Ex Parte Lewis et alDownload PDFPatent Trials and Appeals BoardMar 21, 201914295786 - (D) (P.T.A.B. Mar. 21, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/295,786 06/04/2014 21839 7590 03/25/2019 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 FIRST NAMED INVENTOR Paul Lewis 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. 0045259-001285 7004 EXAMINER LYNCH, MEGAN E ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 03/25/2019 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): ADIPDOC 1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL LEWIS, DAVID BRADLEY GRANGER, JACOB MARTINEZ, and WILLIAM STERLING WYNN 1 Appeal2017-005579 Application 14/295,786 Technology Center 3700 Before JOHN C. KERINS, JILL D. HILL, and GEORGE R. HOSKINS, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Paul Lewis et al. ("Appellants") appeal under 35 U.S.C. § 134(a) from the Examiner's Final decision rejecting claims 26-58. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify Implus Footcare LLC as the real party in interest. Appeal Br. 2. Appeal2017-005579 Application 14/295, 786 BACKGROUND Independent claims 26, 41, and 48 are pending. Independent claim 26, reproduced below, illustrates the claimed invention, with certain limitations italicized. 26. An insole comprising: a bottom layer having a top side and a bottom side, a heel portion, a toe portion and an arch portion; a heel pad positioned in a heel recess area in said heel portion on said bottom side of said bottom layer; a plurality of curvilinear ridges located on bottom side of by the bottom layer and protrude outwardly from the bottom side of said bottom layer and extend essentially lengthwise along a longitudinal insole axis that extends longitudinally from the heel portion into the toe portion, said plurality of longitudinal curvilinear ridges occupy substantially the lateral width of the bottom side of said insole bottom layer; one or more channels positioned between said curvilinear ridges and extending essentially lengthwise along said longitudinal insole axis extending essentially longitudinally from the heel portion into the toe portion in parallel with one or more of said curvilinear ridge; a portion of one or more of said plurality of curvilinear ridges makes contact with the bottom internal surface of a user's shoe, said channels forming a plurality of air channels to force air flow along an air pathway positioned in one or more of said channels; one or more elongated recesses located on said bottom layer, said one or more elongated recesses being positioned within one or more of said channels and occupying a portion of the longitudinal length of said one or more channels; said heel pad having inside heel ridges that each protrude outwardly from the surface of the heel pad occupying substantially the lateral width of the heel pad and having heel channels defined by the space between said heel ridges, wherein said heel ridges and heel channels extend essentially lengthwise along a longitudinal heel axis and extend essentially parallel to said longitudinal axis of said bottom layer, said heel ridges 2 Appeal2017-005579 Application 14/295, 786 being adjacent to said curvilinear ridges of said bottom layer such that heel channels are in communication with adjacent channels in said bottom layer of said insole and assist air flow along the bottom layer. Appeal Br. 36-37 (Claims App.). The italicized limitations are recited in each of independent claims 26, 41, and 48. The longitudinal extension of the ridges and channels is disclosed, in Appellants' Specification, to work with a shoe-wearer's natural heel-strike and forward rocking to toe off, to displace air through the longitudinally- extending channels to support foot cooling. Spec. ,r 4 7. REJECTIONS I. Claims 26-58 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Final Act. 3--4. II. Claims 26-30, 34--37, 41--44, and 47-53 stand rejected under 35 U.S.C. § I02(b) as anticipated by Sessa (US 5,815,949; iss. Oct. 6 1998). Final Act. 4--10. III. Claims 48 and 54--58 also stand rejected under 35 U.S.C. § 102(b) as anticipated by Sessa. Final Act. 10-13. IV. Claim 31 stands rejected under 35 U.S.C. § I03(a) as unpatentable over Sessa and Kolumbuchi (WO 2009/068298 Al; pub. June 4, 2009). Final Act. 13. V. Claim 32 stands rejected under 35 U.S.C. § I03(a) as unpatentable over Sessa, Dalton et al. (US 2004/0118017 Al; pub. June 24, 2004, hereinafter "Dalton"), and McCormick (US 2006/0254088 Al; pub. Nov. 16, 2006). Final Act. 14. 3 Appeal2017-005579 Application 14/295, 786 VI. Claim 33 stands rejected under 35 U.S.C. § I03(a) as unpatentable over Sessa, McCormick, and Yamada (US 2010/0251577 Al; pub. Oct. 7, 2010). Final Act. 15-16. VII. Claims 38--40 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Sessa and McCormick. Final Act. 16. VIII. Claims 45 and 46 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Sessa. Final Act. 1 7. ANALYSIS Rejection I: Definiteness of Claims 26-58 The Examiner finds that the recitation of "the bottom internal/inside surface of a user's shoe" in claims 2 6, 2 7, 41, 4 3, 4 8 and 51 "renders the claim indefinite because such recitation is inferentially included as part of the claimed combination of elements ( the insole and the bottom internal surface of a user's shoe)." Final Act. 3--4. The Examiner suggests that Appellants positively recite the user's shoe to provide "antecedent basis ... therefor" or "adopt[] language such as [']adapted to be['] when relating claimed elements to the bottom internal surface of a user's shoe." Id. The Examiner also finds that the recitations of "said concave shape" in claim 3 7 and "said elongated recesses" in claim 57 lack antecedent basis. Id. at 4. Appellants respond only that the Examiner's suggested "'adapted to' language is not necessary to put the claims in condition for allowance, but the Applicant may be agreeable to that kind of amendment to allow the claims to proceed to issuance." Appeal Br. 23, 34. We agree with the Examiner that the claim language "the bottom internal/inside surface ofa user's shoe" in claims 26, 27, 41, 43, 48 and 51 is reasonably construed as inferentially reciting a structural element, resulting 4 Appeal2017-005579 Application 14/295, 786 in uncertainty as to whether the user's shoe is part of the apparatus defined by the claim. See Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) ("[T]he patent drafter is in the best position to resolve the ambiguity in the patent claims."). We sustain the indefiniteness rejection of claims 26-58. Rejections II and III: Anticipation of Claims 26-30, 34-37, 41-44, and 47-58 The Examiner finds that Sessa discloses an insole with a bottom layer 42 having, inter alia, curvilinear ridges 88, 90 "located on bottom side (below edge of 52) of the bottom layer ( 42)," "protrude[ing] outwardly from the bottom side of said bottom layer," and "extend[ing] essentially lengthwise (the ridges are positioned from the toe to the heel as seen in Fig. 6) along a longitudinal insole axis that extends longitudinally from the heel portion into the toe portion." Id. at 5. The Examiner also finds that the longitudinal curvilinear ridges "occupy substantially the lateral width of the bottom side of said insole bottom layer (as seen in Fig. 4, the ridges 88 [and] 90 extend substantially the lateral width of the bottom side between the edges of 52)." Id. The Examiner provides the following annotated version of Sessa's Figure 2 to support the findings. 5 Appeal2017-005579 Application 14/295, 786 Id. at 7. The Examiner further finds that Sessa discloses channels "positioned between said curvilinear ridges ... and extending essentially lengthwise ... along said longitudinal insole axis extending essentially longitudinally from the heel portion into the toe portion in parallel with" the curvilinear ridges. Id. at 5. The Examiner then finds that, inter alia, a portion of the "curvilinear ridges makes contact with the bottom internal surface ... of [the] shoe (Fig. 1 )," and the channels "force air flow along an air pathway (the open channel is an air pathway) positioned in one or more of said channels (Col. 4, lines 66-67)." Id. Appellants note, correctly, that Sessa's Figure 2 is directed to a shoe sole, whereas Sessa's Figure 6 is directed to an insole. Appeal Br. 17; Sessa 2:22-28. Referring to Sessa's Figure 6, Appellants argue, inter alia, that the 6 Appeal2017-005579 Application 14/295, 786 Examiner erred in finding that Sessa discloses curvilinear ridges and channels that extend "essentially lengthwise" along a "longitudinal insole axis" that runs from heel to toe. Appeal Br. 17. Appellants argue that Sessa's ridges and channels instead run "transversely across the width of the insole." Id. Appellants provide the following annotated version of Sessa's Figure 6 to support their argument. No ridge" (tr chmmds c:k axis from hed p<.irtwn into t(,l, l Pumpimi ,;;hm-mt!s ~u-~ l trasi~vcridv C!Copy with citationCopy as parenthetical citation