Ex Parte White

Patent Trial and Appeal Board

Oct 11, 2018

14307769 (P.T.A.B. Oct. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/307,769 06/18/2014
7590
Richard White
Unit 110
3155 Reimche Road
Winfield, BC V4V 1V4
CANADA
10/11/2018
FIRST NAMED INVENTOR
Richard James White
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.
8454
EXAMINER
DAVID, SHAUN L
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
10/11/2018 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 RICHARD JAMES WHITE 1
Appeal2017-009177
Application 14/307,769
Technology Center 3700
Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
JOHN G. NEW, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal2 under 35 U.S.C. § 134 involving claims to foot care
device. The Examiner rejected the claims as indefinite and as anticipated.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 We recognize that Appellant is "an unassisted micro entity" (App. Br. 2).
2 We have considered and herein refer to the Specification of June 18, 2014
("Spec."); Final Office Action of March 30, 2016 ("Final Action"); Appeal
Brief of Aug. 4, 2016 ("App. Br."; we number the pages, unnumbered in the
Appeal Brief, in consecutive order); Corrected Claims for the Appeal Brief
of Sept. 15, 2016; and Examiner's Answer of Dec. 14, 2016 ("Ans.").
Appeal2017-009177
Application 14/307,769
Statement of the Case
Background
"Periodic soaking is essential for the health and condition of the feet,
and to remove hard skin from the soles. Soaking the feet prior to cleaning,
aids tremendously in the removal of hard skin buildup" (Spec. 1 ).
The inventive "Foot Rake is a personal handheld foot care device used
to stroke, rake and remove hard skin from the feet, after first preparing the
hard skin for removal by soaking in a warm saponaceous or Epsom Salt
solution" (Spec. 6).
The Claims
Claims 1-3 are on appeal. Claim 1 is representative and reads as
follows:
1. A foot care device, comprising an elongated handle, a
rake head attached to the handle, the rake head incorporating
one or more lateral rake strips, and each rake strip defining a
rake face, wherein each rake face is configured to be applied to
the soles of the feet, to stroke and remove by raking, dead skin
cells softened from prior soaking in a warm saponaceous or
Epsom salt solution.
The Re} ections
A. The Examiner rejected claims 2 and 3 under 35 U.S.C. § 112, second
paragraph as indefinite (Final Act. 3--4).
B. The Examiner rejected claims 1-3 under 35 U.S.C. § I02(a)(l) as
anticipated by Klemash3 (Final Act. 5-7).
3 Klemash et al., US 2011/0299912 Al, published Dec. 8, 2011.
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Application 14/307,769
A. 35 U.S.C. § 112, second paragraph
Appellant does not argue this rejection in the Appeal Brief. Because
the Examiner maintained the rejection in the Answer (see Ans. 2), we
summarily affirm the rejection. See Manual of Patent Examining Procedure
§ 1205.02 ("If a ground of rejection stated by the examiner is not addressed
in the appellant's brief, that ground of rejection will be summarily sustained
by the Board."); See also In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002)
(in which the Board affirmed an uncontested rejection of claims under 35
U.S.C. § 112, second paragraph, and on appeal the Federal Circuit affirmed
the Board's decision and found that the appellant had waived his right to
contest the indefiniteness rejection by not presenting arguments as to error in
the rejection on appeal to the Board).
B. 35 U.S.C. § 102(a)(l) over Klemash
The Examiner finds:
Klemash discloses (see abstract; Figs. 1-7, and [0001]-[0051]) a
foot care device (10, see [0004]) comprising an elongated
handle (20), a rake head (26, Fig. 7) attached to the handle, the
rake head incorporating one or more lateral rake strips (28, Fig.
4, seen but not labeled in Fig. 7), and each rake strip defining a
rake face (see Fig. 7, each bristle 28 appears to be cylindrical in
shape, where a first face/end is attached to the base plate 26,
and a second face/end is exposed to the outside environment -
this second face/end defines a "rake face"), wherein each rake
face is fully capable of being applied to the soles of the feet (see
[0034]/[0050]).
(Final Act. 5).
The issue with respect to this rejection is: Does a preponderance of the
evidence of record support the Examiner's conclusion that Klemash
anticipates claim 1?
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Application 14/307,769
Findings of Fact (FF)
1. Klemash teaches "a brush for use while bathing, and in
particular, cleaning one's feet while showering" (Klemash ,r 1 ).
2. Figures 4 and 7 of Klemash are reproduced below:
18
16 _/-
/ \ .,.-~30
1
Fig. 5 __ /.-- \
\
46
14 _/
Fig. 7 22
- 22a
Fig. 4
Figure 4 is a cross sectional view of a bathing brush and Figure 7 depicts the
brush head (see Klemash ,r,r 15, 18).
4
26
Appeal2017-009177
Application 14/307,769
3. Klemash teaches the "brush generally comprises a handle and a
brush head with a plurality of bristles protruding from both the upper and
lower surface of the brush head. Preferably, the handle is very long so that
the user can clean her feet without the need to bend over excessively"
(Klemash ,r 4).
4. Klemash teaches "the brush head 22 has a third plurality of
bristles 28 extending generally orthogonally from the upper base plate 26"
(Klemash ,r 34).
5. Klemash teaches the "upper base plate 26 has an irregular shape
including at least one convex portion designed for scrubbing the arch of the
foot and at least one generally flat portion designed for scrubbing the heal
[sic heel] and ball of the foot" (Klemash ,r 34).
6. Klemash teaches that "[i]n a preferred embodiment, the brush is
made of plastic" (Klemash ,r 48).
7. Klemash teaches "the sole bristles 28 are made from plastic
filament" (Klemash ,r 34).
Principles of Law
It is "well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable." In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Analysis
We agree with the Examiner that the device of Klemash anticipates
the device recited in claim 1. After we explain why we agree with the
Examiner, we will address Appellant's arguments. When we use the legal
term "anticipation", we are using a "term of art" that can only be understood
by reference to Federal Circuit and Supreme Court precedential decisions.
"Anticipation ... requires identity of invention: the claimed invention, as
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Appeal2017-009177
Application 14/307,769
described in appropriately construed claims, must be the same as that of the
reference, in order to anticipate." Glaverbel Societe Anonyme v. Northlake
Marketing & Supply, Inc., 45 F.3d 1550, 1554 (Fed. Cir. 1995). In other
words, when a claim is "anticipated" by a reference published prior to the
filing date of the application, it means that all the elements of the claim are
found in the reference arranged in the same way as in the claim. Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
To perform an anticipation analysis, we "must identify the elements of
the claims, determine their meaning in light of the specification and
prosecution history and identify corresponding elements disclosed in the
allegedly anticipating reference." Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).
In this case, the foot care device of claim 1 recites several structural
elements including (i) "an elongated handle", (ii) "a rake head attached to
the handle", and (iii) "one or more lateral rake strips" that each define a rake
face. Claim 1 also recites elements that relate to how the foot care device
operates, often called "functional elements" including that a rake face (iv)
"is configured to be applied to the soles of the feet" and that a function (v) is
to "stroke and remove by raking, dead skin cells softened from prior
soaking."
Having identified the elements recited in claim 1, we now look at the
Klemash patent publication to compare whether Klemash teaches the
corresponding elements of the claim.
Klemash teaches a foot care device, specifically for "cleaning one's
feet while showering" (FF 1 ). Klemash teaches the (i) "elongated handle,"
specifically explaining that "the handle is very long so that the user can
clean her feet without the need to bend over excessively" (FF 3).
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Application 14/307,769
Klemash teaches (ii) "a rake head attached to the handle", specifically
explaining that the brush has "a brush head with a plurality of bristles
protruding from both the upper and lower surface of the brush head" (FF 3).
We note that Klemash' s brush head that is attached the Klemash' s handle
(FF 2) can be reasonably identified as corresponding to the claimed rake
head consistent with Appellant's Specification, because the Specification
teaches the use of the same plastic material as Klemash's brush head (see FF
6). The Specification teaches the "rake head for the Foot Rake can be made
from plastic" (Spec. 12). Klemash's brush head is used for the same purpose
of cleaning feet as in the claimed rake with the same physical orientation
attached to a handle (see FF 1, 2).
Klemash teaches (iii) "one or more lateral rake strips" which the
Examiner identifies as the bristles 28 that are located on the upper base plate
26 as shown in Figures 4 and 7 of Klemash. We note that Klemash's bristles
28 attached to the brush head are reasonably identified as the element
corresponding to the claimed "rake strip" because the bristles 28 are shown
as laterally attached to the upper base plate 26 and use the same material as
recited in the Specification, plastic (FF 2, 4, 7). The Specification teaches
the "rake strips for the Foot Rake can be made from plastic" (Spec. 12).
Klemash teaches that a rake face (iv) "is configured to be applied to
the soles of the feet", specifically teaching treatment of the bottom or sole of
a foot (FF 5). Specifically, Klemash teaches the "upper base plate 26 has an
irregular shape including at least one convex portion designed for scrubbing
the arch of the foot and at least one generally flat portion designed for
scrubbing the heal [sic heel] and ball of the foot" (FF 5). The arch and ball
of the foot are on the bottom of the foot and are reasonably understood as
part of the sole of the foot.
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Application 14/307,769
Lastly, Klemash teaches (v) "to stroke" the foot, specifically teaching
"scrubbing the arch of the foot ... scrubbing the heal [sic heel] and ball of
the foot" (FF 5).
We recognize that Klemash doesn't teach the method step of "prior
soaking in a warm saponaceous or Epsom salt solution" recited in claim 1.
However, this step represents an "intended use" of the device that "does not
add a structural limitation to the claimed system." In re Anderson, 662 Fed.
Appx. 958, 963 (Fed. Cir. 2016). In other words, it is the structure of the
device that is claimed, and whether the foot is pre-soaked does not change
the structure of the device.
In Schreiber, the Federal Circuit explained that writing a claim that
mixes structural and functional limitations comes at a price. Schreiber, 128
F.3d at 1473. ("[C]hoosing to define an element functionally, i.e., by what it
does, carries with it a risk."). The price is that when the structural
limitations are met by a single prior art reference, and when the examiner
"has reason to believe" that the prior art reference inherently teaches the
functional limitation, the burden shifts to the patent applicant to show that
the functional limitation cannot be met by the single prior art reference. Id.
As applied to Appellant's claim 1, the Examiner reasonably believes that the
foot care device of Klemash would have been able to remove dead skin cells
as required by the claim. That is, there is no change in the structure of the
foot care device of claim 1 itself, regardless of whether it is used on feet that
have been subjected to a prior soaking or is used on feet that were not
soaked.
Appellant contends that "importantly, the Klemash patent titled 'Foot
Brush' is not for a brush, as that patent most certainly was granted long ago.
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Application 14/307,769
The Klemash patent is for a soap dispenser incorporated into a brush handle,
not unlike other patents cited in Appendix item 2( c )" (App. Br. 2).
We are not persuaded by this argument because the issue is not
whether the foot brush of Klemash also has other features, like soap
dispensing, but rather whether Klemash teaches a device that comprises
identical components to those recited in claim 1. Appellant may be arguing
that Klemash cannot be the same as the foot care device of claim 1 because
Klemash has all of the elements required by claim 1 plus additional elements
not recited by claim 1. If so, that argument is not persuasive because claim 1
uses the open "comprising" transitional phrase that does not exclude the
presence of other elements in the foot brush such as a soap dispenser. See
Georgia-Pacific Corp. v. U.S. Gypsum Co., 195 F.3d 1322, 1327 (Fed. Cir.
1999) (The transitional term "comprising" is "inclusive or open-ended and
does not exclude additional, unrecited elements.")
Appellant contends "Klemash did not invent the brush, and makes no
claim for its cleaning abilities, and certainly makes no mention of the
capability to remove hard skin from the feet, whereas the Foot Rake is
intentionally designed for that purpose" (App. Br. 2). Appellant contends
that "using a Klemash drawing, that the Klemash brush configuration is
flawed, with it being physically impossible or impractical for the user to
hold the brush handle and have the prescribed brush bristles contact the soles
of the feet" (id.).
We are not persuaded by these arguments. It is not relevant whether
Klemash invented the brush, but only that Klemash discloses a brush that is
structurally identical to the foot care device required by claim 1. Also, we
are not persuaded by Appellant's drawing in the Appendix 2(d) that
Klemash's brush would be unable to brush the soles of the foot because
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Application 14/307,769
Klemash expressly teaches that the "upper base plate 26 has an irregular
shape including at least one convex portion designed for scrubbing the arch
of the foot and at least one generally flat portion designed for scrubbing the
heal [sic heel] and ball of the foot" (FF 5). As we understand, the ball of
the foot is portion of the foot's sole.
Moreover, Klemash "is presumptively enabling barring any showing
to the contrary by a patent applicant." In re Antor Media Corp., 689 F.3d
1282, 1288 (Fed. Cir. 2012). Appellant's diagram is insufficient to carry the
burden necessary to show that Klemash would not have been enabled to
scrub the sole of a foot when balanced against Klemash's specific teaching
that the upper plate is able to scrub the heel and ball of the foot, which are
part of the sole (FF 5). We agree with the Examiner that "Appellant's
arguments for why Klemash wouldn't work on the soles of the feet are not
sufficient to overcome Klemash' s teachings that the device does work on the
soles of the feet" (Ans. 5).
Appellant contends the
Examiner's view that the claims for the Foot Rake do not
distinguish from Klemash is confusing. There is no
commonality of purpose or design between the two inventions.
A brush is not a rake. A brush does not use the raking process,
and cannot efficiently, effectively and as safely as the Foot
Rake, remove hard skin from the soles of the feet. The Foot
Rake's raking concept is unique. There are no such similar
patents on record.
(App. Br. 2).
We find this argument unpersuasive because the "apparatus claims
cover what a device is, not what a device does." Hewlett-Packard Co. v.
Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Whether the
foot care device of claim 1 is called a rake, a brush, a broom, a scraper, or
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Application 14/307,769
some other name, the anticipation analysis compares the specific structural
components required by the claim with the elements disclosed in the prior
art. Lindemann, 730 F.2d at 1458. In this case, the analysis demonstrates
Klemash anticipates the limitations of claim 1.
Conclusion of Law
A preponderance of the evidence of record supports the Examiner's
conclusion that Klemash anticipates claim 1.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C
§ 102(a)(l) over Klemash. Pursuant to 37 C.F.R. § 4I.37(c)(l), we also
affirm the rejection of claims 2-3 as these claims were not argued
separately.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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