Ex Parte WoodsDownload PDFPatent Trial and Appeal BoardNov 30, 201713632757 (P.T.A.B. Nov. 30, 2017) 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. 13/632,757 10/01/2012 Jeffrey N. Woods WOOJ.001 3405 23442 7590 11/30/2017 RYLANDER & ASSOCIATES PC P.O. Box 250 VANCOUVER, WA 98660 EXAMINER CARTER, CAMERON A ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 11/30/2017 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 JEFFREY N. WOODS __________ Appeal 2017-000030 Application 13/632,757 Technology Center 3700 __________ Before JOHN C. KERINS, EDWARD A. BROWN, and LYNNE H. BROWNE, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jeffrey N. Woods (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1–8 and 12–15. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE INVENTION Appellant’s invention relates to protection of a worker’s feet and shoes from sparks from cutting and welding. Spec. para. 2. Appeal 2017-000030 Application 13/632,757 2 Claims 1 and 12 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. An industrial shoe protector, comprising: a strap; a canopy portion connected to said strap, wherein the canopy portion has a canopy portion upper quarter that is a quarter of the canopy portion that is closest to the strap; two securing holes in the canopy portion upper quarter; wherein the industrial shoe protector is configured to secure to an industrial shoe by inserting one or more laces of the industrial shoe through the securing holes in the canopy portion with the strap disposed above the ankle and behind the laces of the industrial shoe; and wherein said canopy portion is configured to cover the laces of the industrial shoe below an ankle of the industrial shoe when the industrial shoe protector is secured to the industrial shoe. THE REJECTIONS The Examiner has rejected: (i) claims 1–8 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; (ii) claims 1–8 under 35 U.S.C. § 112, second paragraph, as being indefinite; (iii) claims 1, 3, 4, and 6–8 under 35 U.S.C. § 102(b) as being anticipated by Williams (US 5,042,119, issued Aug. 27, 1991); (iv) claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Williams; (v) claim 2 under 35 U.S.C. § 103(a) as being unpatentable over Williams and Valteau (US 5,845,422, issued Dec. 8, 1998); Appeal 2017-000030 Application 13/632,757 3 (vi) claims 12–14 under 35 U.S.C. § 103(a) as being unpatentable over Riebesell (US 7,726,045 B2, issued June 1, 2010) and Valteau; and (vii) claim 15 under 35 U.S.C. § 103(a) as being unpatentable over Riebesell, Valteau, and Williams. ANALYSIS Claims 1–8--Written Description Claims 1–8 are rejected as failing to comply with the written description requirement on the basis that there is no support in the Specification or the drawings for “a strap.” Final Act. 3. Appellant does not present arguments directed to the rejection, and has thus waived any such arguments. Appeal Br. 5. Accordingly, the rejection is summarily affirmed. Claims 1–8--Indefiniteness The Examiner finds that it is unclear what the invention encompasses because claim 1 recites “a strap,” which lacks support in the Specification and the drawings. Final Act. 3. Appellant does not present arguments directed to the rejection, and has thus waived any such arguments. Accordingly, the rejection is summarily affirmed. Claims 1, 3, 4, and 6–8--Anticipation--Williams The Examiner finds, for claim 1, that Williams discloses an industrial shoe protector 200 comprising a strap 30, and a canopy portion 20 connecting to the strap 30, with the canopy portion having an upper quarter constituting the quarter of the canopy portion that is closest to the strap. Final Act. 4. The Examiner also finds that Williams discloses two securing Appeal 2017-000030 Application 13/632,757 4 holes 24 in the canopy portion upper quarter, and that the industrial shoe protector 200 is configured to secure to an industrial shoe 90 by inserting one or more laces 10 of the industrial shoe through the securing holes in the canopy portion, with the strap disposed above the ankle and behind the laces of the industrial shoe. Id. (citing Williams, Fig. 6). The Examiner further finds that Williams discloses that the canopy portion is configured to cover the laces of the industrial shoe below an ankle of the industrial shoe when the industrial shoe protector is secured to the industrial shoe. Id. (citing Williams, Fig. 4). With respect to the recitation in claim 1 that the strap is disposed above the ankle, the Examiner finds that when the strap is not placed over the canopy portion, the strap extends above the user’s ankle. Id. Appellant contends that none of the embodiments in Williams has all of the limitations recited in claim 1 and therefore claim 1 cannot be anticipated by Williams. Appeal Br. 7. Appellant maintains that the Examiner improperly relies on features shown in different embodiments in order to be able to address all claim limitations. Id. More specifically, Appellant asserts that the Examiner relies on aspects of canopy portion 20 and strap 30 from different embodiments in addressing the several recited aspects of those components in claim 1. The Examiner responds by asserting that, in Figure 6 of Williams, the canopy portion is also identified with numeral 20 and the strap is also identified with numeral 30, and, in that figure, the strap extends above the ankle. Ans. 2. The Examiner also asserts that, in Figure 7 of Williams, the canopy portion is similarly identified with numeral 20 and notes that the canopy covers the laces when the canopy portion is closed. Id. Concerning Figures 3–7 of Williams, the Examiner asserts that the canopy portion must Appeal 2017-000030 Application 13/632,757 5 be attached to the shoe via securing holes because there is no other way to connect those components to each other. Id. at 4. To the extent that the Examiner is asserting that, in the Williams disclosure, the canopy portion and the strap in each of the figures are the same as those shown in each of the other figures, or that they have the same features, we do not agree. For example, elements 20 and 20’ in Figure 6, which are asserted to correspond to the claimed canopy, are two flaps permanently secured to the shoe by stitching. Williams, Fig. 6, col. 8, ll. 62– 65. In contrast, element 20 in Figures 1–3 is not permanently attached to the shoe. Differences between embodiments also exist for strap 30, leading to the use of different reference numerals such as 30’, 30’’, and 30a. An invention is anticipated if the same device, including all the claim limitations, is shown in a single prior art reference. Every element of the claimed invention must be literally present, arranged as in the claim. Perkin– Elmer Corp. v. Computervision Corp., 732 F.2d 888, 894 (Fed. Cir.), cert. denied, 469 U.S. 857 (1984); Kalman v. Kimberly–Clark Corp., 713 F.2d 760, 771–72 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984). In an anticipation rejection, “it is not enough that the prior art reference … includes multiple, distinct teachings that [an ordinary] artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). In the Final Action, the Examiner appears to rely on certain features present in the embodiment shown in Figures 1–4, and additionally on other features present in the embodiment presented in Figure 6, in rejecting claim 1. See Final Act. 4. In the Response to Arguments section of the Answer, the Examiner also relies on other aspects shown in Figures 5 and 7. See Appeal 2017-000030 Application 13/632,757 6 Ans. 2–4. Appellant is correct that this is an improper approach to establishing anticipation. Focusing on a single embodiment, it appears that Figure 3 is the closest embodiment to the subject matter of claim 1. However, Figure 3 does not include all limitations set forth in claim 1. Notwithstanding the Examiner’s position that the canopy portion must be attached to the shoe via securing holes, we are unable to discern in Figure 3 any such securing holes in the canopy portion (i.e., slits 24, 124, 154, or 164 as shown in, for example, Figure 1). Furthermore, the discussion in Williams directed to Figure 3 undermines the Examiner’s position, in disclosing that “[d]evice 300 is releasibly [sic, releaseably] affixed to shoe 90 by folding engaging member 30’ proximally at fold 38 and threadably engaging member 30’ around at least one cross section 18 of the lace while such is laced between lace apertures 92. Thus, engaging member 30’ also performs an affixing function.” Williams, col. 6, l. 64–col. 7, l. 1. In other words, Williams’ canopy portion and strap can be attached to the shoe by folding the strap around the laces, apparently without the need for securing holes. In view of the foregoing, the preponderance of the evidence does not support the Examiner’s position that Williams anticipates claim 1. The rejection of claim 1, and of claims 3, 4, and 6–8, depending therefrom, as being anticipated by Williams, is not sustained. Claim 5--Obviousness--Williams The Examiner does not rely on or propose to modify Williams in any manner that would remedy the above-noted deficiency in the rejection of Appeal 2017-000030 Application 13/632,757 7 claim 1, from which claim 5 depends, over Williams. Final Act. 5–6. For the same reasons discussed supra, we do not sustain the rejection under 35 U.S.C. § 103(a) of claim 5. Claim 2--Obviousness—Williams/Valteau The Examiner does not rely on Valteau in any manner that would remedy the above-noted deficiency in Williams in the rejection of claim 1, from which claim 2 depends. Id. at 6. For the same reasons discussed supra, we do not sustain the rejection under 35 U.S.C. § 103(a) of claim 2. Claims 12–14--Obviousness—Riebesell/Valteau Claim 12 The Examiner finds that Riebesell discloses most of the limitations of claim 12, including an industrial shoe 12 and an industrial shoe protector 86 comprising a tongue portion 108 connected to a canopy portion 74. Id. at 6– 7. The Examiner explains that Riebesell discloses a tongue portion located behind the laces and a canopy portion that overhangs and extends downward over the laces, and provides the following annotated version of Figure 6 of Riebesell: Appeal 2017-000030 Application 13/632,757 8 See Ans. 4. Annotated Figure 6 of Riebesell, reproduced above, is a front elevation view of Riebesell’s shoe 12. Appellant contends that reference numeral 108 in Figure 6 of Riebesell is referred to in Riebesell as an interior surface of tongue 74, and that it is unreasonable to rely on a single component in Riebesell as corresponding to two claim elements, namely the claimed “canopy portion” and the claimed “tongue portion.” Appeal Br. 10–11; Reply Br. 5. In the Reply Brief, Appellant argues that the “canopy portion” and the “tongue portion” of claim 12 are separate portions of a larger structure, whereas Riebesell’s interior surface 108 is merely a sub-portion of part 74. Reply Br. 5–6. Appellant’s argument fails to recognize that the Examiner considers Riebesell as disclosing two portions of a larger structure, and is using reference numeral 108 not to specifically point to the interior surface of the Appeal 2017-000030 Application 13/632,757 9 tongue, but instead as indicating generally the portion extending downwardly over the laces, as contrasted with the portion 74 underlying the laces. Given Appellant’s acknowledgement that the claimed canopy portion and tongue portion can be separate portions of an overall structure within the scope of claim 12, we are not apprised of error in the Examiner’s findings with respect to the two portions of what Riebesell refers to as tongue 74 as meeting the canopy and tongue limitations. Accordingly, we sustain the rejection of claim 12 as unpatentable over Riebesell and Valteau. Claim 14 Appellant does not provide any substantive arguments for claim 14, and relies on the arguments presented for claim 12. See Appeal Br. 11. For the reasons discussed above with respect to claim 12, we do not find the combination of Riebesell and Valteau to be deficient. Claim 13 Claim 13 recites “wherein said canopy portion is configured to cover most stitching on a side of the industrial shoe forward of the ankle when the industrial shoe protector is secured to the industrial shoe.” Id. at 15 (Claims App.). Appellant contends that Riebesell does not disclose a canopy portion that meets this claim limitation. Although the Examiner points to Figures 1 and 2 of Riebesell as showing the claim feature, and provides further explanation in the Answer, we do not see how or where canopy section 108 extends forward of the ankle toward the toes, let alone cover most of the stitching on the side of the shoe at that location. Final Act. 8; Ans. 6–7. Our review of Figures 1 and 2 reveals that canopy section 108 does not cover the Appeal 2017-000030 Application 13/632,757 10 stitching that lies alongside the first three eyelets for the laces forward of the ankle and towards the toe area. See Riebesell, Figs. 1, 2, 11. Accordingly, we do not sustain the Examiner’s rejection of claim 13. Claim 15--Obviousness—Riebesell/Valteau/Williams Appellant does not provide any substantive arguments for claim 15, and we therefore assume that Appellant relies on the arguments presented for claim 12, from which claim 15 depends. For the reasons discussed above with respect to claim 12, we do not find the combination of Riebesell and Valteau to be deficient. The rejection of claim 15 is sustained. DECISION The rejection of claims 1–8 under 35 U.S.C. § 112, first paragraph is affirmed. The rejection of claims 1–8 under 35 U.S.C. § 112, second paragraph is affirmed. The rejection of claims 1, 3, 4, and 6–8 under 35 U.S.C. § 102(b) as being anticipated by Williams is reversed. The rejection of claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Williams is reversed. The rejection of claim 2 under 35 U.S.C. § 103(a) as being unpatentable over Williams and Valteau is reversed. The rejection of claims 12 and 14 under 35 U.S.C. § 103(a) as being unpatentable over Riebesell and Valteau is affirmed. The rejection of claim 13 under 35 U.S.C. § 103(a) as being unpatentable over Riebesell and Valteau is reversed. Appeal 2017-000030 Application 13/632,757 11 The rejection of claim 15 under 35 U.S.C. § 103(a) as being unpatentable over Riebesell, Valteau, and Williams is affirmed. 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-IN-PART Copy with citationCopy as parenthetical citation