Ex Parte Cavanagh et al

Patent Trial and Appeal Board

Nov 20, 2014

11693869 (P.T.A.B. Nov. 20, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/693,869 03/30/2007 Peter R. Cavanagh 00113/00007USD 1028
41939 7590 11/21/2014
JEANNE E. LONGMUIR
2836 CORYDON ROAD
CLEVELAND HEIGHTS, OH 44118
EXAMINER
BAYS, MARIE D
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
11/21/2014 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 PETER R. CAVANAGH, JAN S. ULBRECHT,
TIMOTHY B. HURLEY, and HUIXIONG ZHANG
____________

Appeal 2012-0111561
Application 11/693,8692
Technology Center 3700
____________

Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
JAMES A. WORTH, Administrative Patent Judges.

WORTH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 16–21 and 25–28. We have jurisdiction under 35 U.S.C.
§§ 134 and 6(b).
We AFFIRM.

1 Our decision refers to the Appellants’ Appeal Brief (“Br.,” filed Apr. 17,
2012) and the Examiner’s Answer (“Ans.,” mailed May 4, 2012).
2 According to Appellants, the real party in interest is DIAPEDIA, L.L.C.
(Br. 3).
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Introduction
Appellants’ disclosure relates to a footwear insole (Spec. ¶ 3). The
Specification discloses computer-aided design and manufacture of insoles to
relieve foot pressure (id.).
Claims 16 and 17 are the independent claims on appeal. Claim 16,
reproduced below, is illustrative of the subject matter on appeal:
16. A footwear insole for reducing plantar pressure in an
individual’s foot during weight bearing, the footwear insole
having a surface modification or modifications within the
footwear insole having a perimeter which, in whole or in part, is
a quantified plantar pressure distribution.

Br., Claims App.

Rejections on Appeal
The Examiner maintains, and the Appellants appeal, the following
rejections:
I. Claims 16–21 and 25–28 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which applicant
regards as the invention;3
II. Claims 16–21 and 25–28 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement; and
III. Claims 16–21 and 25–28 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Shor (US 2004/0134104 A1, pub. July 15,
2004).

3 To facilitate review, we have re-ordered the rejections, in order to begin
with the rejection under 35 U.S.C. § 112, second paragraph (indefiniteness).
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ANALYSIS

I. Rejection Under 35 U.S.C. § 112, Second Paragraph (Indefiniteness)
Independent claims 16 and 17 and dependent claims 19–21 and 27
Appellants argue that claim 16 is not indefinite because it recites a
specific product with specific structural components (Br. 8). The Examiner
concludes that the phrase “having a perimeter which, in whole or in part, is a
quantified plantar pressure distribution,” as recited by claim 16 is indefinite
because it is not clear what structural limitations Appellants intend to
encompass with such language (Ans. 5). However, the Examiner elsewhere
determines that this language is considered to be a product-by-process
recitation (Id. at 9).
A “product-by-process” claim is a claim in which the product is
defined in part by the process by which it is made. Greenliant Systems, Inc.
v. Xicor LLC, 692 F.3d 1261, 1264–65 (Fed. Cir. 2012). Appellants assert
that the “quantified plantar pressure distribution” is a structural definition of
a specific location in the insole rather than a reference to how the product
was made (Br. 4).
We agree with the Examiner that claim 16 is a product-by-process
claim. While a perimeter can have a pressure distribution, the claim recites
that the perimeter “is” a pressure distribution. We agree with the Examiner
that the “quantified . . . pressure distribution” in the claim phrase “a
perimeter . . . in whole or part, is a quantified plantar pressure distribution”
refers to quantified pressure applied during the process by which the
perimeter was manufactured (Ans. 8, see also Br. 12, Claims App.). The
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Examiner correctly finds that the Specification (¶¶ 25, 31, 38) describes the
manufacture of the insole by a process of taking an impression of the
patient’s foot with a shape corresponding to the bottom of the patient’s foot,
with areas of reduced thickness which correspond to high pressure points on
the bottom of the patient’s foot (Ans. 8, 9). The Specification (¶¶ 49–50)
teaches that modifications can be made, e.g., at areas of high pressure.
Although modifications (elevations or depressions) may be added to the
insole at areas of high pressure, the edge or “perimeter” of the modification
is an area that was subject to the quantified pressure without modification.
Thus, the recited “pressure distribution” of the “perimeter” refers to the
“pressure” applied during manufacture of the insole.
This understanding of claim 16 is consistent with the usage in the
other claims. The “pressure” is again referred to in claim 17 as a “pre-
measured and quantified plantar pressure distribution.” In claim 25, the
modification(s) have a perimeter “adjacent a region of pressure, ranging
from 100kPa to 500kPa, within the premeasured and quantified distribution
of plantar pressure.” Claims 26 and 27 have a similar usage of “pressure” as
claim 25, with different ranges for the pressure.
Although we agree with the Examiner that claim 16 would be
understood as a “product-by-process” claim, we disagree with the
Examiner’s conclusion that it is not clear what the limitations encompass.
The Examiner’s concerns (Ans. 5) about the scope of the product are a
matter of claim breadth, not indefiniteness. “Breadth is not indefiniteness.”
In re Gardner, 427 F.2d 786, 788 (CCPA 1970). We do not sustain the
rejection of claim 16 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
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For similar reasons, we do not agree with the Examiner that
independent claim 17 is indefinite. We agree with the Examiner (Ans. 7)
that the phrase “having a perimeter, which in whole or in part, is a pressure
contour line” is a product-by-process recitation. While a perimeter may
have an associated pressure, when the claim states that the perimeter “is” a
“pressure contour line,” we understand this to refer to the pressure applied
during manufacture. The Specification teaches that a modification to the
insole may be added when the measured pressure exceeds a threshold
pressure, referred to as a pressure contour line (¶¶ 46, 48). When this
occurs, the perimeter of the modification will have a pressure that
corresponds to the threshold for modification, which is also the measured
pressure that met the threshold value. As above, the “pressure” of the
“perimeter” of the modification refers to the pressure applied during
manufacture - - here, the pressure which met a threshold value during
manufacture to trigger the creation of a modification within the area
bounded by the perimeter. In this connection, claim 17 is a product-by-
process claim. We, therefore, do not sustain the rejection of claim 17 under
35 U.S.C. § 112, second paragraph, as being indefinite.
The Examiner’s rejection under 35 U.S.C. § 112, second paragraph of
dependent claims 19–21 and 27 falls for the same reason as for claim 17,
from which they depend.

Dependent claims 18, 25, 26, and 28
The Examiner’s rejection of claims 18, 25, 26, and 28 is based on
similar reasoning to claims 16 and 17. We do not sustain the rejection of
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claims 18, 25, 26, and 28 under 35 U.S.C. § 112, second paragraph, as being
indefinite, for similar reasons as for claims 16 and 17.

II. Rejection Under 35 U.S.C. § 112, First Paragraph (Written Description)
Independent claims 16 and 17 and dependent claims 18–21 and 25–28
The Examiner finds that there is no basis in the Specification for the
claim phrase “having a perimeter which, in whole or in part, is a quantified
plantar pressure distribution” as recited by claim 16.
As set forth above, we construe independent claim 16 as a “product-
by-process” claim. Appellants argue that independent claim 16 is fully
described within the Specification at least at pages 3–4 and 11–14 and
illustrated in Figures 12 and 14–19 (Br. 7). We agree with Appellants that
the Specification adequately describes the structures and the process by
which the structures are made. In particular, paragraphs 37, 41–44, and 48–
50 describe the process of taking an impression of the foot (with attendant
measurement of the pressure), comparing the measured pressure to a
threshold value, and adding modifications at areas where the measured
pressure exceeds a threshold value.
The Examiner states that the perimeter “appears to be the well known
conventional perimeter” of an insole, and that the perimeter is not described
in the Specification. Claim 16 recites “the footwear insole having a surface
modification or modifications within the footwear insole having a
perimeter.” As set forth above, the recited “perimeter” refers to the
perimeter of the modification within the footwear insole rather than the
perimeter of the entire insole. The “perimeter” of the modification is
adequately described by the Specification in at least paragraphs 46, 47, and
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49, which explains that the modification, also referred to as an intervention,
has an edge.
We, therefore, do not sustain the rejection of independent claim 16
under 35 U.S.C. § 112, first paragraph.
For similar reasons, we do not sustain the rejection of independent
claim 17 and claims 18–21 and 25–28, which depend therefrom, under 35
U.S.C. § 112, first paragraph.

III. Rejection under 35 U.S.C. § 102(b) (Anticipation)
Independent claims 16 and 17 and dependent claims 18–21 and 25–28
Appellants argue anticipation with respect to independent claims 16
and 17 and dependent claims 18–21 and 25–28 together (Br. 9–11). We
select claim 16 as representative. Accordingly, claims 17–21 and 25–28
stand or fall with claim 16. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellants argue that Shor does not define a line or a perimeter
structure with a quantified plantar pressure distribution component, or a
modification defined, either in whole or in part, by a quantitative plantar
distribution (Br. 9). Specifically, Appellants argue that Shor teaches a
qualitative foot imprint rather than a quantitative foot measurement (Br. 10–
11).
However, for product-by-process claims, the product can be
anticipated or obvious based on prior art products, even if those prior art
products are made by different processes. Amgen Inc. v. F. Hoffman-La
Roche Ltd., 580 F.3d 1340, 1370 n.14 (Fed. Cir. 2009). The recited product
is compared to the prior art, and the patentability of a product is not
governed by the process by which it was made. See In re Garnero, 412 F.2d
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276, 279 (CCPA 1969). As set forth above, the “quantified plantar pressure
distribution” refers to the pressures applied during the manufacture of the
insole. The “quantified” “pressure” reflects a measurement during the
process of manufacture, which does not create a patentable distinction for a
product over a prior art product, as described in Shor. We agree with the
Examiner that the insole described in Shor (¶¶ 31, 38) anticipates the insole
recited in claim 16.
We therefore sustain the rejection of claims 16–21 and 25–28 under
35 U.S.C. § 102(b).
DECISION
The decision of the Examiner to reject claims 16–21 and 25–28 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

rvb