Ex Parte Tschernjaew et al

Patent Trial and Appeal Board

Jun 19, 2018

12996539 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/996,539 12/06/2010 Juri Tschernjaew
22850 7590 06/21/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
372112US99PCT 8416
EXAMINER
LYNCH, MEGAN E
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
06/21/2018 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):
patentdocket@oblon.com
oblonpat@oblon.com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JURI TSCHERNJAEW, MAYA KRAPFL, PATRICK STENNER,
MICHAEL BEYER, HARALD HAEGER, DIRK HEINRICH, and
MARTINA GOTTHEIS
Appeal2016-007837
Application 12/996,539
Technology Center 3700
Before STEFAN STAICOVICI, CHARLES N. GREENHUT, and
ERIC C. JESCHKE, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Juri Tschemjaew et al. ("Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision in the Non-Final Office Action (dated
June 3, 2015, hereinafter "Non-Final Act.") rejecting claims 1-7, 9, 11, 12,
15-20, 23, and 24. 2
We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
1 Evonik Degussa GmbH is identified as the real party in interest in
Appellants' Appeal Brief (filed Mar. 8, 2016, hereinafter "Appeal Br.").
Appeal Br. 2.
2 Claims 8, 10, 13, 14, 21, and 22 are canceled. See Appellants' Amendment
4--5, filed Sept. 2, 2015.
Appeal2016-007837
Application 12/996,539
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND of REJECTION pursuant
to our authority under 37 C.F.R. § 4I.50(b).
INVENTION
Appellants' invention "relates to perspiration-absorbing shoe insoles
with improved absorption of perspiration." Spec. 1.
Claims 1 and 6 are independent. Claim 1 is illustrative of the claimed
invention and reads as follows:
1. A method of improving perspiration absorbency in a shoe
insole or boot insole, the shoe insole or boot insole comprising
at least a first layer and a second layer, the second layer
including depressions,
the method comprising adding particulate amorphous
silica to the depressions in the second layer so that the
depressions are laden with the particulate amorphous silica, and
fixing a bottom surface of the first layer over the second
layer so that a bottom surface of the first layer covers the
depressions on a top surface of the second layer,
wherein:
the first layer is water-pervious and water vapor-
pervious; the second layer is water-impervious and water vapor-
impervious; and
the depressions on the top surface of the second layer are
directly connected to one another by open channels within the
second layer to allow transport of perspiration within the
depressions to contact the particulate amorphous silica
contained in the depressions.
REJECTIONS
I. The Examiner rejects claims 1-3, 5-7, 9, 15, 16, 23, and 24 under 35
U.S.C. § I03(a) as being unpatentable over Zaroli (DE 43 32 606 Al,
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Application 12/996,539
published June 1, 1994)3 and Kim (US 5,921,003, issued July 13,
1999).
II. The Examiner rejects claims 4 and 17-19 under 35 U.S.C. § 103(a) as
being unpatentable over Zaroli, Kim, and Fr0yna (WO 96/02158,
published Feb. 1, 1996).
III. The Examiner rejects claims 11 and 12 under 35 U.S.C. § 103(a) as
being unpatentable over Zaroli, Kim, and Williford (US 5,261,169,
issued Nov. 16, 1993).
NEW GROUND OF REJECTION
Claims 1-7, 9, 11, 12, 15-20, 23, and 24 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the invention which applicant regards as the
invention.
Each of independent claims 1 and 6 requires, inter alia, that the
depressions in the second layer "are laden with the particulate amorphous
silica." Appeal Br. 20, 22 (Claims App.) ( emphasis added).
Although an ordinary and customary meaning of the term "laden" is
"to load heavily or oppressively,"4 claims 1 and 6 are "still indefinite if a
person of ordinary skill in the art cannot translate the definition into
meaningfully precise claim scope." Haliburton Energy Services, Inc. v. M-1
LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008). "[P]atentees are allowed to
3 We derive our understanding of this reference from the English language
machine translation contained in the image file wrapper of this application.
4 See Merriam Webster's Collegiate Dictionary XX (10th ed. 2005).
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Application 12/996,539
claim their inventions broadly, [but] they must do so in a way that distinctly
identifies the boundaries of their claims." Id. at 1253.
In this case, Appellants have not identified, nor could we find,
description in the Specification that clearly sets forth the metes and bounds
of the term "laden," as called for by each of independent claims 1 and 6.
Although Appellants' Specification describes a "laden" shoe sole as
containing 15g of absorbent material, i.e., particulate amorphous silica (see
Spec. 15), merely describing an amount, without describing the distribution
of the particles within the depressions in the second layer, does not allow a
skilled artisan to determine whether the depressions are "load[ ed] heavily or
oppressively." As such, in light of Appellants' Specification and the
ordinary and customary meaning of the term "laden," it is not clear what
level of particulate amorphous silica loading is required so that the claimed
"depressions" constitute "depressions ... laden with the particulate
amorphous silica." Accordingly, independent claims 1 and 6 "do not define
the invention (i.e., the subject matter which the applicant regards as his
invention) with a reasonable degree of particularity." In re Hammack, 427
F.2d 1378, 1382 (CCPA 1970).
In conclusion, for the foregoing reasons, the term "laden" as used in
the claims, when construed in light of Appellants' Specification, lacks
sufficient precision such that one endeavoring to practice the invention could
not determine the metes and bounds thereof. Therefore, claims 1-7, 9, 11,
12, 15-20, 23, and 24 are indefinite for failing to particularly point out and
distinctly claim the invention.
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Application 12/996,539
ANALYSIS
In view of our determination that claims 1-7, 9, 11, 12, 15-20, 23,
and 24 are indefinite, it follows that the prior art rejection of claims 1-7, 9,
11, 12, 15-20, 23, and 24 must fall because it is necessarily based on
speculative assumptions as to the meaning of the claims. See In re Steele,
305 F.2d 859, 862---63 (CCPA 1962). It should be understood, however, that
our decision in this regard is proforma and based solely on the
indefiniteness of the claimed subject matter, and does not reflect on the
adequacy of the prior art evidence applied in support of the rejections.
SUMMARY
We reverse the Examiner's decision to reject claims 1-7, 9, 11, 12, 15-
20, 23, and 24.
We enter a new ground of rejection of claims 1-7, 9, 11, 12, 15-20, 23,
and 24 under 35 U.S.C. § 112, second paragraph, as being indefinite.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 4I.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the prosecution will be
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remanded to the Examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
REVERSED; 37 C.F.R. § 4I.50(b)
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