Ex Parte 6766598 et al

Board of Patent Appeals and Interferences

Apr 15, 2010

90007172 (B.P.A.I. Apr. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BACK BEAT, INC.,
Appellant
____________

Appeal 2010-000436
Reexamination Control 90/007,172
Patent 6,766,598 B21
Technology Center 3700
____________

Decided: April 16, 2010
____________

Before JAMES T. MOORE and ALLEN R. MACDONALD,
Vice Chief Administrative Patent Judges, and CAROL A. SPIEGEL,
ROMULO H. DELMENDO, and MICHAEL P. TIERNEY,
Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent under reexamination (hereinafter the “‘598 Patent”) issued to
Mary K. Boncutter and Wilson Chao Nan Chen on July 27, 2004 from
Application 10/264,015 filed on October 3, 2002.
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Back Beat, Inc., the owner of the ‘598 Patent under reexamination,2
appeals under 35 U.S.C. §§ 134(b) and 306 from a final rejection of claims
17-20 (Appeal Brief filed on April 27, 2009, hereinafter “App. Br.,” at 2;
Final Office Action mailed on November 26, 2008).3 We have jurisdiction
under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.

STATEMENT OF THE CASE
This is the second time the record owner of the ‘598 Patent has
appealed to this Board. In Ex parte R & S Trading Co., Inc.,
http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2007038203-
08-2007, aff’d, 264 F. App’x. 888 (Fed. Cir. 2008), a three-member panel of
this Board affirmed the Examiner’s decision to reject claims 1-16 but
reversed as to claims 17-20. The Board’s decision was affirmed by the

2 United States Patent and Trademark Office records indicate that IMS
Holding, Inc. (formerly known as R & S Trading Co., Inc.) assigned its
ownership interest in the ‘598 Patent to Back Beat, Inc. on June 17, 2008, as
recorded on Reel 021185, Frame 0625.
3 The current reexamination proceeding arose from a third-party request for
ex parte reexamination filed by R. Neil Sudol of Coleman Sudol Sapone,
P.C., Bridgeport, Connecticut, on August 13, 2004. We have been informed
that the ‘598 Patent is also the subject of parallel civil litigation in the United
States District Court of the Central District of California, captioned R&S
Trading Company, Inc. v. Wal-Mart Stores, Inc. and BCNY Int’l, Inc., Civil
Action No. 8:04cv894 (C.D. Cal.). According to Appellant, that litigation
has been stayed pending the conclusion of the current reexamination
proceeding (App. Br. 2; Litigation Search Report entered August 8, 2008).
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United States Court of Appeals for the Federal Circuit without opinion. In
re R & S Trading Company, Inc., 264 F. App’x. at 888.
Subsequent to our reviewing court’s judgment and mandate, the
Examiner entered a new ground of rejection against claims 17-20, the only
claims now pending (Office Action mailed on July 14, 2008). That rejection
is the subject of the current appeal.
The ‘598 Patent states that the invention relates to a footwear.
According to Patentees, the invention is, in particular, a light-weight and
comfortable footwear that is buoyant in and resistant to water (col. 1, ll. 12-
15).
Claim 17 on appeal reads as follows:
17. A footwear comprising:
a flexible sole including an outsole and an insole, the
insole having:
a flexible inner compressible structure having a top
surface, a bottom surface and a side surface extending around
the outer perimeter of the inner structure between the top and
bottom surfaces; and
a flexible outer coating forming a seamless continuous
layer that substantially covers the entire top, bottom and side
surfaces of the compressible structure; and a strap extending
from the sole;
wherein the coating is a coating of vinyl polymer that
forms a water barrier and the inner compressible structure is a
different material than the outer coating.
(Claims App’x, App. Br. 5.)

The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed on July 31, 2009, hereinafter
“Ans.,” 3-5):
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Hosker 2,262,680 Nov. 11, 1941
Cole 6,021,585 Feb. 8, 2000
We cite to the following dictionary:
Hawley’s Condensed Chemical Dictionary 656, 976 (13th ed.,
revised by Richard J. Lewis, Sr., 1997) (hereinafter
“Hawley’s”) (copy attached).
The Examiner rejected claims 17-20 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Cole and Hosker (Ans. 4-5).

ISSUES
Consistent with Ex parte R & S Trading and In re R & S Trading, the
Examiner found that the subject matter of claim 17 differs from Cole solely
in the limitation “a flexible outer coating forming a seamless continuous
layer . . .” (emphasis added; Ans. 4-5). To resolve this difference, the
Examiner relied on Hosker, which was found to teach a seamless flexible
rubber-like outer coating enclosing a sole for the purpose of providing a
seamless waterproof covering (Ans. 5). Based on these findings, the
Examiner concluded that a person of ordinary skill in the art would have
been prompted to provide a seamless flexible outer coating of a vinyl
polymer in Cole in order to completely enclose and provide a waterproof
sole as disclosed in Hosker (Ans. 5).
Appellant contends that Cole teaches away from a seamless coating of
vinyl polymer because: (i) Cole does not teach a seamless layer; and (ii)
Cole’s process of “spray, dipping, or hand-painting” (col. 5, ll. 11-12) does
not relate to the disclosure relating to “partially or completely covering the
exposed surfaces [of the insole] with a non leather material” such as a vinyl
polymer (col. 4, ll. 6-29; col. 5, ll. 4-10) (App. Br. 3-4). Appellant further
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asserts that neither Hosker nor Cole specifies a vinyl polymer as a material
that can be deposited from a solution or dispersion (App. Br. 4).
Thus, the dispositive issues are:
(1) Does Cole teach away from a seamless flexible outer coating?
(2) Do the collective teachings of Cole and Hosker provide a
reasonable expectation of success in forming Cole’s covering as a seamless
outer coating by applying a vinyl polymer from a dispersion?

FINDINGS OF FACT (“FF”)
1. The Specification of the ‘598 Patent does not contain any
special definition for the claim term “vinyl polymer” but
instead indicates to one skilled in the relevant art that the term
reads on any vinyl polymer or copolymer – i.e., any polymer
made from vinyl monomers (col. 3, ll. 54-61).
2. Cole’s Figure 1 is reproduced below:

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Cole’s Figure 1 depicts a perspective view of a sandal
(i.e., a footwear) including, inter alia, an insole and an
outsole (col. 2, ll. 27-29).
3. Cole discloses that the footwear comprises an insole 12
supported by an outsole 14, wherein the insole 12/outsole 14
combination anchors a long main strap 16, a short forward strap
18, and a heel strap 20 (col. 2, ll. 54-58).
4. Cole states that the exposed surfaces of the insole 12 may be
“partially or completely” (emphasis added) covered “with a
non-leather material (such as those described . . . as substitute
upper components [i.e., straps]), optionally utilizing finishes
applied by spray, dipping, or hand-painting processes” (col. 5,
ll. 4-12).
5. According to Cole, the non-leather materials not only include
polyvinylchloride (PVC) but also other materials such as “latex
rubbers, thermoplastic rubbers, ethylvinylacetates, and flexible
plastics used individually or in combinations thereof which are
made by processes such as vulcanization, injection molding,
expansion, and extrusion” (emphasis added) (col. 4, ll. 6-29).

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6. Hosker’s Figures 1-3 are reproduced below:

Hosker’s Figures 1-3 depict various views of a sandal,
wherein “a covering 13 of moisture-impervious material,
such as vulcanized rubber composition or other rubber-
like material completely envelopes the sole” (emphasis
added; p. 1, left column, ll. 27-31).
7. Hosker states that the sandal exhibits resistance to dampness (p.
1, left column, ll. 4-7).
8. Hosker teaches that the covering 13 “may be formed in situ by
depositing a coating about the sole from a solution or dispersion
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of the coating material . . . or by assembling sheeted rubber-like
material about the sole and seaming the same so as completely
to enclose and protect the sole” (p. 1, left column, ll. 31-36).
9. Hosker discloses that the waterproof covering may be in the
form of “a thin seamless waterproof covering of rubber-like
material completely enclosing [the sole] body . . . . and ha[s]
the characteristics of material deposited from a dispersion of
rubber-like material” (emphasis added; p. 1, right column, ll.
28-33).
10. One skilled in the relevant art would understand the term “latex
rubber” to include natural rubber or synthetic latexes, which are
polymers containing repeating units of polymerized vinyl
monomers (Hawley’s at 656, 976).

PRINCIPLES OF LAW
“During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification . . . . Therefore, we look to the specification to see if it provides
a definition for claim terms, but otherwise apply a broad interpretation.” In
re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
“[W]hen a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (citing United States v.
Adams, 383 U.S. 39, 50-51 (1966)). “[I]f a technique has been used to
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improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSR, 550
U.S. at 417.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994).

ANALYSIS
We start with claim construction. Neither claim 17 nor the
Specification of the ‘598 Patent limits the scope of the term “vinyl polymer”
to any specific vinyl polymer (FF 1). Absent any special definition, we are
obligated to give the term its broadest reasonable interpretation as would be
understood by one skilled in the relevant art. When we do so, we conclude
that one skilled in the relevant art would understand that a dispersion or
solution of “vinyl polymer” encompasses a dispersion or solution of any
vinyl polymer including PVC, natural rubber latexes, or synthetic latexes
made from vinyl monomers (FF 10).
Appellant does not dispute the Examiner’s factual finding that Cole
describes every limitation except for the limitation “a flexible outer coating
forming a seamless continuous layer” (emphasis added) (FF 2-5; Ans. 4-5;
App. Br. 1-4). Rather, Appellant argues that Cole teaches away from a
seamless vinyl polymer layer and that neither Cole nor Hosker teaches that a
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vinyl polymer such as PVC can be deposited from a dispersion or solution
(App. Br. 3-4).
We disagree with Appellant on both issues. Contrary to Appellant’s
belief, we have not been directed to any teaching in Cole that would have
discouraged a person of ordinary skill in the art from using a seamless vinyl
polymer layer as the covering for the exposed surfaces of insole 12 (FF 4).
While Cole does not provide full details on how the covering is applied to
the insole, the mere absence of such details does not constitute a “teaching
away.”
Indeed, the facts compel the opposite conclusion. Cole discloses
various materials including PVC or latex rubber polymer as the covering
(FF 5). As pointed out by the Examiner (Ans. 5), Hosker explicitly teaches
that a seamless coating of a rubber-like material, which is an example of the
moisture-impervious material, may envelope a sole completely to provide
waterproof properties (FF 6-9). Significantly, Hosker plainly discloses that
the seamless waterproof coating, as depicted in, e.g., Figure 3, is provided
by depositing a dispersion of the moisture-impervious material (FF 6, 8
and 9). Given these teachings, we concur with the Examiner that a person of
ordinary skill in the art would have been prompted to combine the references
in the manner claimed – i.e., deposit a coating of an appropriate moisture-
impervious material such as PVC or latex rubber in dispersion form on
Cole’s insole in order to improve water resistance. Sinclair & Carroll Co. v.
Interchemical Corp., 325 U.S. 327, 335 (1945) (“Reading a list and selecting
a known compound to meet known requirements is no more ingenious than
selecting the last piece to put in the last opening in a jig-saw puzzle.”).
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Appellant’s argument that neither reference teaches a dispersion or
solution of vinyl polymer has no persuasive force. Appellant failed to direct
us to credible evidence (e.g., declaration evidence) indicating that a person
of ordinary skill in the art would not have been able to formulate a coating
dispersion or solution of PVC. Moreover, Cole’s latex rubbers are, as a
matter of fact, dispersions of vinyl polymers (FF 10). Because Hosker
plainly teaches that a moisture-impervious material such as a rubber-like
material may be deposited from a dispersion to form a seamless covering, a
person of ordinary skill in the art would have had a reasonable expectation
of success in forming Cole’s latex rubber covering from a dispersion or
solution.
For these reasons, we uphold the Examiner’s rejection.

CONCLUSION
On this record, we conclude that:
(1) Cole does not teach away from a seamless flexible outer
coating; and
(2) collective teachings of Cole and Hosker provide a reasonable
expectation of success in forming Cole’s covering as a seamless outer
coating by applying a vinyl polymer from a dispersion.

DECISION
The Examiner’s decision to reject claims 17-20 under 35 U.S.C. §
103(a) as unpatentable over the combined teachings of Cole and Hosker is
affirmed.
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Patent 6,766,598 B2

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Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED

bim

FOR PATENT OWNER:
CHRISTIE, PARKER & HALE, LLP
P.O. BOX 7068
PASADENA, CA 91109-7068

FOR THIRD-PARTY REQUESTER:
R. NEIL SUDOL
COLEMAN SUDOL SAPONE, P.C.
714 COLORADO AVENUE
BRIDGEPORT, CT 06605-1601