Ex Parte Ziccarelli

Patent Trial and Appeal Board

Mar 21, 2013

11025394 (P.T.A.B. Mar. 21, 2013)

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.
11/025,394 12/29/2004 INV001Jean Ziccarelli ZICP:101US 1595
7590 03/22/2013
C. Paul Maliszewski, P.E.
Simpson & Simpson, PLLC
5555 Main Street
Williamsville, NY 14221-5406
EXAMINER
MOHANDESI, JILA M
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
03/22/2013 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 JEAN ZICCARELLI
____________

Appeal 2011-001530
Application 11/025,394
Technology Center 3700
____________

Before JAMES P. CALVE, WILLIAM A. CAPP and
JILL D. HILL, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001530
Application 11/025,394

- 2 -

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-8, 11, 13-18 and 21 as unpatentable under 35 U.S.C.
§ 103(a) over White (US 3,510,882 iss. May 12, 1970) and Tumas (US
5,682,617 iss. Nov. 4, 1997) and, in addition, the rejection of claims 10 and
20 as unpatentable under 35 U.S.C. § 103(a) over White, Tumas and
Richardson (US 6,275,997 B1 iss. Aug. 21, 2001). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellant’s invention relates to footwear with an impermeable liner.
Spec. 1, para. [0001]. Claim 1, reproduced below, is illustrative of the
subject matter on appeal.
1. An item of footwear, comprising:
a liner made of a flexible impermeable material, wherein
said flexible impermeable material does not allow liquids to
pass; and,
an outer layer, wherein said liner is arranged to contact a
foot, wherein the liner is a separate and different piece of
material from the outer layer, wherein said liner is connected to
said outer layer only at a cuff.
Appeal 2011-001530
Application 11/025,394

- 3 -
OPINION
Unpatentability of
Claims 1-8, 11, 13-18 and 21 over White and Tumas
Appellant argues claims 1-8, 11, 13-18 and 21 as a group. App. Br. 4-
13.1 We select claim 1 as representative of the group. Claims 2-8, 11, 13-18
and 21 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that White discloses a two-ply, footwear garment
for use where medication is applied to a leg. Ans. 3-4. More generally, the
Examiner finds that White discloses all of the limitations of claim 1 except
that it fails to disclose that the liner is made from a material that is
impermeable to liquid. Ans. 3-4.
The Examiner relies on Tumas as disclosing footwear made from non-
permeable latex to maintain skin contact with creams, lotions and
moisturizing agents. Ans. 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 make White’s liner from non-permeable material as taught by
Tumas. Id. According to the Examiner, the person of ordinary skill in the
art would have been motivated to make the combination in order to better
maintain skin contact with creams and lotions. Id. The Examiner reasons
that Appellant’s invention merely substitutes one known element for another
and would have yielded predictable results to one of ordinary skill in the art
at the time of the invention. Ans. 4-5.

1 Although Appellant presents argument for claims 13 and 21 under
separate headings, Appellant asserts that the arguments presented for claim 1
regarding a flexible impermeable material that does not allow liquids to pass
are applicable to claims 13 and 21. App. Br. 13.
Appeal 2011-001530
Application 11/025,394

- 4 -
Appellant traverses the Examiner’s rejection by first arguing that
Tumas teaches against a material that is anything but liquid and vapor
impermeable. App. Br. 5. However, Appellant cannot defeat an
obviousness conclusion based on a combination of references by merely
attacking the references individually. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (It is well settled that non-obviousness cannot
be established by attacking references individually where the rejection is
based upon the teachings of a combination of references). Otherwise,
Appellant’s argument admits that Tumas satisfies the claim language
directed to footwear comprised of flexible, impermeable material that does
not allow liquids to pass. App. Br., Clms. App’x.
Next, Appellant argues that no one skilled in the art would be
motivated to modify the inner stocking 12 of White to be liquid tight and
that making stocking 12 impermeable would exacerbate problems such as
trapping perspiration. App. Br. 6. Appellant also argues that White teaches
a conventional mesh woven stocking with an inner stocking 12 having a
mesh woven structure that is not liquid-tight or vapor-tight. App. Br. 5-7.
Appellant further argues against the combinability of White and Tumas by
asserting that modifying White with an inner, impermeable layer as in
Tumas would result in a stocking that was utterly unusable and totally
unsuited for the intended purpose of the two-ply stocking of White. Reply.
8-9. These arguments are not persuasive because White also discloses that
the inner stocking 12 can be an opaque plastic sheet structure of nylon that is
preferably perforated, as Appellant acknowledges. White, col. 3, ll. 3-7; see
App. Br. 7. Thus, White discloses use of an inner non-mesh plastic sheet
Appeal 2011-001530
Application 11/025,394

- 5 -
that may or may not be perforated. Moreover, in the Background of the
Invention section of Appellant’s own specification, Appellant admits that:
It is known to wrap a treated foot with an impermeable material
and then place a sock over the wrapping. This method keeps
the medication in contact with the foot and prevents the
medication from migrating.
Spec. 1, para. [0004].
Here, White provides an example of joining a two-ply article of
footwear at the cuff where the inner layer covers medication and can be an
opaque plastic sheet. Tumas provides an obvious example of using a
moisture impermeable footwear article to facilitate application of therapeutic
creams and lotions, such that a skilled artisan would have been motivated to
substitute Tumas’s impermeable sheet for White’s inner nylon sheet.
Appellant’s third argument is that White and Tumas teach away from
the invention. App. Br. 11. We do not agree that either reference teaches
away. A reference does not teach away if it does not “criticize, discredit, or
otherwise discourage” investigation into the invention claimed. See In re
Fulton, 391 F.3d 1195, 1201 (Fed.Cir. 2004). Appellant points to no
language in White that would criticize, discredit, or otherwise discourage
investigation into making a footwear liner impermeable to liquid. Neither
does Appellant direct us to any language in Tumas that would criticize,
discredit, or otherwise discourage investigation into creating a two-ply
footwear garment where the inner ply is moisture impermeable.2

2 Although Tumas discloses a single ply garment, the Background of
the Invention section of Tumas discloses that it was known in the art to
cover the foot with multiple layers of material where an inner layer is liquid
impermeable. See Tumas, Col. 1, ll. 29-39, citing U.S. 5,682,617 to
Bradley. Tumas does not criticize Bradley for being liquid impermeable,
Appeal 2011-001530
Application 11/025,394

- 6 -
Finally, Appellant accuses the Examiner of engaging in hindsight
reasoning in making the combination of White and Tumas. App. Br. 11.
Appellant asserts that the only suggestion for making the modification
suggested by the Examiner is Appellant’s own disclosure. Id. We disagree.
Appellant’s own Background section acknowledges that it was known to
combine an inner, impermeable layer to retain medication with an outer
covering, such as a sock. Spec. 1, para. [0003]. The Examiner’s reason for
combining the teachings of White and Tumas is supported by a rational
underpinning, as discussed supra, and Appellant has not persuaded us of
error in the Examiner’s determination of obviousness.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1-8, 11, 13-18 and 21.
Unpatentability of
Claims 10 and 20 over White and Tumas
Claims 10 and 20 depend from claims 1 and 13 respectively and add
limitations directed to the outer layer of the footwear having a sole with a
gripping member. App. Br., Clms. App’x. The Examiner finds that White
as modified by Tumas discloses all of the limitations of claims 10 and 20
except for a gripping member on the sole of the outer layer. Ans. 6. The
Examiner relies on Richardson as disclosing footwear with a gripping
member attached to the outer layer sole. Id. 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 gripping members on the sole of the outer layer
as taught by Richardson to prevent the wearer from falling down. Id.

rather, it touts the advantage of using latex because it is also vapor
impermeable.
Appeal 2011-001530
Application 11/025,394

- 7 -
In traversing the Examiner’s rejection, Appellant relies on the same
arguments that we have previously considered and rejected in connection
with claim 1 above. App. Br. 13-14. Otherwise, Appellant raises no new
arguments for the separate patentability of claims 10 and 20. Accordingly,
we sustain the Examiner’s rejection of claim 10 and 20.

DECISION
The decision of the Examiner to reject claims 1-8, 10, 11, 13-18, 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)(1)(iv) (2009).

AFFIRMED

Klh