Ivan E. Brown et al.

Patent Trials and Appeals Board

Mar 24, 2020

14570226 - (D) (P.T.A.B. Mar. 24, 2020)

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.
14/570,226 12/15/2014 Ivan E. Brown P10701US04 3630
22885 7590 03/24/2020
MCKEE, VOORHEES & SEASE, P.L.C.
801 GRAND AVENUE
SUITE 3200
DES MOINES, IA 50309-2721
EXAMINER
LOUIS, LATOYA M
ART UNIT PAPER NUMBER
3785
NOTIFICATION DATE DELIVERY MODE
03/24/2020 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):
michelle.woods@ipmvs.com
patatty@ipmvs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte IVAN E. BROWN, TERYLE L. KOUNKEL, and
BRANDON RODRIGUEZ
____________________

Appeal 2018-008393
Application 14/570,226
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, ANNETTE R. REIMERS, and
BRENT M. DOUGAL, Administrative Patent Judges.

DOUGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–16 and 18–20, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Brownmed, Inc.
Appeal Br. 1.
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Application 14/570,226

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CLAIMED SUBJECT MATTER
The claims are directed to a vibrating massaging footwear. Claims 1
and 18 are independent. Claim 1, reproduced below (some paragraphing
added), is illustrative of the claimed subject matter:
1. A foot wear article comprised of
a sole;
an upper attached to the sole which defines a foot opening;
an insert pad that is
a series of elongated general parallel pockets, each
of which are filled with particulate material to restrict
particle flow within the pocket, and each of which has
opposing ends in open communication with the ends of
other of said pockets so that particulate material may
move from one pocket to another,
said insert pad fitting on top of the sole to provide
the feeling of walking on a sandy beach; and
an electro-massage element comprised of
a rechargeable battery and
associated coin motors, said coin motors each being
associated with one parallel pocket mounted in said
insert pad to provide vibration to a wearer's foot and to
the particulate material of each of said generally
parallel pockets.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gold
Benaron
Waldon
US 5,098,419
US 5,902,256
US 8,523,793 B1
Mar. 24, 1992
May 11, 1999
Sept. 3, 2013
Connor
Harry
Thompson
Brown
US 2003/0060739 A1
US 2004/0173220 A1
US 2012/0174877 A1
US 2012/0210602 A1
Mar. 27, 2003
Sept. 9, 2004
July 12, 2012
Aug. 23, 2012
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Application 14/570,226

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REJECTIONS
Claims 1–11 and 18–20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Harry, Brown, Waldon, and Benaron.
Claims 12, 13, and 16 are rejected under 35 U.S.C. § 103 as being
unpatentable over Harry, Brown, Waldon, Benaron, and Connor.
Claim 14 is rejected under 35 U.S.C. § 103 as being unpatentable over
Harry, Brown, Waldon, Benaron, and Gold.
Claim 15 is rejected under 35 U.S.C. § 103 as being unpatentable over
Harry, Brown, Waldon, Benaron, and Thompson.

OPINION
Appellant argues the rejection of claims 1–11 and 18–20 together.
We select independent claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv) (permitting the Board to select a single claim to decide the
appeal as to a single ground of rejection of a group of claims argued
together). Appellant does not separately argue the rejections of claims 12–
16, noting that “resolution of this issue . . . is determinative of all of the
claims.” Appeal Br. 5. Thus, our resolution of the issues raised in
Appellant’s arguments over the rejection of claim 1 is also determinative for
the rejections of claims 12–16.
The Rejection of Claim 1
We first provide a brief summary of the rejection of claim 1, before
addressing Appellant’s arguments concerning alleged shortcomings in the
rejection. The Examiner finds that Harry teaches most of the features of the
foot wear article of claim 1. Final Act. 5–6. This includes a sole, an upper,
and an insert pad. Id. at 5. The Examiner finds that Harry’s insert pad
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includes “an electro-massage element comprised of a rechargeable battery
and associated actuators mounted in said insert pad to provide vibration to a
wearer’s foot and to all the particulate material in the insole.” Id. (internal
citations omitted); see Brown ¶ 121 (disclosing “a multiplicity of small, rigid
beads 92 distributed throughout the surrounding matrix material of the
insert”).
The Examiner finds that Harry does not specifically disclose: 1) “a
series of elongated general parallel pockets” in the insert pad, 2) that the
actuators are coin motors, and 3) “each actuator associated with one pocket.”
Id. at 5–6.
Concerning the first missing feature, the Examiner finds that Brown
teaches a foot wear article that, like Harry, also teaches particulates in a foot
insert. Id. at 5. The Examiner finds that Brown teaches “elongated . . .
parallel pockets . . . filled with particulate material . . . , and each of which
has opposing ends in open communication with the ends of other of said
pockets so that particulate material may move from one pocket to another.”
Id. (internal citations omitted). The Examiner determines that “[i]t would
have been obvious . . . to have provided the particulate material of Harry
with pockets as taught by Brown to provide the advantage of enhanced
comfort and ease of use.” Id.
Concerning the second missing feature, the Examiner finds that
Waldon teaches using coin motors for the vibration actuators. Waldon
teaches a therapeutic joint device that provides massage through vibration
(i.e., vibration of the coin motors). Waldon, Abstract. The Examiner
determines that “[i]t would have been obvious . . . to have manufactured the
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actuators of Harry as coin motors as taught by Waldon to provide the
advantage of enhanced comfort and a smaller footprint.” Final Act. 5–6.
Finally, concerning the third missing feature, the Examiner finds that
Harry, as modified by Brown, suggests “chambers for the particulate
material” and “vibration actuators (23, 81) in particulate material.” Id. at 6.
And that “Benaron teaches in fig. 5, each motor (36) associated with a
pocket (22).” Id. The Examiner determines that “[i]t would have been
obvious . . . to have provided the actuators of Harry associated with each
pocket as taught by Benaron to provide the advantage of enhanced spacing
for greater massage effect and coverage.” Id.
Appellant’s Arguments
Appellant argues that “Benaron is totally irrelevant,” presumably
because it assertedly does not teach “pockets or open ended channels”
(Appeal Br. 7) or because it has “nothing to do with vibrational footwear to
provide the sand-like feel of walking on a beach” (Reply Br. 2). However,
as acknowledged by Appellant, Brown teaches “loose filled material inside
an open ended pocket or channel.” Appeal Br. 7. The Examiner relied on
Brown for these teachings, not Benaron. Final Act. 5. As discussed above,
Benaron is only relied on for teaching “each motor (36) associated with a
pocket (22).” Id. at 6; see also Ans. 10 (further discussing Benaron).
Appellant further argues that in Benaron “[t]here are no parallel
pockets filled with particulate material, open at the ends with coin motors
(actuators?) mounted in the parallel pockets having open ends.” Id.
However, once again, Appellant is arguing over features of the claim that the
Examiner found to be taught in other references, as well as, the combination
of a number of references. One cannot show nonobviousness by attacking
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references individually where the rejections are based on combinations of
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations
omitted) (explaining that obviousness must be considered in light of “what
the combined teachings of the references would have suggested to those of
ordinary skill in the art”). For this reason, we are not informed of error in
the Examiner’s rejection.
Concerning Brown, Appellant argues that Brown
is devoid of any suggestion of vibrated technology of any kind
for an open ended channel with loose material inside of channels
to enhance the vibrational propagation of the beads and
correspondingly the movement as they move from channel to
channel and to enhance therapy and provide a relaxed beach sand
feel to the feet of the wearer of the sandal.
Appeal Br. 7. However, the rejection does not rely on Brown for all of these
features. Arguments presented in an appeal must address the grounds of
rejection set forth by the Examiner. 37 C.F.R. § 41.37(c)(1)(iv). Thus,
Appellant’s arguments over Brown alone do not inform us of error in the
Examiner’s rejection.
Declaration of Dr. Brown
In support of patentability, Appellant offers the Declaration of Dr.
Ivan Brown, one of the named inventors in the present application. Brown
Decl. ¶ 6. Appellant states that the “Declaration does not comment on the
prior art,” but rather identifies “what is important” in the invention. Appeal
Br. 9.
Dr. Brown states:
having one-coin motor associated with each of the parallel
channels or pockets is important because if that were not the case
the vibrational propagation of the beads and the movement
enhancement as they move from channel to channel (pocket to
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pocket) would not occur to the same level to enhance the therapy
and the relaxed beach sand feel to the feet of the wearer of the
sandal.
Brown Decl. ¶ 9.
Appellant argues that none of the references “singly or in
combination” “teaches the results outlined in Dr. Brown’s Rule 132
Affidavit.” Appeal Br. 9. However, neither the Declaration nor Appellant’s
argument establish that this is the case. Rather, the Examiner has identified
teachings in the prior art that correspond with all of the requirements of
claim 1. Final Act. 5–6. Further, the Examiner has provided reasons to
combine the various references. Id. Appellant has not shown these to be in
error. Thus, as we are not informed of error, we sustain the Examiner’s
rejections.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–11,
18–20
103 Harry, Brown, Waldon,
Benaron
1–11, 18–
20

12, 13,
16
103 Harry, Brown, Waldon,
Benaron, Connor
12, 13, 16
14 103 Harry, Brown, Waldon,
Benaron, Gold
14
15 103 Harry, Brown, Waldon,
Benaron, Thompson
15
Overall
Outcome
1–16, 18–
20

Appeal 2018-008393
Application 14/570,226

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED