Ex parte CHEN et al.

Board of Patent Appeals and Interferences

Aug 28, 1998

08418321 (B.P.A.I. Aug. 28, 1998)

Application for patent filed April 7, 1995.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte MAO-CHING CHEN and LESLIE E. BLACKFORD
________________
Appeal No. 97-3708
Application 08/418,3211
________________
ON BRIEF
________________
Before ABRAMS, STAAB and CRAWFORD, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 11-18, all the claims currently pending in the
application. Two amendments have been filed subsequent to the
Appeal No. 97-3708
Application 08/418,321
In the final rejection, claim 18 was also rejected under2
35 U.S.C. § 112, second paragraph. Since (1) the advisory
letter mailed March 28, 1997 indicated that the amendment
after final submitted February 24, 1997 would be entered and
that said amendment overcame the § 112, second paragraph,
rejection, and since (2) no mention of this rejection has been
made by the examiner in the answer, we presume that the
examiner has withdrawn the final rejection of claim 18 on this
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final rejection. The first amendment after final rejection
(Paper No. 7, submitted November 20, 1996) has been refused
entry (see the advisory letters mailed November 29, 1996 and
January 13, 1997). The second amendment after final rejection
(Paper No. 13, submitted February 24, 1997) has been entered
(see the advisory letter mailed March 28, 1997).
Appellants’ invention pertains to a method of forming a
shoe cover. Independent claim 11, a copy of which is found in
the appendix to appellants’ brief, is illustrative of the
appealed subject matter.
The references of record relied upon by the examiner in
support of a rejection under 35 U.S.C. § 103 are:
Bodle 2,037,113 Apr. 14, 1936
Marx et al. (Marx) 2,617,208 Nov. 11, 1952
Stockum 4,047,251 Sept. 13, 1977
Claims 11-18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Marx in view of Stockum and Bodle. 2
Appeal No. 97-3708
Application 08/418,321
ground. Ex parte Emm, 118 USPQ 180, 181 (Bd. App. 1957).
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The
examiner has made the following finding:
Marx teaches a method of forming a shoe cover
(overshoe) substantially as claimed except for the
form (1) having first and second parallel lateral
sides and recesses covering substantially all of the
foot forming portion of the first and second sides.
Stockum teaches a method of forming a glove
comprising first and second parallel lateral sides
and recesses covering substantially all of the hand
forming portion of the first and second sides to
facilitate dipping of a larger number of forms
(column 2, lines 40-42) and to provide additional
surface area (column 5, lines 6-15). Bodle teaches
a method of forming a shoe cover comprising first
and second parallel lateral sides, a generally flat
form, to facilitate dipping of a larger number of
forms (page 1, column 1, lines 28-34) and to provide
a minimum of objectionable stretching to effect
shaping (page 1, column 2, lines 10-14). [Answer,
page 4.]
Based on the above, the examiner has made the following
conclusions of obviousness:
It would have been obvious to provide the [Marx]
method of forming a shoe cover as taught above with
the form (1) having first and second parallel
lateral sides and recesses covering substantially
all of the foot forming portion of the first and
second sides, in view of the teachings of Stockum
Appeal No. 97-3708
Application 08/418,321
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and Bodle, to facilitate dipping a large number of
forms and to provide additional surface area on the
forms. [Answer, page 4.]
In responding to appellants’ arguments, the examiner has
made the following additional comments:
In this case, the method of Marx and Stockum are
very similar. The primary difference is that Marx
is forming a [sic, an] overshoe and Stockum is
forming a glove. Stockum teaches the advantage of
using a relative[ly] flat form comprising first and
second parallel lateral sides and recesses covering
substantially all of the hand forming portion of the
first and second sides to facilitate dipping of a
large number of forms (column 2, lines 40-42) and to
provide additional surface area (column 5, lines 6-
15). The Bodle patent was applied above to further
reinforce the idea that using a relatively flat form
is an old and conventional step to facilitates [sic,
facilitate] dipping of a large number of forms (page
1, column 1, lines 28-34). The Bodle reference is
with regard to footwear, like Marx. The motivation
to combine is to facilitate dipping of a large
number of forms. [Answer, pages 6-7.]
At the outset, unlike the examiner, we do not see Marx as
disclosing a method “substantially as claimed.” The
utilization of a form having first and second parallel lateral
sides and recesses covering substantially all of the foot
forming portion of the first and second sides, conceded by the
examiner to be absent in Marx, is at the very heart of
appellants’ invention. In contrast to appellants, Marx
Appeal No. 97-3708
Application 08/418,321
In contrast, the shoe cover produced by appellants’3
method is described as being inexpensive, thin, lightweight,
single use, and disposable (specification, pages 3-4).
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utilizes a “three-dimensional” form, i.e., a form that closely
resembles the final shape of the overshoe.
Second, although Marx describes the overshoe thereof as
being “lightweight” (column 7, line 57), it is clear from a
consideration of the disclosure as a whole that the Marx
overshoe is intended for extended wear in an outdoor
environment. In this regard, note that Marx utilizes a multi-
layer construction to
obtain a relatively thick reinforced sole portion, with the
overshoe having a large groove and ridge corrugations on the
sole for improved traction, and an overall sturdy construction
to accommodate wearing “for a long time without the child’s
outgrowing it” (column 1, lines 41-42). While we appreciate3
that the appealed claims do not go into the particulars of the
shoe cover produced by the claimed method, it is not at all
clear to us that one of ordinary skill in the art would
Appeal No. 97-3708
Application 08/418,321
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consider the flat form of Stockum, which is used to produce
thin and extremely pliable surgical or household gloves
(column 1, lines 9-10 and line 40), to be a feasible way to
make a reinforced overshoe like that of Marx.
Furthermore, one of ordinary skill in the art would
regard the Bodle reference additionally relied upon by the
examiner as adding little if anything to the proposed
combination of Marx and Stockum. In Bodle the layer formed on
the flat form 22, 23, upon
being stripped from the form and turned inside out,
is suitably trimmed at its ends, slit at the front,
and is shaped upon a foot-shaped last 28 to provide
a shoe upper. The various other shoe components,
such as the insole and outsole and lining are
assembled with it upon the last in any desired
manner and the whole then vulcanized upon the last
whereupon all parts will have the desired final
shape. [Page 2, left column, lines 8-16.]
Thus, in Bodle the layer formed on the flat form 22, 23 is but
one component of the finished vulcanized shoe. For this
reason, Bodle is simply inapposite the teachings of Marx and
Appeal No. 97-3708
Application 08/418,321
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Stockum, where dipping alone produces the finished product.
It is error to consider the references in less than their
entireties, i.e., to disregard disclosures in the references
that diverge from and teach away from the invention at hand.
W. L. Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d
1540, 1550, 220 USPQ 303, 311 (Fed. Cir. 1983). Here, we do
not believe the perceived production advantage (e.g., to
facilitate dipping a larger number of forms) proposed by the
examiner as the motivation for using Stockum’s flat forms in
Marx would have led the ordinarily skilled artisan to
disregard the differences in finished products of Stockum and
Marx and assume that Stockum’s
flat forms for producing thin and extremely pliable gloves
would be applicable to the method of Marx, where the finished
product is a multi-layer, reinforced overshoe.
In light of the above, we find ourselves in agreement
with appellants’ position as set forth on pages 5-6 of the
brief that one of ordinary skill in the art would not have
Appeal No. 97-3708
Application 08/418,321
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found it obvious to use a flat form of the type disclosed by
Stockum in the method for forming the sturdy three dimensional
boot of Marx, absent the hindsight accorded one who first
viewed appellants’ disclosure. Such hindsight reconstruction,
of course, is not a proper basis for establishing the
obviousness of the subject matter of claims. See In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir.
1992). We therefore will not sustain the standing § 103
rejection of the appealed claims as being unpatentable over
Marx, Stockum and Bodle.
Under the provisions of 37 CFR § 1.196(b), we enter the
following new rejection.
Claim 18 is rejected under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and
distinctly claim the subject matter sought to be patented.
This claim is
directed to a method of forming a shoe cover, and recites a
number of steps (providing a form, dipping the form into
Appeal No. 97-3708
Application 08/418,321
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various solutions, drying the layers deposited on the form,
etc.) consistent with that method. In addition, claim 18 sets
forth in the last paragraph thereof the step of “donning said
shoe cover over a foot during a medical procedure.” Clearly,
this step is not consistent with a method of forming a shoe
cover, but rather relates to a method of using a shoe cover.
It is not clear whether claim 18 is directed to a method of
forming a shoe cover (as called for in the preamble of the
claim and as consistent with the majority of the steps
appearing in the body of the claim), a method of using a shoe
cover (as the “donning” step would appear to indicate), or a
mixed method of both forming and using a shoe cover (as one
might presume from reading the method steps appearing in the
body of the claim without regard for the preamble).
Further, even if we were to consider claim 18 to be drawn
to a mixed method of forming and using a shoe cover, as
appellants would apparently have us do, we would have serious
reservations about the claim. The purpose of the requirement
stated in the second paragraph of 35 U.S.C. § 112 is to
provide those who would
Appeal No. 97-3708
Application 08/418,321
We appreciate that this rejection is essentially the4
same rejection that was apparently withdrawn by the examiner
in light of appellants’ second amendment after final
rejection, submitted February 24, 1997.
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endeavor, in future enterprise, to approach the area
circumscribed by the claims of a patent, with the adequate
notice demanded by due process of law, so that they may more
readily and accurately determine the boundaries of protection
involved and evaluate the possibility of infringement and
dominance. In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204,
208 (CCPA 1970). If claim 18 is considered to be drawn to a
mixed method of forming and using, it is unclear whether the
potential infringer would be the maker of the shoe cover, the
user of the shoe cover, both the maker and the user, or only
one who makes and then uses the shoe cover.
For these reasons, it is our view that claim 18 does not
pass muster under the second paragraph of 35 U.S.C. § 112. 4
Appellants’ argument on page 8 of the brief in response to the
examiner’s withdrawn § 112, second paragraph, rejection has
been considered. For the reasons discussed above, we simply
do not agree with appellants that the claim “clearly shows
that [it] is a method of forming and protecting.” Further, we
Appeal No. 97-3708
Application 08/418,321
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do not agree with appellants that “[o]ne reading the claim
would not be confused as to its scope merely by the inclusion
of the donning step.” Rather, the inconsistency between the
preamble of the claim and the body of the claim leads to
uncertainty as to the scope of the claim.
In summary, the standing 35 U.S.C. § 103 rejection of the
appealed claims is reversed, and a new rejection pursuant to
37 CFR § 1.196(b) has been entered.
The decision of the examiner is reversed.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, “A new ground of rejection
shall not be considered final for purposes of judicial
review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
Appeal No. 97-3708
Application 08/418,321
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(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-3708
Application 08/418,321
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Audley A. Ciamporcero Jr.
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