Lorri Cornett

Patent Trials and Appeals Board

Mar 11, 2022

2021005554 (P.T.A.B. Mar. 11, 2022)

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. 15/452,262 03/07/2017 Lorri Cornett 099642-004155USPT 3993 70001 7590 03/11/2022 NIXON PEABODY LLP 70 WEST MADISON STREET SUITE 5200 CHICAGO, IL 60602 EXAMINER KANE, KATHARINE GRACZ ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 03/11/2022 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): docketingchicago@nixonpeabody.com ipairlink@nixonpeabody.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LORRI CORNETT Appeal 2021-005554 Application 15/452,262 Technology Center 3700 ____________ Before CHARLES N. GREENHUT, MICHAEL J. FITZPATRICK, and WILLIAM A. CAPP, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s non-final decision rejecting claims 1-3, 5-12, and 14-19. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held February 24, 2022. We affirm in part. STATEMENT OF THE CASE The Specification The Specification’s “disclosure relates to a cover for a cycling shoe, more specifically a cycling shoe cover that may be inserted on a cycling 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42 and identifies herself as the sole real party in interest. Appeal Br. 1. Appeal 2021-005554 Application 15/452,262 2 shoe when a cyclist dismounts to protect the cycling shoe and the walking surface when the cyclist walks in the cycling shoe.” Spec. ¶1. The Claims Claims 1-3, 5-12, and 14-19 are rejected. Non-Final Act. 1. No other claims are pending. Id.; Appeal Br. 14-17. Claim 1 is illustrative and reproduced below. 1. A cycling shoe cover for mating with a cycle shoe having a toe with a protruding cleat and an opposite heel, the cycling shoe cover comprising: a pair of side panels; a front toe sole panel coupled to one end of each of the pair of side panels forming a front pocket mateable with the toe of the cycling shoe; a back heel sole panel coupled to the opposite end of each of the pair of side panels forming a back pocket mateable with the heel of the cycling shoe, wherein the side panels run parallel to the cycling shoe over the length of the cycling shoe between the front toe sole panel and the back heel sole panel and connects the front toe sole panel and the back heel sole panel; a sole member formed from the front toe sole panel and the back toe sole panel, the sole member having a bottom surf ace interposed between the cycling shoe and a ground surface when the shoe cover is worn over the cycling shoe, wherein the bottom surface of the sole member is discontinuous having a through aperture extending through the sole member at an arch area of a foot in the shoe and separating the front toe sole panel and the back heel sole bottom panel. Appeal Br. 14. Appeal 2021-005554 Application 15/452,262 3 The Examiner’s Rejections The Examiner’s rejections before us are as follows: 1. claims 1-3, 5-12, and 14-19 under 35 U.S.C. § 112(b) as being indefinite (Non-Final Act. 2); 2. claims 1, 3, 6, 8, 9, 10, 12, 15, and 17-19 under 35 U.S.C. § 103 as unpatentable over Lougheed2 and Klingseis3 (id. at 3); 3. claims 2 and 11 under 35 U.S.C. § 103 as unpatentable over Lougheed, Klingseis, and Opie4 (id. at 9); 4. claims 5 and 14 under 35 U.S.C. § 103 as unpatentable over Lougheed, Klingseis, and Malm5 (id. at 10); and 5. claims 7 and 16 under 35 U.S.C. § 103 as unpatentable over Lougheed, Klingseis, and Holt6 (id.). DISCUSSION Rejection 1 The Examiner rejected all claims as being indefinite on account of each of the independent claims, namely claims 1, 10, and 19, reciting “the length of the cycling shoe” (emphasis added) without first expressly providing an antecedent basis for “length.” Non-Final Act. 2. Appellant argues that length is an inherent characteristic of the cycling shoe and, thus, the recitation of the shoes provides antecedent basis for its length. Appeal Br. 5. Appellant is correct. See Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed. Cir. 2001) (“Inherent components of elements recited 2 US 2,958,963, issued Nov. 8, 1960 (“Lougheed”). 3 US 5,548,910, issued Aug. 27, 1996 (“Klingseis”). 4 US 2012/0124865 A1, published May 24, 2012 (“Opie”). 5 US 2,068,238, issued Jan. 19, 1937 (“Malm”). 6 US 2016/0037860 A1, published Feb. 11, 2016 (“Holt”). Appeal 2021-005554 Application 15/452,262 4 have antecedent basis in the recitation of the components themselves.” (quoting MPEP § 2173.05(e))). Accordingly, we reverse this rejection. Rejection 2 This rejection is of claims 1, 3, 6, 8, 9, 10, 12, 15, and 17-19. Non- Final Act. 3. In arguing against this rejection, the Appeal argues patentability of one subgroup of claims, namely claims 8, 17, and 19, as a subgroup. Appeal Br. 8-10; see 37 C.F.R. § 41.37(c)(1)(iv) (“Under each heading identifying the ground of rejection being contested, any claim(s) argued separately or as a subgroup shall be argued under a separate subheading that identifies the claim(s) by number.”). We choose claim 1 as representative of claims 1, 3, 6, 9, 10, 12, 15, and 18, and claim 8 as representative of the subgroup of claims 8, 17, and 19. See 37 C.F.R. § 41.37(c)(1)(iv) (“When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group or subgroup and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone.”). Claims 1, 3, 6, 9, 10, 12, 15, and 18 Loughseed “relates to . . . improvements in overshoes, particularly overshoes designed to be used on golf shoes and the like.” Loughseed 1:15- 18. The Examiner found that Lougheed discloses a cycling shoe cover (overshoes 5) having most of the subject matter of claim 1 except that it “does not specifically disclose the bottom surface of the sole member is discontinuous having a through aperture extending through the sole member at an arch area of a foot in the shoe and separating the front toe sole panel Appeal 2021-005554 Application 15/452,262 5 and the back heel sole bottom panel.” Non-Final Act. 3-4 (citing Loughseed Figs. 1-4). Klingseis “relates generally to a spike guard for spiked shoes, and more particularly to such a device for use with golf shoes having spikes thereon.” Klingseis 1:4-7. The Examiner found that Klingseis teaches a bottom surface of the sole member being discontinuous having a through aperture (cut-out portion 16) extending through the sole member at an arch area of a foot in the shoe and separating the front toe sole panel and the back heel sole bottom panel. Id. at 4 (citing Klingseis Fig. 2). The Examiner further found that Klingseis teaches such a bottom surface “for the purpose of allowing size adjustment and more universally usable.” Id. (no citation provided but see Klingseis 2:24-28 (“Also, a cut-out portion (16) is provided for making the spike guard more universally usable such that the connecting sections (17) and (18) can be stretched to accommodate a large range of sizes of shoes.”)). The Examiner concluded that it would have been obvious to a person of ordinary skill in the art “to include an aperture, as taught by Klingseis, to [sic, in] the shoe cover of Lougheed, in order to allow size adjustment to be able to use the shoe cover with a range of shoe sizes and allow for a snug fit.” Id. at 4. Appellant argues that the prior art fails to disclose a “cycling shoe cover,” as recited in the preamble of claim 1. Appeal Br. 5-6. Appellant asserts that “[b]oth Lougheed and Klingseis disclose covers for golf shoes, not cycling shoes” and that “[g]olf shoes differ from cycling shoes.” Id. at 5-6. The Examiner responds that the preamble’s recitation of “cycling” Appeal 2021-005554 Application 15/452,262 6 should be given patentable weight and, even if it were, it would not distinguish over the prior art. Ans. 3. The Examiner has the better position. First, the body of claim 1 defines a structurally complete invention. Thus, we agree with the Examiner that the preamble’s recitation of “cycling” is not a claim limitation. Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (“Where a patentee uses the claim preamble to recite structural limitations of his claimed invention, the PTO and courts give effect to that usage. . . . Conversely, where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation.”); IMS Technology, Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000) (“If the preamble adds no limitations to those in the body of the claim, the preamble is not itself a claim limitation and is irrelevant to proper construction of the claim.”). Second, even if the preamble were limiting, Appellant has not identified any structure that its cycling shoe cover would require beyond that recited in the body of the claim 1. See Ans. 3 (“Also, ‘Cycling shoe’ does not invoke any specific features that could allow a skilled person to differentiate a cycling shoe cover from any other shoe cover of the prior art.”). Instead, Appellant argues that golf shoes are different than cycling shoes. Appeal Br. 6; Reply Br. 2. Although we agree that golf shoes7 and 7 Appellant’s arguments presuppose that Loughseed and Klingseis disclose shoes covers only for golf shoes. See, e.g., Appeal Br. 5 (“Both Lougheed and Klingseis disclose covers for golf shoes, not cycling shoes.”). However, their disclosures are not so limited. See Loughseed 1:15-18. (The disclosed “invention relates to . . . improvements in overshoes, particularly overshoes designed to be used on golf shoes and the like.”); Klingseis 1:4-7 (“The Appeal 2021-005554 Application 15/452,262 7 cycling shoes are different, that fact is not probative as to the meaning of “cycling shoe cover.” Put another way, Appellant has not identified any structure allegedly required of its “cycling shoe cover” that is not positively recited in claim 1. Appeal Br. 5-6; Reply Br. 2. There is nothing in the record explaining how a “shoe cover” is structurally different due to a recitation indicating an intention to use that cover with a cycling shoe as opposed to with a golf shoe. Appellant next argues that the prior art fails to disclose “side panels” that “run . . . over the length of the cycling shoe . . . connect[ing] the front toe sole panel and the back heel sole panel,” as recited in claim 1. Appeal Br. 6-8. The Examiner relied on Loughseed for this limitation. Non-Final Act. 4 (citing Loughseed Figs. 1-4). Appellant argues that none of Loughseed’s Figures provides a view that shows side panels extending over the length of the shoe. Appeal Br. 7. The Examiner responds that, in addition to its Figures, “Lougheed also states the [over]shoe ‘consists of a shoe engaging perimetrical portion 6’.” Ans. 3-4 (quoting Loughseed 2:7- 8). The full sentence states: “My overshoe collectively designated 5, consists of a shoe engaging perimetrical portion 6, generally made of rubber or plastic or synthetic material, and having a heel engaging portion 7 which extends to a greater degree that [sic, than] the perimetrical portion 6.” Loughseed 2:7-11. This suggests that a portion of the overshoe (6) engages the shoe around its entire perimeter, and thus also its sides. And, in present invention relates generally to a spike guard for spiked shoes, and more particularly to such a device for use with golf shoes having spikes thereon.”). Appeal 2021-005554 Application 15/452,262 8 Figure 1, the structure designated with reference numeral 6 does extend around the entire perimeter. Id. at Fig. 1 (ref. 6). We have considered Appellant’s arguments but they do not apprise us of error in the rejection of claim 1. Accordingly, we affirm the rejection of claim 1, as well as that of claims 3, 6, 9, 10, 12, 15, and 18, which fall therewith. 37 C.F.R. § 41.37(c)(1)(iv). Claims 8, 17, and 19 Claim 8 depends from claim 6, which depends from claim 1. Claim 6 recites that “the sole member includes a top surface having a raised pattern” and claim 8 further recites “wherein the raised pattern includes a back area in the back heel sole panel having a greater height than the front area in the front toe sole panel.” Appeal Br. 14-15. The Examiner relies on the varying height of Loughseed’s perimetrical portion 6, and specifically on the fact that its height is greater in a heel area than a toe area, to meet this claim language. Non-Final Act. 5, 9. Appellant argues that the Examiner has misconstrued the claim language. Appeal Br. 8-10. We agree with Appellant. The claim language is referring to a raised pattern on the top surface of the sole member. See claim 6 (“the sole member includes a top surface having a raised pattern”). Thus, it is unreasonable for the Examiner to read that claim language onto the upper edge or rim of Lougheed’s perimetrical portion, which surrounds sole portion 8. Appellant apprises us of error in the rejection of claim 8, as well as that of claims 17 and 19, which recite the same claim language. Accordingly, we reverse the rejection of claims 8, 17, and 19. Appeal 2021-005554 Application 15/452,262 9 Rejections 3-5 Appellant argues against these rejections solely on the basis that the rejected claims-namely, claims 2, 5, 7, 11, 14, and 16-depend ultimately from either independent claim 1 or independent claim 10. Appeal Br. 11. Thus, and because Appellant fails to show error in the rejection discussed above of claims 1 and 10, it like wise fails to show error in the instant rejections. Accordingly, we affirm the rejection of claims 2, 5, 7, 11, 14, and 16. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 5-12, 14-19 112(b) Indefiniteness 1-3, 5-12, 14-19 1, 3, 6, 8, 9, 10, 12, 15, 17-19 103 Lougheed, Klingseis 1, 3, 6, 9, 10, 12, 15, 18 8, 17, 19 2, 11 103 Lougheed, Klingseis, Opie 2, 11 5, 14 103 Lougheed, Klingseis, Malm 5, 14 7, 16 103 Lougheed, Klingseis, Holt 7, 16 Overall Outcome 1-3, 5-7, 9, 10-12, 14-16, 18 8, 17, 19 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART