Ex parte Kellerman

Board of Patent Appeals and Interferences

Feb 27, 1998

08157709 (B.P.A.I. Feb. 27, 1998)

Application for patent filed November 24, 1993. 1
According to appellant, this application is a continuation-in-
part of Application 07/957,984, filed October 6, 1992, now
abandoned, which is a continuation-in-part of Application
07/690,661, filed April 24, 1991, now U.S. Patent No. 5,154,682,
issued October 13, 1992, which is a continuation-in-part of
Application 07/407,145, filed September 14, 1989, now abandoned.
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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journal and (2) is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte DAVID KELLERMAN
________________
Appeal No. 97-0132
Application 08/157,7091
________________
ON BRIEF
________________
Before MEISTER, STAAB and McQUADE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the final rejection of claims 1,
3 through 7 and 10 through 18. The appellant has since canceled
Appeal No. 97-0152
Application 08/157,709
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claims 10 and 18 and amended claims 1 and 17. Thus, the appeal
now involves claims 1, 3 through 7 and 11 through 17, all of the
claims presently pending in the application.
The invention relates to a shoe insert designed for use as
an adjustable orthotic device. Claim 1 is illustrative and reads
as follows:
1. A shoe insert for placement on an inside surface of a
shoe comprising in combination:
a shoe insole formed of a non-compressible sheet of
deformable synthetic organic thermoplastic resin having a
thickness of at least 10 mils up to 50 mils and being shaped to
fit over said inside surface of a shoe, said sheet having memory
to permanently retain a deformed shape and said sheet having a
continuous, smooth, seamless upper surface and having a bottom
surface; and
the bottom surface of said sheet including a layer of first
fastening material selected from loop fabric or hook fabric and a
plurality of cushion pad elements, each containing a layer of
resilient compressible, cushioning material and each having a top
surface including a layer of second fastening material releasably
engageable with said first fastening material selected from loop
fabric or hook fabric, said elements being attached to said layer
of first fastening material and at least one of said elements
containing a thicker layer of cushioning material whereby when
the insert is placed on the inside surface of a shoe, said
elements compress under the weight of the user, the sheet deforms
in the space between the elements and at locations where adjacent
pad elements differ in thickness and retains a deformed shape
Appeal No. 97-0152
Application 08/157,709
The recitation in claim 1 of the bottom surface of the2
sheet as “including” a layer of first fastening material is
inconsistent with the underlying specification and with dependent
claims 6 and 7 which indicate that the layer of first fastening
material covers, but is not included in, the bottom surface of
the sheet. This discrepancy is deserving of correction in the
event of further prosecution before the examiner.
Although the instant application purportedly is a3
continuation-in-part of Application 07/690,661, filed April 24,
1991, and of Application 07/407,145, filed September 14, 1989
(see note 1, supra), the appellant has not asserted that the
subject matter on appeal is entitled to the benefit of these
earlier filing dates under 35 U.S.C. § 120. We therefore presume
that the Sarkozi patent is prior art with respect to the subject
matter on appeal even though its filing date is subsequent to the
filing dates of the appellant’s earlier applications.
An English language translation of this reference,4
prepared on behalf of the Patent and Trademark Office, is
appended hereto.
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when the force from the user’s weight is removed to selectively
modify the elevation or pitch of said insert relative to said
inside surface of said shoe.2
The items relied upon by the examiner as evidence of
obviousness are:
Meyer 4,756,096 Jul. 12, 1988
Shaffer et al. (Shaffer) 4,841,648 Jun. 27, 1989
Sarkozi 5,138,774 Aug. 18, 1992
(filed May 13, 1991) 3
Andresen et al. 313163 Mar. 3, 1983
German Document (Andresen)4
Appeal No. 97-0152
Application 08/157,709
The final rejection (Paper No. 8) contained a number of5
additional rejections, all of which have been withdrawn by the
examiner in light of the papers filed on April 7, 1995 (Paper
Nos. 10 and 12). See the advisory letter dated May 18, 1995
(Paper No. 13).
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The items relied upon by the appellant as evidence of non-
obviousness are:
The 37 CFR § 1.132 declarations filed on October 24, 1994 and on
April 7, 1995, respectively (Paper Nos. 6 and 11).
Claims 1, 3 through 7 and 11 through 17 stand rejected under
35 U.S.C. § 103 as being unpatentable over Meyer in view of
Andresen, Sarkozi and Shaffer.5
Having carefully considered the scope of the claims, the
teachings of the applied references and the respective viewpoints
advanced in the appellant’s main and reply briefs (Paper Nos. 18
and 20) and in the examiner’s answer (Paper No. 19), we shall not
sustain this rejection.
Claims 1 and 17, the two independent claims on appeal,
recite a shoe insert comprising, inter alia, a shoe insole formed
of a non-compressible sheet of deformable synthetic organic
thermoplastic resin having memory to permanently retain a
deformed shape, and a plurality of cushion pad elements attached
to the bottom of the sheet. These claims also require that when
the insert or insole is placed in a shoe, the sheet deforms under
Appeal No. 97-0152
Application 08/157,709
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the weight of the user in the space between the cushion pad
elements and retains a deformed shape when the user’s weight is
removed to selectively modify the elevation or pitch of said
insert relative to the inside surface of the shoe.
Although each of the applied references discloses a shoe
insert having an element which corresponds generally to the sheet
set forth in claims 1 and 17, none of these prior art sheet-like
elements appears to have the deformation and memory
characteristics required by these claims. In this regard, the
Meyer blank 16 is a multi-layer compilation made of a semi-rigid,
bendable, resilient thermoplastic resinous sheet material 24 and
a resilient, compressible foam layer 26. The Andresen insert 1
is made of a soft elastic material such as foam rubber. The
Sarkozi lining element 10 is a laminate made of fabric layers 11
and 12 and elastic layers 13 and 14. The Shaffer insole pad 12
is made of a resilient material.
The examiner’s attempts to explain away the foregoing
differences between the claimed shoe insert and the teachings of
the prior art are not well taken. To begin with, the examiner
contends that because the claim limitations defining the
deformation and memory characteristics of the sheet are set forth
in functional language, they cannot serve to distinguish the
Appeal No. 97-0152
Application 08/157,709
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claimed subject matter over the prior art (see page 5 in the
answer). This position, however, runs counter to the well
established principle that there is nothing intrinsically wrong
with defining something in a claim by what it does rather than by
what it is. See In re Hallman, 655 F.2d 212, 215, 210 USPQ 609,
611 (CCPA 1981); In re Swinehart, 439 F.2d 210, 213, 169 USPQ
226, 228 (CCPA 1971). The examiner alternatively urges that
given the appellant’s disclosure that the sheet defined in the
claims may be made of a vinyl resin (specification, page 7), the
polyvinylchloride embodiment of Meyer’s blank 16 (see Meyer at
column 5, line 66 through column 6, line 11) would meet the sheet
deformation and memory characteristics set forth in the claims
(see pages 7 and 8 in the answer). This argument, however, is
inconsistent with Meyer’s disclosure that the blank 16 is a semi-
rigid and resilient element. It simply does not follow from the
fact that the appellant’s sheet and Meyer’s blank may be made
from the same basic resin that these elements will have the same
deformation and memory characteristics.
Thus, the combined teachings of Meyer, Andresen, Sarkozi and
Shaffer do not disclose and would not have suggested a shoe
insert having a sheet of the sort recited in independent claims 1
and 17. Hence, these references fail to establish a prima facie
Appeal No. 97-0152
Application 08/157,709
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case of obviousness with respect to the subject matter recited in
the claims on appeal. This being the case, it is not necessary
to evaluate the merits of the appellant’s evidence of non-
obviousness.
The decision of the examiner is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 97-0152
Application 08/157,709
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Marvin E. Jacobs Koppel & Jacobs
2151 Alessandro Drive, Suite 215
Ventura, CA 93001