of claims 1-22 are REVERSED.
REVERSED
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