14776658 - (D) (P.T.A.B. Aug. 30, 2019)

Domingo Cifo Garcia

Patent Trials and Appeals BoardAug 30, 2019

14776658 - (D) (P.T.A.B. Aug. 30, 2019)

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. 14/776,658 09/14/2015 Domingo CIFO GARCIA SZP0.16500US 8705 43439 7590 08/30/2019 Peter B. Scull HDC IP LAW, LLP 4818 W. 31st Ave Denver, CO 80212 EXAMINER BAYS, MARIE D ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 08/30/2019 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): pbsteam@hdciplaw.com peterscull@comcast.net pscull@hdciplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte DOMINGO CIFO GARCIA __________ Appeal 2019-000989 Application 14/776,658 Technology Center 3700 __________ Before DANIEL S. SONG, MICHAEL J. FITZPATRICK, and JEREMY M. PLENZLER, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge FITZPATRICK. Opinion Dissenting filed by Administrative Patent Judge PLENZLER. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 8–11. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Cifosport Licensing, S.L. (“Appellant”) is the Applicant, as provided for under 37 C.F.R. § 1.46, and is also identified as the sole real party in interest. Appeal Br. 2. Appeal 2019-000989 Application 14/776,658 2 STATEMENT OF THE CASE The Specification The Specification discloses “a weighting device for footwear, applicable in footwear suitable for practi[c]ing sports training and/or rehabilitation therapies.” Spec. 1:5–6. The device is “intended to allow weighting of footwear and to ensure immobilization of the device on the instep area, avoiding compressive stresses and possible rashes on the user’s skin.” Id. at 1:7–10. The Rejected Claims Claims 8–11 are rejected. Final Act. 1.2 Claim 8 is representative and reproduced below. 8. A system for sports training or rehabilitation therapies, comprising: a footwear comprising an instep area and laces, and a weighting device for weighting the footwear, the weighting device comprising: a weighting plate with a curved shape for resting on the instep area of the footwear, and a receptacle, the receptacle comprising a casing for the arrangement of said plate therein, and a releasable mounting base to be placed under the laces of the footwear to be weighted and retained by the laces and having a curved outer surface so as to adapt to the area of the instep of the footwear, and 2 The Final Action additionally states that claim 5 is rejected (see Final Act. 1), but claims 3–7 were previously canceled. See Appeal Br. 2. The only other claims, claims 1 and 2, have been allowed. Id.; Final Act. 1. Appeal 2019-000989 Application 14/776,658 3 the casing and the releasable mounting base being provided with complementary couplings, such that the casing is arranged over the laces. Appeal Br. 26. The Examiner’s Rejection The following rejection is before us for review: claims 8–11, under 35 U.S.C. § 103(a), as being unpatentable over Harrell3 and either Choi4 or Fitzgerald.5 Final Act. 3. Other rejections included in the Final Action been withdrawn. See Ans. 3. DISCUSSION The Examiner found that Harrell discloses all of the subject matter of claims 8–11 “except for the exact contents of the receptacle.” Final Act. 4 (citing various features of Harrell’s Figures). The Examiner found that each of Choi and Fitzgerald teaches “providing a curved rectangular plate to be placed in casings on footwear.” Id. (no citations provided); see also Ans. 6 (citing Choi element 28a; Fitzgerald element 23). The Examiner determined that “[i]t would have been obvious to provide a curved rectangular plate as taught by either Choi or Fitzgeral[d] in the casing in the device of Harrell to allow the user to use the footwear for exercise and weight lifting.” Final Act. 4. We review each alternative of the rejection below. Harrell and Choi Appellant argues that the asserted weighting plate from Choi (i.e., weighting element 28a) is not a plate but rather “a soft flexible pouch full of 3 US 4,536,975, issued Aug. 27, 1985 (“Harrell”). 4 US 2004/0035025 A1, published Feb. 26, 2004 (“Choi”). 5 US 6,010,438, issued Jan. 4, 2000 (“Fitzgerald”). Appeal 2019-000989 Application 14/776,658 4 beads.” Appeal Br. 7. Although Choi does not explicitly use the term “soft flexible pouch,” Appellant’s argument is persuasive. Choi both describes and illustrates the weighting element as “having a plurality of the iron beads therein.” Choi ¶24, Fig. 4a (ref. 29). The Examiner responds that the Specification lacks a definition of “plate,” and cites the following dictionary definition of plate: “a smooth flat thin piece of material.” Ans. 5. The Examiner then notes that Appellant’s plate is not flat because it is curved, and the Examiner appears to use that alleged fact as justifying an unreasonably broad but unarticulated construction of “plate.” Id. at 5–6 (finding that Choi’s weighting element 28a is a plate “inasmuch as applicants have defined and shown such”). The Examiner has erred. First, the Specification need not provide a definition for a claim term. What the law requires is that “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). The Examiner has neither rejected the claims under 35 U.S.C. § 112(b) nor provided any basis for doing so. A person of ordinary skill in the art would understand what “a weighting plate” is in view of the Specification. More specifically, a person of ordinary skill in the art, construing all three words, in the context of the remainder of claim 1 and in light of the Specification, would understand that “a weighting plate” is a unitary object that has sufficient rigidity to retain its generally planar shape and sufficient weight to meaningfully tax leg muscles during use. See, e.g., Spec. 2:31–34 (“a plate made of a heavy material”) 3:3–6 (“the plate made of a heavy material”), 5:3–5 (“the weighting device Appeal 2019-000989 Application 14/776,658 5 for footwear of the invention comprises a plate (1) made of a heavy material, in this case of metal, said plate (1) having a quadrangular and laterally curved shape”), Fig. 1 (ref. 1), Fig. 7 (ref. 1) . Choi’s weighting element 28a is not described as a plate. In fact, Choi even distinguishes between “a plurality of iron beads” and “a metallic plate” when discussing the placement of a different weighting element “inside a bottom sole” of a sports shoe. Choi ¶5. In contrast to a metallic plate, Choi’s weighting element 28a appears to be a non-rigid pouch that alone lacks sufficient weight to meaningfully tax leg muscles. Id. at Fig. 4a. Thus, Choi fills it with iron beads. Id. ¶24. Appellant’s use of the term “a weighting plate” in claim 1 reads on neither Choi’s weighting element 28a nor the iron beads therein. For this reason, the Harrell and Choi alternative of the Examiner’s rejection is unsustainable. Harrell and Fitzgerald A premise of the Examiner’s proposed combination of Harrell and Fitzgerald is that the latter “teaches providing a curved rectangular plate to be placed in casings on footwear.” Final Act. 4 (emphasis added). However, Fitzgerald does not so teach. As argued by Appellant, “Fitzgerald does not promote enclosing the weighting plates inside a casing since they have to be visible to the user for making it easier to vary the quantity of plates there.” Appeal Br. 20 (citing Fitzgerald 4:59–63); see also Fitzgerald Fig. 6 (ref. 23). Thus, the Examiner has not provided a prima facie case of obviousness based on inserting the weighting plate 23 of Fitzgerald into the asserted casing of Harrell. Additionally, Appellant argues that the asserted weighing plate of Fitzgerald (i.e., weighting plate 23) does not have “a curved shape for Appeal 2019-000989 Application 14/776,658 6 resting on the instep area of the footwear,” as recited in claim 8. Appeal Br. 15 (“[N]one of the cited documents suggest a weighting plate with a curved shape for resting on the instep area of the footwear.”), 22 (“[T]he Fitzgerald weighting plates are not shaped for instep use (rather side of the foot use).”). This argument by Appellant is persuasive. The Examiner has not shown how the proposed combination would satisfy the limitation of “a weighting plate with a curved shape for resting on the instep area of the footwear.” For this additional reason, the Harrell and Fitzgerald alternative of the Examiner’s rejection is unsustainable. SUMMARY For the foregoing reasons, we reverse the rejection of claim 8 as unpatentable over Harrell and either Choi or Fitzgerald. For the same reasons, we also reverse the rejection of claims 9–11, which ultimately depend from claim 8. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (“Dependent claims are nonobvious under section 103 if the independent claims from which they depend are nonobvious.”). REVERSED UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte DOMINGO CIFO GARCIA __________ Appeal 2019-000989 Application 14/776,658 Technology Center 3700 __________ Before DANIEL S. SONG, MICHAEL J. FITZPATRICK, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge, dissenting. The majority’s reversal of the Examiner’s decision to reject claim 8 is based, at least in part, on their determination that Choi fails to teach a “weighting plate.” Maj. Op. 3–4. Because I disagree with that determination, I respectfully dissent. Although Appellant contends that “in Choi the weighting element 28a is not a replaceable weighting plate as in claim 8, but a soft flexible pouch full of beads,” there is no meaningful discussion of what is missing from Choi’s weighting element 28a. Appeal Br. 7; see also Reply Br. 22 (“the Choi device 28a is not a plate, but rather a bag of shot/round pellets. A plate and a bag of pellets are not the same things”). By asserting that Choi’s weighting element 28a is not a “plate” because it is “a soft flexible pouch,” Appellant implies that some unspecified level of rigidity is required for a Appeal 2019-000989 Application 14/776,658 2 “plate.” Appellant, however, also advocates for a definition of “plate” as a “shallow vessel,” which is independent of any particular level of rigidity. Reply Br. 18. Choi’s weighting element 28a, illustrated in Figure 4a, reproduced below, is a shallow vessel. Figure 4a is a perspective view of Choi’s weighting element 28a. Choi explains that “the weighting element[] 28a . . . ha[s] a plurality of the iron beads therein.” Choi ¶ 24. I agree that Choi’s weighting element 28a is not entirely rigid, but do not see any persuasive reason why that is required by the recited “weighting plate,” or why any other structure required by a “weighting plate” is missing from Choi’s weighting element 28a. I appreciate that Choi references iron beads and metal plates separately (id. ¶ 5), and that a bead, itself, is not a plate, but that does not establish that the combination of the iron beads and the structure housing those iron beads is not a “weighting plate” under the broadest reasonable interpretation of that term. Appeal 2019-000989 Application 14/776,658 3 Appellant’s Specification describes the “weighting plate” as “a plate made of a heavy material, preferably quadrangular and having a curved or angular shape suitable for resting on the area of the instep of the footwear.” Spec. 2:32–34; see also Spec. 5:3–5 (including similar description). “[A] flexible receptacle [is] provided with a suitable mouth for arranging said plate therein.” Id. at 2:34–34. The Specification explains that “[t]he curved or angular shape of the plate made of a heavy material ensures that it rests with its concave or inner surface on the outer surface of the footwear, in the instep area.” Id. at 3:3–5. Thus, the Specification, does not require any particular level of rigidity for a “weighting plate.” For at least these reasons, I am not apprised of error in the Examiner’s finding that Choi teaches a “weighting plate.”