13245954 - (D) (P.T.A.B. May. 4, 2020)

Brown, Paul Anthony.

Patent Trials and Appeals BoardMay 4, 2020

13245954 - (D) (P.T.A.B. May. 4, 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. 13/245,954 09/27/2011 Paul Anthony Brown 2017-00595 1033 132285 7590 05/04/2020 Elan IP Inc. 2 Bloor Street East Unit 3500 Toronto, ONTARIO M4W1A8 CANADA EXAMINER KANE, KATHARINE GRACZ ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 05/04/2020 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): USPTO@dockettrak.com docketing@elan-ip.com yasin@elan-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL ANTHONY BROWN Appeal 2019-002703 Application 13/245,954 Technology Center 3700 Before CHARLES N. GREENHUT, BRETT C. MARTIN, and BRENT M. DOUGAL, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s Final decision to reject claims 1, 3, 6–8, 10–13, 19, and 20.1 Claims 2, 4, 5, 9, and 14–18 were canceled during prosecution. Appeal Br. 8–10, Claims App. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Paul Anthony Brown as the real party in interest. Appeal Br. 2. Appeal 2019-002703 Application 13/245,954 2 CLAIMED SUBJECT MATTER The claims are directed “to a footwear construction with a fluid circulating system for visually altering the appearance of the footwear.” Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A footwear article having a sole portion, an upper portion, a heel portion, and an interior adapted for receiving a foot; said footwear article comprising: a cartridge enclosing a fluid; said cartridge including a cartridge inlet and a cartridge outlet; wherein said cartridge encloses particulate matter suspendable in said fluid; a fluid circulation system for circulating said fluid into said cartridge inlet and out of said cartridge outlet; said fluid circulation system including a pump having a pump inlet in fluid communication with said cartridge outlet and a pump outlet in fluid communication with said cartridge inlet; and, an inlet filter proximate said cartridge inlet and an outlet filter proximate said cartridge outlet; said inlet and outlet filters sized and otherwise dimensioned to prevent said particulate matter from being carried by said fluid out of said cartridge. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Wan Goyetche US 2004/0255490 A1 US 2005/0013711 A1 Dec. 23, 2004 Jan. 20, 2005 REJECTION Claims 1, 3, 6–8, 10–13, 19, and 20 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Wan and Goyetche. Final Act. 2. Appeal 2019-002703 Application 13/245,954 3 OPINION Obviousness The Examiner rejects the claims over the combination of Wan and Goyetche. Final Act. 2. Claim 1 is the sole independent claim. The Examiner finds that Wan teaches all of the claimed limitations except for the recited inlet and outlet filters for preventing the particulate matter from being carried out of the cartridge. Final Act. 3. The Examiner also finds that Goyetche discloses the recited filters and that it would have been obvious to incorporate the filters of Goyetche “into the inlet and outlet proximate to said cartridge of Wan in order to prevent particulate matter from entering or leaving the system.” Id. Appellant argues that the references in Wan to a pump are made in regard to embodiments where “it is clear that the particulate that is reflecting is held in disc 606, which disc in its entirety is suspended in the liquid.” Appeal Br. 7. In this embodiment, “[t]here is no motion of liquid into and out of the disc which would lead to particula[te] matter entering the tubes and the pump.” Id. This embodiment, however, is different from Wan’s first embodiment teaching a particulate 900 suspended in liquid. Wan ¶¶ 32–33. Essentially the Examiner has combined aspects of two separate embodiments without any explanation as to why one of skill in the art would have combined the two. Although Wan does teach a particulate suspended in liquid, this embodiment is disclosed as being sealed. Wan ¶ 33. The embodiment that utilizes a pump, as noted by Appellant, merely uses the pump to circulate liquid, which does not contain any particulate, around a light emitting disc to change the shape of the disc and thus change the light pattern emitted Appeal 2019-002703 Application 13/245,954 4 thereby. Wan does not teach the use of the pump in conjunction with the particulate suspended in the liquid in the manner disclosed and claimed by Appellant. As such, there is no apparent need for one of skill in the art to have included filters in the particulate embodiment because that particulate- containing chamber is sealed. In the embodiment involving the pump, no particulate is present, so no filter is needed either. Accordingly, the Examiner has not presented a reasonable basis with rational underpinnings for including a filter in the first place as neither embodiment disclosed in Wan would benefit from such a filter. Further, the Examiner’s addition of Goyetche does little to supplement the original rejection we previously reversed whereby the Examiner stated, without evidence, that adding a filter would have been obvious. First, Goyetche discloses standard air filters in an open loop system on either side of a circulation fan. These filters prevent particulate matter from reaching the fan on the inlet side and then prevent any particulate that might get past the first filter from leaving with the air circulated by the fan on the outlet side. The Examiner does not provide sufficient reasoning to explain why one skilled in the art would modify Wan’s device with a generic filter of the type described in Goyetche which has no apparent relevance to articles of clothing like those described in Wan. Appeal. Br. 6. The absence of any such indication of relevance in the evidence or explanation of record provided by the Examiner is a strong indication that the Examiner improperly resorted to hindsight in an effort to reconstruct the claimed subject matter. It is, of course, improper to base a conclusion of obviousness Appeal 2019-002703 Application 13/245,954 5 upon facts gleaned only through hindsight. To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction— an illogical and inappropriate process by which to determine patentability. Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) In sum, the Examiner has merely found evidence that filters were known to be used generically to filter out unwanted particles. These filters, however, are not used in the same medium (air versus water), are not configured in the manner claimed so as to contain particulate wholly within a chamber, and the Examiner has failed to state a reason why one of skill in the art would look to add filters to Wan in the first place because no single embodiment in Wan suffers from any issue that could be addressed with a filter. Accordingly, we do not sustain the Examiner’s rejection. CONCLUSION The Examiner’s rejection is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 6–8, 10– 13, 19, 20 103 Wan, Goyetche 1, 3, 6–8, 10–13, 19, 20 REVERSED