Ex Parte Martinez et al

Patent Trial and Appeal Board

Nov 30, 2017

13640712 (P.T.A.B. Nov. 30, 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.
13/640,712 10/11/2012 Jacob Martinez SPEN 00914 PTUS 4949
64458 7590 11/30/2017
Hemingway & Hansen, LLP
1700 Pacific Avenue
Suite 4800
Dallas, TX 75201
EXAMINER
LYNCH, MEGAN E
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
11/30/2017 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JACOB MARTINEZ, DAVID B. GRANGER, and PAUL LEWIS
____________

Appeal 2016-005244
Application 13/640,712
Technology Center 3700
____________

Before BRETT C. MARTIN, GEORGE R. HOSKINS, and
JEFFREY A. STEPHENS, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jacob Martinez et al. (“Appellants”)1 appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1–8 and 10–24 in this
application. The Board has jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

1 The Appeal Brief identifies Spenco Medical Corporation as the real party
in interest. Appeal Br. 7.
Appeal 2016-005244
Application 13/640,712

2
CLAIMED SUBJECT MATTER
Claims 1, 10, and 20 are independent. Claim 1 illustrates the claimed
subject matter on appeal, and it recites:
1. A contoured insole for users having a medium or high foot
arch, comprising:
a generally foot-shaped base contoured to define a heel
receiving cupped area, a midfoot area, an arch area on a medial
side of said base, and a forefoot area, said base having a length
extending from a heel end to a toe end, a base top surface and a
base bottom surface, said base bottom surface further defining a
forefoot pad indentation and a heel pad indentation;
a forefoot pad disposed in said forefoot pad indentation in
said forefoot area adjacent said arch area and said midfoot area;
a heel pad disposed in said heel pad indentation;
wherein said base further defines a plurality of longitudinal
curvilinear compression indentations extending lengthwise in a
longitudinal toe-to-heel direction in said arch area on said base
bottom surface on said medial side of said base; and
wherein said base further defines a metatarsal support area
integral to said base and located in said midfoot area adjacent
said arch area;
and wherein said base is formed from a moldable resilient
material.
Appeal Br. 28 (Claims App.) (emphasis added).
REJECTIONS ON APPEAL
Claim 24 stands rejected under 35 U.S.C. § 112, second paragraph, as
indefinite.
Claims 1, 4–8, and 10–24 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Smith (US 2009/0025254 A1, pub. Jan. 29, 2009).
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Smith and Grisoni (US 2008/0271340 A1, pub. Nov. 6,
2008).
Appeal 2016-005244
Application 13/640,712

3
ANALYSIS
A. § 112 Indefiniteness (Claim 24)
The Examiner determines claim 24 is indefinite because the
limitations “said forefoot area” and “said heel area” lack sufficient
antecedent basis. Final Act. 2. Appellants respond that the basis for this
rejection is “not substantive to the claimed invention,” and state Appellants
are “agreeable to amending the claims to provide clarity and antecedent
basis . . . upon allowance of the claims.” Appeal Br. 26.
Thus, Appellants do not address the merits of the rejection. We,
therefore, summarily sustain the rejection. See 37 C.F.R. § 41.37(c)(1)(iv);
In re Baxter Int’l, Inc., 678 F.3d 1357, 1362 (2012) (argument waived when
not timely presented in briefing to the Board, absent exceptional
circumstances); MPEP § 1215.03 (9th ed., Rev. 07.2015, Nov. 2015) (“An
appellant may, of course, choose not to present arguments or rely upon
particular evidence as to certain claim rejections; however, such arguments
and evidence are waived for purposes of the appeal and the Board may
summarily sustain any grounds of rejections not argued.”).
B. § 102 Anticipation by Smith (Claims 1, 4–8, and 10–24)
The Examiner finds inter alia that Smith discloses an insole base,
which, as required by claim 1, “defines a plurality of longitudinal curvilinear
compression indentations extending lengthwise in a longitudinal toe-to-heel
direction in said arch area” (emphases added). Final Act. 3–4. The
Examiner cites Smith’s flexure slots 27, illustrated for example in Smith’s
Figures 9 and 27, as corresponding to the claimed longitudinal indentations.
Id. (citing Smith ¶ 59). In support, the Examiner reasons Smith’s slots 27
Appeal 2016-005244
Application 13/640,712

4
“extend forward and lengthwise from their bottom point to their top point”
and “also extend in a longitudinal direction (i.e. in a line) from a first
indentation near the toe area to the last indentation near the heel area as seen
in Fig. 27; i.e. in a heel-to-toe direction.” Ans. 11.
Appellants argue the Examiner errs because Smith’s slots 27 do not
extend lengthwise in a longitudinal toe-to-heel direction, as claimed. Appeal
Br. 4, 21, 22. Appellants’ view is that Smith’s slots 27 “[i]f anything . . .
extend in a direction that is perpendicular to the length of the insole.” Id. at
4; see also Reply Br. 6–7 (“Slots (27) are not longitudinal, they are oriented
in a transverse direction, which is perpendicular to the longitudinal
toe-to-heel direction of the insole.”).
Appellants’ argument is persuasive. As illustrated in Appellants’
Specification, the claimed curvilinear indentations 28 may take the form of
grooves having a length, a width, and a depth. Spec. Figs. 1, 4, 11, and 12.
A person of ordinary skill in the art would understand that, in reciting a
“lengthwise” extension of the plurality of indentations, claim 1 concerns the
length dimension of an individual indentation, and requires the length to
extend along the toe-to-heel direction of the insole. Id.; see also id. ¶ 30
(“Lengthwise, said curvilinear indentations extend from approximately a
border between said forefoot area and said arch/midfoot area to a border
between said heel area and said arch/midfoot area.” (emphasis added)).
Thus, the Examiner’s finding that Smith’s slots 27 satisfy claim 1
because they extend as a group “in a line” in the longitudinal toe-to-heel
direction, from a first indentation to the last indentation (Ans. 11), rests upon
an unreasonably broad claim construction:
Appeal 2016-005244
Application 13/640,712

5
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification . . . is not
simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e., an interpretation that is “consistent with the
specification.”
In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (citing In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)). The Examiner’s grouping of
several of Smith’s slots 27 overlooks the “lengthwise” requirement of
claim 1, which focuses on an individual indentation, and is not consistent
with Appellants’ Specification.
The other basis for the Examiner’s finding is that Smith’s slots 27 are
each slanted from their bottom point to their top point, as best shown in
Smith’s Figure 27, and such slanting extends in the longitudinal toe-to-heel
direction. Ans. 11. To the extent such slanting corresponds to the depth
dimension, not the length dimension, of slots 27, the slanting does not
correspond to the “lengthwise” extension of an indentation recited in
claim 1. To the extent Smith’s slots extend lengthwise to some minor
degree in the longitudinal toe-to-heel direction (i.e., the direction of
lengthwise extension has some component in the longitudinal toe-to-heel
direction such that the heel is closer to one end of the slot than the other end
of the slot), as appears to be shown in Figure 27 of Smith, we deem this
insufficient to meet the claim limitations. Even under the broadest
reasonable interpretation of claim 1, in order for the claimed indentations to
extend lengthwise “in a longitudinal toe-to-heel direction,” the indentations
as a whole must extend at least substantially in that direction as shown in
Figure 1 of the Specification.
Appeal 2016-005244
Application 13/640,712

6
For the foregoing reasons, we do not sustain the rejection of claim 1
and its dependent claims 4–8 as anticipated by Smith. Independent
claims 10 and 20, identically to claim 1, recite an insole base having a
plurality of longitudinal curvilinear compression indentations extending
lengthwise in a longitudinal heel-to-toe direction. Appeal Br. 29, 30 (Claims
App.). We, therefore, likewise do not sustain the rejection of claims 10 and
20, and their respective dependent claims 11–19 and 21–24, as anticipated
by Smith.
C. § 103 Obviousness over Smith and Grisoni (Claims 2 and 3)
The Examiner’s additional consideration of dependent claims 2 and 3,
and of Grisoni, does not cure the deficiency of Smith as to claim 1 noted
above. See Final Act. 10–11. We, therefore, do not sustain the rejection of
claims 2 and 3 as unpatentable over Smith and Grisoni.
DECISION
The rejection of claim 24 as indefinite is affirmed.
The rejection of claims 1, 4–8, and 10–24 as anticipated by Smith is
reversed.
The rejection of claims 2 and 3 as unpatentable over Smith and
Grisoni 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)(1)(iv).
AFFIRMED-IN-PART