Ex Parte Gross et al

Patent Trial and Appeal Board

Sep 22, 2017

13351943 (P.T.A.B. Sep. 22, 2017)

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.
13/351,943 01/17/2012 Jerome Gross SKYSO-87464 3194
7590 09/26/2017
FULWIDER PATTON LLP
HOWARD HUGHES CENTER
6100 CENTER DRIVE, SUITE 1200
LOS ANGELES, CA 90045
EXAMINER
MOHANDESI, JILA M
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
09/26/2017 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):
docketla @ fulpat. com
eOfficeAction @ fulpat. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEROME GROSS and JOSEPH SKAJA
Appeal 2016-008530
Application 13/351,943
Technology Center 3700
Before EDWARD A. BROWN, LEE L. STEPINA, and
ANTHONY KNIGHT, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jerome Gross and Joseph Skaja (Appellants)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1—17 under 35
U.S.C. § 103(a) as unpatentable over Digate (US 4,185,402, issued Jan. 29,
1980) and Steinke (US 6,138,383, issued Oct. 31, 2000).2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appeal Brief identifies Skysole Corporation as the real party in
interest. Appeal Br. 2.
2 Claims 18—20 stand withdrawn from consideration. Final Act. 2.
Appeal 2016-008530
Application 13/351,943
CLAIMED SUBJECT MATTER
Claim 1 is representative of the claimed subject matter, and reads:
1. A multi-layer cushioning device adapted to conform to a
human body part comprising:
a bottom layer formed of a material selected from plastic
and thermo set, the bottom layer having a lower surface including
a plurality of uniformly spaced apart dome shaped structures
extending substantially a length and a width of the lower surface;
a middle layer on top of the bottom layer; and
a top layer having a plurality of vertical apertures that
extend through the middle layer and through the bottom layer.
Appeal Br. (Ex. 1).
ANALYSIS
Appellants argue for patentability of claims 1—17 as a group, and do
not present separate arguments for patentability of dependent claims 2—17.
Appeal Br. 3—7. We select claim 1 as representative, and claims 2—17 stand
or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
As to claim 1, the Examiner finds that Digate discloses a multi-layer
cushioning device 10 comprising a bottom layer 11, middle layer 12, and top
layer 13, but does not disclose that the lower surface of bottom layer 11
includes “a plurality of uniformly spaced apart dome shaped structures
extending substantially a length and a width of the lower surface,” as
claimed. Final Act. 3 (citing Digate, Figs. 1 4). The Examiner finds that
Steinke discloses a shoe insert including a bottom layer with a plurality of
uniformly spaced apart dome shaped structures 18, 20. Id. (citing Steinke,
Figs. 6—6A). The Examiner concludes that it would have been obvious to
modify bottom layer 11 of Digate to include a plurality of uniformly spaced
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Application 13/351,943
apart dome shaped structures, as taught by Steinke, “to provide greater
cushioning and rapid rebound to the insert” (id.) and “better compression
properties” (Ans. 5).
Appellants contend that one of ordinary skill in the art would not have
modified Digate as proposed by the Examiner without the benefit of
Appellants’ disclosure. Appeal Br. 3. Appellants contend that Digate
teaches a deodorizing footpad including a bottom layer 11 having a smooth
bottom surface, and air circulation holes 17. Id. at 4. According to
Appellants, the footpad “is designed to compress such that the bottom layer
expands, creating wider passages through which air can pass so that the
charcoal layer can absorb the impurities in the air.” Id. at 5. Appellants also
contend that the bottom layer is “a foam that is designed to carry little to no
weight and expand upon a compressive force.” Id. Appellants contend that
Steinke teaches dome-shaped cavities in the bottom layer for “maximum
flexure at a point of shock concentration without collapse and to provide
efficient rebound.” Id. at 4—5 (citing Steinke, col. 1,11. 65—67). Appellants
assert, “[Steinke] . . . sought to create a bottom layer that did not ‘collapse,’
but rather provided a rebound for the downward force of the wearer’s foot.”
Id. at 5. Thus, Appellants contend, the bottom layers of Digate and Steinke
have “a substantially different purpose and constitution that is not
necessarily compatible.” Id. Appellants also assert that if Digate’s foam
bottom layer were formed with dome shaped cavities, as taught by Steinke,
“there is no evidence in the record to suggest that the foam would provide
any similar level of elastic behavior as Steinke’s insert.” Reply Br. 4.
These contentions are not persuasive. Digate discloses that bottom
layer 11 is made of a resilient sheet material. See Digate, col. 3,11. 23—24.
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Appeal 2016-008530
Application 13/351,943
As noted by the Examiner, Digate teaches “an open cell resilient plastics
layer.” Ans. 4. Steinke discloses that insert 12 also is made of a resilient
material. See, e.g., Steinke, col. 5,11. 8—9. An ordinary meaning of
“resilient” is “capable of withstanding shock without permanent deformation
or rupture.” See Merriam-Webster’s Collegiate® Dictionary 1060 (11th ed.
2003). Accordingly, both Digate and Steinke teach a bottom layer made of a
resilient material that is capable of returning to a shape without permanent
deformation when a deforming force is removed. One of ordinary skill in
the art would have found it desirable to modify the resilient bottom layer of
Digate’s insole to provide “rapid rebound” properties. Appellants do not
apprise us of any error in the Examiner’s reasoning for modifying Digate’s
resilient bottom layer to enhance its rebound properties and/or compression
properties.
Appellants contend that the manufacturing process in Digate passes a
double coated fabric twill through a punching apparatus 31 to form holes in
the insole, and then cuts the insoles from the same sheet. Appeal Br. 5
(citing Digate, col. 4,11. 65—67). Appellants contend that neither Digate nor
Steinke teaches how to form Steinke’s dome-shaped cavities as part of
Digate’s manufacturing process. Id. Appellants assert that another
reference is needed to tie Digate and Steinke together “to show how they
could be combined in order to achieve the claimed invention.” Id. at 5—6.
These contentions are not persuasive. The Examiner does not rely on
Digate to teach how to make the claimed dome shaped structures. Rather,
the Examiner finds that Steinke discloses a cushioning device including
dome shaped structures, as claimed, formed in a bottom layer of a
cushioning device. This disclosure in Steinke is representative of the level
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Application 13/351,943
of ordinary skill in the art, providing evidence that one of ordinary skill
would know how to make the claimed dome shaped structures in a
cushioning device. Moreover, “[u]nder [35 U.S.C.] § 103,. . . a reference
need not be enabled; it qualifies as a prior art, regardless, for whatever is
disclosed therein.” See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314
F.3d 1313, 1357 (Fed. Cir. 2003). Appellants have not presented persuasive
argument or evidence to show that the Examiner’s proposed modification of
Digate in view of Steinke would not be within the level of skill of one of
ordinary skill in the art. In that regard, we note that “[a] person of ordinary
skill is also a person of ordinary creativity, not an automaton.” KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Appellants have not
presented persuasive argument or evidence to show that the Examiner’s
proposed modification of Digate would have been “uniquely challenging or
difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 419-21).
Appellants also assert that Digate’s manufacturing process would
preclude the Examiner’s proposed modification. Reply Br. 5. However,
Appellants do not explain persuasively why. Consequently, this contention
represents mere attorney argument with no persuasive supporting factual
evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)
(explaining that arguments and conclusions unsupported by factual evidence
carry no evidentiary weight). Thus, this contention is unpersuasive.
Appellants contend the Examiner concedes that the claimed invention
cannot be made with the teachings of Digate or Steinke. Reply Br. 2, 5. We
note, however, that the Examiner merely explains that claim 1 is directed to
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Application 13/351,943
a product, not a process, and, accordingly, the determination of patentability
of claim 1 is not based on the process of making the product. Ans. 2.
Appellants also contend that “the Steinke device teaches that air does
not pass through the insert” and “for the Steinke insert to function properly,
the cavities must be formed such that no air can pass through the insert.”
Reply Br. 4. Appellants do not direct us to any description in Steinke that
supports these contentions. Regardless, this argument is untimely because it
was not raised in the Appeal Brief.3
Appellants also contend that Steinke teaches a shoe insert for
cushioning, whereas Digate teaches an insole for deodorizing, and “[tjhere is
nothing in the prior art that teaches combining these two devices into a
single device.” Appeal Br. 6.
This contention is not persuasive. First, Appellants do not explain
persuasively why Digate’s insole is not “for cushioning.” In fact, Digate
discloses that it is. That is, Digate describes a “cushion insole for footwear,”
which demonstrates clearly that the insole is “for cushioning.” See Digate,
col. 6,11. 23—24. The Examiner explains that both Digate and Steinke are
directed to “comfortable footwear cushion insoles.” Ans. 4. Second, even if
neither Digate nor Steinke explicitly describes combining a shoe insert for
cushioning and an insole for deodorizing, the Examiner’s “analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claims,” but “can take account of the inferences and creative
3 “Any argument raised in the reply brief which was not raised in the appeal
brief, or is not responsive to an argument raised in the examiner’s answer,
including any designated new ground of rejection, will not be considered by
the Board for purposes of the present appeal, unless good cause is shown.”
See 37 C.F.R. § 41.41(b)(2).
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Application 13/351,943
steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S.
at 418.
For these reasons, we sustain the rejection of claim 1 as unpatentable
over Digate and Steinke. Claims 2—17 fall with claim 1.
DECISION
The Examiner’s decision to reject claims 1—17 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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