Ex Parte Holt

Patent Trial and Appeal Board

Jun 14, 2018

14252242 (P.T.A.B. Jun. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/252,242 04/14/2014
44088 7590
Kaufhold Dix Patent Law
P. 0. BOX 89626
SIOUX FALLS, SD 57109
06/18/2018
FIRST NAMED INVENTOR
Steven D. Holt
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SK09981 2109
EXAMINER
GRACZ, KATHARINE
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
06/18/2018 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):
j ason@kaufboldlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN D. HOLT
Appeal2017-009143 1
Application 14/252,2422
Technology Center 3700
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Steven D. Holt ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's final rejection of claims 1--4 and 8-15. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our Decision references Appellant's Appeal Brief ("Br.," filed June 28,
2016), the Examiner's Answer ("Ans.," mailed October 24, 2016), and Final
Office Action ("Final Act.," mailed November 5, 2015).
2 Appellant identifies the inventor, Steven D. Holt, as the real party in
interest. Br. 2.
Appeal2017-009143
Application 14/252,242
THE INVENTION
Independent claim 1, reproduced below with added emphasis, is
illustrative of the subject matter on appeal.
1. A protective foot covering device comprising:
a boot having an upper end, a lower end and a perimeter
wall coupled to and extending between said upper end and said
lower end, said upper end of said boot including a peripheral
edge defining an access opening into a hollow interior of said
boot, said boot further including a shaft and a vamp, said shaft
being coupled to and extending downwardly from said
peripheral edge, said vamp being coupled to and extending
forwardly from said shaft toward a toe of said boot;
said boot having a slit extending therein, said slit
defining first and second overlapping sections of said boot
extending through said shaft and downwardly from said upper
end, said slit extending through said peripheral edge of said
upper end;
a sole coupled to and covering said lower end of said
boot; and
a coupler attached to said boot, said coupler removably
coupling said first and second overlapping sections together to
close said slit;
a closure being attached to said boot flush with said
peripheral edge for closing said slit at said peripheral edge
wherein said closure is configured for holding said peripheral
edge against a leg inserted into said boot, said closure including
a strap and a fastener, said strap being attached to said
peripheral edge, said fastener including first and second
complementary portions, said first complementary portion of
said fastener being attached to said strap, said second
complementary portion of said fastener being attached to and
extending around said peripheral edge of said upper end, said
closure comprising a hook and loop fastener.
Br. 10 (Claims App'x.).
2
Appeal2017-009143
Application 14/252,242
THE REJECTION
Claims 1--4 and 8-15 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Beattie (US 237,667, iss. Feb. 8, 1881 ), Paintin et al. (US
2009/0217552 Al, pub. Sept. 3, 2009) (hereinafter "Paintin"), and Fulton
(US 2007/0033837 Al, pub. Feb. 15, 2007). 3
ANALYSIS
Independent claim 1 and dependent claims 2-4 and 8-14
Independent claim 1 requires, in part, (1) "a boot having an upper end
... said upper end of said boot including a peripheral edge defining an
access opening into a hollow interior of said boot" and (2) "a closure being
attached to said boot flush with said peripheral edge for closing said slit at
said peripheral edge." See Br. 10 (Claims App'x.).
The Examiner finds that Beattie discloses the above limitations. In
particular, the Examiner finds that Beattie' s top strap (E) and buckle (F)
meet the claimed "closure ... flush with said peripheral edge for closing
said slit at said peripheral edge." Final Act. 3--4. Regarding the claim term
"flush," the Examiner's position is that "Applicant has not provided any
explanation or definition in the specification nor in the claim language" (id.
at 7) and "flush will be interpreted as lying on top so as to be level or even
with." Id. at 8. Applying this interpretation, the Examiner finds that the top
strap (E) and buckle (F) of Beattie's boot are flush with the boot's peripheral
3 Although the Examiner does not appear to rely on Fulton in rejecting
claims 1--4 and 10-14, Fulton is listed in the heading of the rejection of all
claims. We treat this error as typographical as it does not affect our
decision.
3
Appeal2017-009143
Application 14/252,242
edge. Responding to Appellant's arguments in the Answer, the Examiner
maintains that "a peripheral edge does not have to be the edge-most part of a
surface and can have a thickness, see the annotated figures below." Ans. 2.
To illustrate this point, the Examiner provides annotated versions of Figures
1 and 3 of Beattie, reproduced below ( wherein "PE" indicates the
Examiner's finding for "peripheral edge").
PE.'>:~
f'{ ..
thfe~t'h~·S:~ [
;\.-...v-,
Id. at 3. According to the Examiner, Beattie's top strap and buckle (E & F)
"is flush with said peripheral edge since it is on top of and even with another
surface." Id. at 2.
Appellant argues that "[ t ]he peripheral edge is clearly stated within
the claims as the edge defining the opening into the boot" and that the
Examiner's interpretation of "flush" is unreasonable because it is
inconsistent with Appellant's Specification and Drawings. Br. 7.
We agree with Appellant.
4
Appeal2017-009143
Application 14/252,242
Claim 1 requires "a peripheral edge defining an access opening into a
hollow interior of said boot." The Examiner's position in the Answer that a
peripheral edge "can have a thickness" ignores this requirement of claim 1.
The claimed opening is defined by the peripheral edge, not by a portion of
the boot that extends below the opening by some thickness. The Examiner's
position is inconsistent with Appellant's Drawings, which consistently show
that the peripheral edge is the generally circular shape that defines the
opening to the boot. For example, peripheral edge 24 is shown in
Appellant's Figure 2, reproduced below, as defining the perimeter of access
opening 26.
31
62 .--.ir-~.Y-
FIG. 2
5
Appeal2017-009143
Application 14/252,242
The Examiner's interpretation is also inconsistent with the plain and
ordinary meaning of the claim term "peripheral edge." See "Periphery."
Merriam-Webster.com, accessed June 7, 2018 ("1: the perimeter of a circle
or other closed curve"); "Edge." Merriam-Webster.com, accessed June 7,
2018 ("a: the line where an object or area begins or ends: BORDER").
Claim 1 further requires "a closure being attached to said boot flush
with said peripheral edge for closing said slit at said peripheral edge." As
described in the Specification, "closure 46 is attached to the peripheral
edge 24 for closing the slit 36 at the peripheral edge 24" and thus "will help
to prevent water from seeping into the boot 12 through the upper end 14."
(Spec. 3, 1. 23 - 4, 1. 2). The location of closure 46 flush with peripheral
edge 24 at the top of boot 12 is shown consistently in Appellant's Figures 1,
2, and 4.
In view of our determination that the Examiner's interpretation of
"peripheral edge" is unreasonably broad, we conclude that the Examiner's
finding that Beattie discloses the "closure" of claim 1 is deficient. Beattie' s
top strap (E) and buckle (F), being attached below the opening of the boot,
are not flush with "a peripheral edge defining an access opening" and are not
"attached to said boot flush with said peripheral edge for closing said slit at
said peripheral edge."
Accordingly, we do not sustain the rejection of independent claim 1
and dependent claims 2--4 and 8-14 under 35 U.S.C. § 103(a) as
unpatentable over Beattie, Paintin, and Fulton.
6
Appeal2017-009143
Application 14/252,242
Independent claim 15
Independent claim 15 recites similar limitations as independent
claim 1, and is rejected based on the same flawed finding discussed above.
See Final Act. 3--4; see also Ans. 2-3. Thus, we do not sustain the rejection
of independent claim 15 under 35 U.S.C. § 103(a) as unpatentable over
Beattie, Paintin, and Fulton.
DECISION
The Examiner's rejection under 35 U.S.C. § 103(a) is reversed.
REVERSED
7