Ex Parte Koo et al

Patent Trial and Appeal Board

Sep 6, 2017

14093706 (P.T.A.B. Sep. 6, 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.
14/093,706 12/02/2013 John C. S. Koo 31045-67M 4259
43914 7590 09/08/2017
JOSEPH SWAN, A PROFESSIONAL CORPORATION
1334 PARKVIEW AVENUE, SUITE100
MANHATTAN BEACH, CA 90266
EXAMINER
KAVANAUGH, JOHN T
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
09/08/2017 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):
JS WAN @ PATENT-TECHLAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN C. S. KOO, JONATHAN GOLDBERG, and
ANTHONY COX
Appeal 2016-0020961
Application 14/093,7062
Technology Center 3700
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of
claims 1—3, 5—7, 10, and 12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our Decision references Appellants’ Specification (“Spec.,” filed Dec. 2,
2013), Appeal Brief (“Appeal Br.,” filed July 24, 2015), and Reply Brief
(“Reply Br.,” filed Dec. 2, 2015), as well as the Examiner’s Final Office
Action (“Final Act.,” mailed Mar. 3, 2015) and Answer (“Ans.,” mailed
Oct. 7, 2015).
2 Appellants identify Dynasty Footwear, Ltd. as the real party in interest.
Appeal Br. 2.
Appeal 2016-002096
Application 14/093,706
SUBJECT MATTER ON APPEAL
The invention “concerns footwear” and “encompasses, among other
things, a shoe (e.g., an outdoor shoe) having a bottom surface that is partially
or wholly covered with particulate material, as well as shoe outsoles and to
methods for making shoe outsoles.” Spec. 12. Claim 1, reproduced below,
is the only independent claim on appeal and is illustrative of the claimed
subject matter:
1. A shoe comprising:
(a) a bottom surface that is adjacent to the ground in
normal use;
(b) a sole that forms at least a portion of the bottom
surface;
(c) an upper portion extending above the sole; and
(d) a plurality of individual particles bonded to the bottom
surface of the shoe,
wherein the individual particles comprise at least one of
com husk, cork or a natural plant material that has been ground
into the individual particles.
REJECTIONS
The Examiner rejects the claims on appeal as follows:
claims 1, 7, 10, and 12 under 35 U.S.C. § 102(b) as anticipated by
Kubota (JP 03170101 A, pub. July 23, 1991);3
claims 2 and 3 under § 103(a) as unpatentable over Kubota and Stein
(US 2003/0009919 Al, pub. Jan. 16, 2003);
3 Our citations to Kubota refer to the English language translation the
Examiner provided on October 8, 2015. The English translation does not
include page numbers, and we treat the pages of the translation as
consecutively numbered, beginning with the page having the heading
“SPECIFICATION” as page 1.
2
Appeal 2016-002096
Application 14/093,706
claim 5 under § 103(a) as unpatentable over Kubota and Official
Notice and/or Eggers (US 1,782,382, iss. Nov. 18, 1930); and
claim 6 under § 103(a) as unpatentable over Kubota.
ANALYSIS
Independent claim 1 and dependent claims 6, 7, 10, and 12
Appellants argue Kubota does not disclose “wherein the individual
particles comprise at least one of com husk, cork or a natural plant material
that has been ground into the individual particles,” as recited in independent
claim 1. Appeal Br. 8—9. In doing so, Appellants acknowledge Kubota
discloses particles comprising natural plant material, but contend that
Kubota’s particles are likely cut, not ground into individual particles as
claimed. Id.
As the Examiner points out, the limitation at issue is a product-by­
process limitation in which the product is defined in terms of the process by
which it is made. Final Act. 3^4. Accordingly, if the product in a product-
by-process limitation is the same as or obvious from a product of the prior
art, the limitation is not patentably distinct from the prior art even though the
prior art product was made by a different process. In re Thorpe, 111 F.2d
695, 697 (Fed. Cir. 1985). Once the Examiner has made a prima facie case
that the claimed product and the product of the prior art reasonably appear to
be the same, the burden shifts to Appellants to prove the prior art product
does not necessarily or inherently possess the characteristics of the claimed
product. Id. at 698.
Here, the Examiner finds Kubota discloses particles comprising a
natural plant material. Final Act. 3. As set forth above, Appellants do not
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Application 14/093,706
dispute this finding, and Kubota indeed discloses short fibers or fine
particles including cotton, hemp, and other natural fibers. Kubota 3. Given
that Kubota discloses the claimed particles, except for the process by which
they are made, the burden shifts to Appellants to show Kubota’s natural
plant material particles do not possess the characteristics of particles formed
by grinding natural plant material. Appellants do not carry this burden.
According to Appellants, there are clear and observable physical
differences between fibers or particles formed by cutting and particles
formed by grinding. Appeal Br. 9. More specifically, Appellants argue it is
well-known that cutting can provide much greater control over the resulting
sizes of particles and the edges separating the individual particles, whereas
grinding necessarily results in significant non-uniformities in size or length
and significant irregularities in edges. Id.
Initially, we note Appellants do not point to any evidence to support
their contention that there are clear and observable physical differences
between particles that have been formed by cutting and particles that have
been formed by grinding, and, consequently, Appellants’ unsupported
contention has little probative value. See In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence.”) (citation omitted). Even assuming there are observable physical
differences between particles that have been formed by cutting and particles
that have been formed by grinding, Kubota does not teach the disclosed
fibers or particles are formed by cutting. To the contrary, Kubota is silent
regarding how the fibers or particles are formed. Furthermore, to the extent
the fibers or particles being uniform may imply they have been formed by
cutting, as Appellants suggest (Appeal Br. 8), Kubota expressly discloses
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short fibers of a non-uniform length may be used. Kubota 4. As such,
Appellants have not established a patentable difference between Kubota’s
natural plant material particles and particles formed by grinding natural plant
material and, thus, do not apprise us of error in the Examiner’s finding that
Kubota discloses “wherein the individual particles comprise at least one of
com husk, cork or a natural plant material that has been ground into the
individual particles,” as recited in independent claim 1.
In view of the foregoing, we sustain the rejection of independent
claim 1. Claims 6, 7, 10, and 12 depend from independent claim 1
(Appeal Br., Claims App.), and Appellants rely on the same arguments as
independent claim 1 for these claims {id. at 6—9). We, therefore, sustain the
rejections of claims 6, 7, 10, and 12 for the same reasons as independent
claim 1.
Claim 2
Claim 2 depends from independent claim 1 and recites “wherein the
individual particles comprise a natural plant material that has been ground
into the individual particles.” Appeal Br., Claims App. As Appellants point
out, claim 2 recites one of the three types of particles recited independent
claim 1, and more particularly, claim 2 recites the type of particle the
Examiner finds is disclosed in Kubota in rejecting independent claim 1.
Id. at 9. Given that we see no error in the Examiner’s finding that Kubota
discloses the subject matter of claim 2, Appellants’ arguments regarding
Stein and the Examiner’s proposed combination of Kubota and Stein
{id. at 10—11) do not apprise us of error in the Examiner’s rejection.
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Furthermore, the Examiner relies on Stein only as further evidence
that the bottom surface of the shoe may be formed from natural plant
materials. Final Act. 6. As such, any error in the Examiner’s findings
regarding Stein or the proposed combination of Kubota and Stein constitutes
harmless error.
In view of the foregoing, we are not persuaded the Examiner erred in
rejecting claim 2. We, therefore, sustain the rejection.
Claim 3
Appellants argue the prior art does not disclose “wherein the natural
plant material has been dried and ground into the individual particles,” as
recited in claim 3. Appeal Br. 11—12. According to Appellants, dried plant
material is physically and observably different than plant material in its
natural state, and the term “dried” is not a method step but rather a
characteristic of the material. Id. at 11.
Contrary to Appellants’ argument, the term “dried” describes how the
particles are made and is, therefore, a product-by-process limitation.
Final Act. 6; Ans. 6. Here, Kubota teaches particles including natural fibers
(Kubota 3), and Appellants do not explain how Kubota’s natural plant
material particles are different from particles formed by drying and grinding
natural plant material. Appellants, therefore, do not apprise us of error in the
Examiner’s rejection of claim 3, and we sustain the rejection.
Claim 5
Claim 5 depends from independent claim 1 and recites “wherein the
individual particles comprise com husk.” Appeal Br., Claims App. In
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rejecting claim 5, the Examiner finds Kubota discloses particles including
natural materials, but acknowledges Kubota does not expressly disclose com
husk. Final Act. 7. The Examiner takes Official Notice that natural fibers
include com husk, as evidenced by Eggers’ teaching of com husk being a
plant fiber. Id. at 8 (citing Eggers, 11. 1—6). The Examiner then determines it
would have been obvious to make the natural particles disclosed in Kubota
from com husk as taught by Official Notice and/or Eggers to save on cost.
Id. The Examiner also determines the proposed combination of the
teachings of Kubota and Official Notice and/or Eggers would have been
obvious because it is within the general skill of a worker in the art to select a
known material on the basis of its suitability for the intended use as a matter
of obvious design choice. Id.
Appellants argue Eggers teaches com husk is a suitable material for
manufacturing paper, whereas Kubota’s particles are bonded to the bottom
of a shoe. Appeal Br. 13; Reply Br. 6—7. Given these different uses,
Appellants contend one of ordinary skill in the art would not have thought to
use the teachings of Eggers to modify the teachings of Kubota.
Appeal Br. 13; Reply Br. 6—7. Appellants’ argument is persuasive.
Although selecting a material based on its suitability for the intended
use may be a matter of obvious design choice, the Examiner has not shown
that com husk is known to be a suitable material for the bottom surface of a
shoe. Given the large number of materials that fall into the category of
natural fibers, Kubota’s disclosure of natural fibers being a suitable material
for making particles for the bottom of a shoe is insufficient to show com
husk is a suitable material for the bottom of a shoe. Furthermore, as
Appellants point out, Eggers teaches com husk can be used to manufacture
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paper but does not teach using com husk for shoes. Appeal Br. 13;
Eggers, 11. 1—5.
The Examiner’s reasoning based on cost savings also lacks sufficient
support. Although Eggers teaches making paper from com husk saves costs
(Eggers, 11. 12—14), there is no indication that making particles for shoe soles
from com husk would save costs.
In view of the foregoing, the Examiner’s reasoning for combining the
teachings of Kubota and Official Notice and/or Eggers is inadequately
supported. We, therefore, do not sustain the Examiner’s rejection of
claim 5.
DECISION
The Examiner’s decision to reject claims 1—3, 6, 7, 10, and 12 is
affirmed.
The Examiner’s decision to reject claim 5 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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