Ex Parte Rastegar et al

Patent Trials and Appeals Board

Feb 27, 2019

11479768 - (D) (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/479,768
79998 7590
Thomas Spinelli, Esq.
14 Mystic Lane
Northprot, NY 11768
07/01/2006
02/27/2019
FIRST NAMED INVENTOR
Johangir S. Rastegar
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.
10050C 1115
EXAMINER
BAYS, MARIE D
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
02/27/2019 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 JOHANGIR S. RASTEGAR and THOMAS SPINELLI
Appeal2018-004862
Application 11/479,768
Technology Center 3700
Before WILLIAM V. SAINDON, WILLIAM A. CAPP and
JEREMY M. PLENZLER, Administrative Patent Judges.
CAPP, Administrative Patent Judge
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 4--11, 18, 20, and 21. We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM.
Appeal 2018-004862
Application 11/479,768
THE INVENTION
Appellants' invention relates to shoe coverings for traction or sports.
Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An elastomer covering for a shoe, the covering consisting
of:
an elastomer body having a shape configured to enclose a
perimeter of the shoe, the elastomer body having a size smaller
than a size of the shoe such that the elastomer body is fitted on
the shoe by being stretched over the shoe;
the elastomer body having an exterior elastomer bottom
portion corresponding to a sole and heel of the shoe; and
one or more spikes directly arranged on the exterior bottom
portion, the one or more spikes being configured for a sporting
activity.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Adair
Nakayama
Larson
us 3,643,352
US 6,502,332 Bl
US 6,836,977 B2
The following rejections are before us for review:
Feb.22, 1972
Jan. 7,2003
Jan.4,2005
1. Claims 1, 4---6, and 8-10 are rejected under 35 U.S.C. § I03(a) as
being unpatentable over Adair.
2. Claims 1, 4---6, and 8-10 are rejected under 35 U.S.C. § I02(b) as
being anticipated by Adair.
3. Claims 7 and 11 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Adair and Larson.
4. Claims 18, 20, and 21 are rejected under 35 U.S.C. § I03(a) as
being unpatentable over Adair and Nakayama.
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Application 11/479,768
OPINION
Procedural Posture of this Appeal
This patent application returns to us now for a third time. In two
previous appearances we affirmed the Examiner's final rejection of all
pending claims, first in Ex Parte Rastegar, App. No. 2011-003770, 2013
WL 3326109 (PTAB May 6, 2013) (hereinafter the "2013 Decision"), and
then subsequently in Ex Parte Rastegar, App. No. 2014-009943, 2016 WL
5957910 (PTAB October 12, 2016) (hereinafter the "2016 Decision"). This
Decision presumes familiarity with the 2013 and 2016 Decisions which are
incorporated herein by reference.
After receiving the 2013 Decision, Appellants filed a Request for
Continued Examination ("RCE") and, contemporaneously therewith, filed a
claim amendment. See RCE, May 25, 2013. Notably, the only amendment
to the claims was to change the transitional phrase in the preamble of
claims 1, 6, 10, 18, and 21 from "comprising" to "consisting essentially of."
Id. Less than one week later, the Examiner issued a non-final rejection over
the same primary reference, Adair, relied on by the Examiner in Appellants'
previous unsuccessful appeal. See Non-Final Rejection, May 30, 2013.
Thereafter, Appellants filed a response to the Examiner's May 30 non-final
rejection which presented arguments traversing the rejection, but otherwise
presented no new evidence or further amendments to the claims. See
Response, September 30, 2013. On October 15, 2013, the Examiner issued a
Final Rejection as to all pending claims. See Final Action. Appellants then
filed a Notice of Appeal on January 18, 2014. We subsequently affirmed the
Examiner in our 2016 Decision.
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After receiving the 2016 Decision, Appellants filed another RCE and,
contemporaneously therewith, filed a claim amendment. See RCE,
December 11, 2016. Notably, the only amendment to the independent
claims was to change the transitional phrase in the preamble of claims 1
and 18 from "consisting essentially of' to "consisting of." Id. Less than two
weeks later, the Examiner issued a non-final rejection over the same primary
reference, Adair, relied on by the Examiner in Appellants' two previously
unsuccessful appeals. See Non-Final Rejection, December 21, 2016.
Thereafter, Appellants filed a response to the Examiner's December 21 non-
final rejection which presented arguments traversing the rejection, but
otherwise presented no new evidence or further amendments to the claims.
See Response, May 22, 2017. On June 14, 2017, the Examiner issued a
Final Rejection as to all pending claims. See Final Action. Appellants
subsequently filed a Notice of Appeal initiating the instant appeal on
September 14, 2017.
Claim 1
Unpatentability of Claims 1, 4-6, and 8-10
over Adair
In our 2013 and 2016 Decisions, we affirmed the Examiner's 35
U.S.C. § 103 unpatentability rejection over Adair. See 2013 Decision
at *2--4; 2016 Decision at *5. Claim 1, as currently presented on appeal, is
identical to the version presented in the 2013 and 2016 Appeals, with the
sole exception that the transition phrase has been amended first from
"comprising," to "consisting essentially of," to now "consisting of."
See 2013 Decision at *1, Claims App.; 2016 Decision at *1, Claims App.
Consistent with the position taken in the previous appeals, the
Examiner, once again, finds that Adair discloses all of the limitations of
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Application 11/479,768
claim 1. Final Action 2-3. The Examiner finds that it is "well known" and
conventional to make inner sole elements removable so as to allow the
footwear to be used with or without the inner soles. Id. at 3. The Examiner
finds that it would have been obvious to remove Adair's leather pads 27
and 28 and use the footwear without them. Id. In support of this position,
the Examiner cites three prior art patents as non-applied art to substantiate
the finding that it is "well known" to remove innersole elements to allow use
of the overshoe without such elements. 1 Finally, the Examiner notes that the
mere omission of an element and its function in a combination where the
remaining elements perform the same functions as before involves only
routine skill in the art. Id. ( citing In re Karlson, 311 F .2d 5 81, 5 84 ( CCP A
1963)).
Appellants traverse the rejection by drawing our attention to Adair's
disclosure of sole and heel pads 27 and 28. Appeal Br. 10. Appellants
assert that, by amending the transition phrase to "consisting of," they have
patentably distinguished over Adair by claiming an invention that omits such
pads. Id. Appellants argue that "Adair fails to disclose or suggest an
elastomer covering for a shoe having only the elastomer body and one or
more spikes recited in claims 1 and 18." Id. Appellants assert that so le and
heel pads 27 and 28 are essential to the functioning of Adair as they are
required to connect the cleats to the overshoe. Id. at 11.
Adair discloses a flexible, resilient overshoe for use in playing golf
and other sports. Adair, Abstract. Adair's overshoe has a plurality of cleats
1 Specifically, the Examiner cites to Pedersen (US 4,246,707, iss. Jan. 27,
1981), Cross (US 466,297, iss. Dec. 29, 1891), and Ferguson (US 2,901,840,
iss. Sept. 1, 1959).
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with threaded stems that engage threaded openings in washers located on the
inside of the overshoe. Id.
Adair's overshoe has a rubber outsole 10 and a rubber insole 30.
Adair, col. 1, 11. 7-72, col. 2, 11. 37--41. Disposed between Adair's
outsole 10 and insole 30 are sole and heel pads 27 and 28. Id. at col. 2,
11. 29-31, Figs. 1-3. The sole and heel pads overlie washers 16. Id. at
Fig. 3, col. 2, 11. 28-30. The pads use relatively stiff leather so that the slight
projection of the securing washers over the inner surface of the outsole of
the shoe cannot be felt. Id. at col. 2, 11. 28--41. The sole and heel pads may
be secured to the insole and outsole by adhesive. Id. at col. 2, 11. 42--44.
Insole 30 is secured to the remainder of the overshoe by vulcanizing. Id.
Adair's cleats 20 engage washers 16, comprised of disk 17 with
central opening 18 around which is secured tubular sleeve 19. Id. at col. 2,
11. 7-13. Sleeves 19 are disposed in holes 15 in outsole 10. Id. at Fig. 3.
Adair's cleats have ground engaging spike section 20, screw threaded
stem 22, and annular flange 23 that separates spike 20 from stem 22. Id. at
col. 2, 11. 13-18. Stems 22 are screwed into sleeves 19 of washers 16. Id. at
col. 2, 11. 20-24. Contrary to the position argued by Appellants, we see no
evidence that Adair's cleats are mechanically connected to sole and heel
pads 27 and 28. Rather and as illustrated in Figure 3, the pads are disposed
above and merely overlie the cleats, but without any mechanical connection.
Appellants' arguments are not persuasive of Examiner error in
relation to the Section 103 obviousness rejection. The Examiner's rejection
is based on a proposed modification of Adair by which sole and heel pads 27
and 28 are removed or omitted. Final Action 3. The relatively stiff pads
merely disperse the pressure caused by the cleats acting on the bottom of the
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foot. Adair, col. 2, 11. 28-34 ("The pads are preferably of relatively stiff
leather so that the slight projection of the securing washers ... cannot be
felt."). A person of ordinary skill in the art would understand that a similar
result could be obtained merely by wearing the overshoe over shoes with
stiff and sturdy soles and heels.
We agree with the Examiner that such is an easy and simple
modification requiring no more than ordinary skill. Final Action 3. We are
also persuaded by the Examiner's finding that it is well known for innersole
elements to be removable to allow the use of an overshoe without them. Id.
In view of the foregoing discussion, we determine the Examiner's
findings of fact are supported by a preponderance of the evidence and that
the Examiner's legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner's unpatentability rejection of claim 1.
Claims 4-6 and 8-10
Appellants do not argue for the separate patentability of claims 4---6
and 8-10 apart from arguments presented with respect to claim 1, which we
have previously considered. Appeal Br. 12. We sustain the Examiner's
rejection of claims 4---6 and 8-10. See 37 C.F.R. § 41.37( c )(1 )(iv) (Failure to
separately argue claims.).
Anticipation of Claims 1, 4-6, and 8-10
by Adair
In view of our previous determination that claims 1, 4---6, and 8-10 are
unpatentable as obvious under Section 103 over Adair, we do not reach the
Examiner's alternative ground of rejection under Section 102 as anticipated
by Adair.
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Unpatentability of Claims 7 and 11
over Adair and Larson
Claims 7 and 11 depend indirectly from claim 1. Claims App.
Appellants do not argue for their separate patentability. Appeal Br. 12.
Consequently, we sustain the Examiner's rejection of claims 7 and 11.
Claim 18
Unpatentability of Claims 18, 20, and 21
over Adair and Nakayama.
Claim 18 is an independent claim that is substantially similar in scope
to that of claim 1. Claims App. In traversing the rejection of claim 18,
Appellants grouped their arguments with those asserted against the rejection
of claim 1. Appeal Br. 10-12. Appellants' arguments are equally
unpersuasive with respect to claim 18 as they are with respect to claim 1.
We sustain the Examiner's rejection of claim 18.
Claim 20
Claim 20 depends from claim 18 and is not separately argued.
Claims App., Appeal Br. 12. We sustain the Examiner's rejection of
claim 20.
Claim 21
Claim 21 depends from claim 18 and adds the limitation: "further
consisting essentially of one or more of an indicia and a decoration printed
on the covering." Claims App. The Examiner takes official notice that it is
well known and conventional to provide indicia and/or decorations on
footwear. Final Action 4. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time of the invention to
provide indicia on the modified Adair footwear. Id. A person of ordinary
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skill would have been motivated to do this for advertisement or amusement.
Id.
Appellants argue that, while it may be well known to have indicia on
shoes, it is not well known to have indicia or decoration on a shoe covering.
App. Br. 13. We fully considered and addressed this argument in connection
with our 2013 and 2016 Decisions.
[T]he claim to indicia and decoration relate to the appearance
of the shoe cover and have no mechanical function, and thus
cannot be relied upon for patentability. In re Seid, 161 F.2d
229, 231 (CCPA 1947) (features that relate to ornamentation
only and have no mechanical function whatsoever cannot be
relied upon for patentability of a claim in a utility patent
application.). The details of the indicia are "useful and
intelligible only to the human mind." See In re Lowry, 32 F.3d
1579, 1583 (Fed. Cir. 1994) (quoting In re Bernhart, 417 F.2d
1395, 1399 (CCPA 1969)). They do not exploit or interrelate
with any structural elements of the underlying shoe cover.
2013 Decision at *4; 2016 Decision at *6. As explained above, we found
Appellants' indicia argument unpersuasive in our 2013 and 2016 Decisions.
The argument is no more persuasive upon its third repetition. We sustain the
Examiner's rejection of claim 21.
DECISION
The decision of the Examiner to reject claims 1, 4--11, 18, 20, and 21
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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