Ex Parte 6766598 et alDownload PDFBoard of Patent Appeals and InterferencesMar 8, 200790007172 (B.P.A.I. Mar. 8, 2007) Copy Citation The opinion in support of the decision being entered today is not binding precedent of the Board. Filed by: Trial Division Merits Panel Filed P.O. Box 1450 Alexandria VA 22313-1450 Tel: 571-272-9797 Fax: 571-273-0042 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _______________ Ex parte R & S Trading Company, Inc. _______________ Appeal No. 2007-0382 Reexamination 90/007,172 (of U.S. Patent 6,766,598 B2) Technology Center 3700 _______________ Heard: February 21, 2007 _______________ Before SPIEGEL, DELMENDO, and TIERNEY, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL Statement of the Case The Patent Owner appeals from a final rejection of claims 1-20 of United States Patent 6,766,598 B2 (‘598 patent) under 35 U.S.C. §§ 134 and 306. We have jurisdiction under 35 U.S.C. § 6(b)(2006). Appeal No. 2007-0382 Reexamination 90/007,172 This reexamination was ordered on September 27, 2004 based on a third party reexamination request filed on August 13, 2004 by R. Neil Sudol (Reg. No. 31,669) of Coleman Sudol Sapone, P.C. (Order Granting Ex Parte Reexamination Request mailed September 27, 2004; Request for Reexamination filed August 13, 2004.) The Patent Owner states that the ’598 Patent is the subject of a patent infringement action filed in the United States District Court of the Central District of California, captioned “R&S Trading Company, Inc. v. Wal-Mart Stores, Inc. and BCNY International, Inc., Civil Action No. SAVC 04-894 GLT (RCx).” (Appeal Brief at 1.) According to the Patent Owner, the court proceeding has been stayed pending this reexamination. (Id.) The Patentees state that they invented “a new and improved footwear [e.g., sandals] comprising a sole including an outsole and insole, an upper member affixed to the sole, wherein said footwear is floatable in water.” (Col. 1, lines 57- 60; Fig. 1-12.) According to the Patentees, the inner insole has an inner structure constructed of a thermoplastic resin and an outer vinyl polymer coating, thus providing a footwear that is both buoyant and waterproof. (Col. 1, lines 60-66.) In certain non-limiting embodiments, the vinyl polymer coating is said to provide “a waterproof, water-repellant and/or water-resistant sealant” and “a comfortable and 2 Appeal No. 2007-0382 Reexamination 90/007,172 slip-resistant upper surface.” (Col. 3, lines 19-23 and col. 4, lines 7-10.) Fig. 1 of the ‘598 Patent is reproduced below: Fig. 1 of the ‘598 Patent is said to provide a perspective view of an embodiment of the invention. Fig. 5 of the ‘598 Patent is also reproduced below: 3 Appeal No. 2007-0382 Reexamination 90/007,172 Fig. 5 of the ’598 Patent is said to depict a cross-sectional view of the embodiment of invention depicted in Fig. 1. In these figures, the relevant reference numerals are: (10) footwear; (12) sole; (14) insole; (16) outsole; (26) apertures; (30) inner structure; and (32) coating. The Examiner rejected all of the ‘598 Patent claims as follows: (i) claims 1-8 and 11-20 under 35 U.S.C. § 102(e); and (ii) claims 9 and 10 under 35 U.S.C. § 103(a). (Examiner’s Answer at pages 3-5.) Claims 1 and 17 are representative of the appealed claims and are reproduced as follows1: 1. A footwear comprising: a flexible sole including an outsole and an insole, the insole having: 1 Claim 1 as shown in the appendix to the appeal brief is not identical to the claim 1 of the ‘598 patent. According to the PTO electronic record, the claims of the patent under reexamination have not been amended. In any event, we reach the same decision regardless of which version of claim 1 is the correct version. 4 Appeal No. 2007-0382 Reexamination 90/007,172 a flexible inner compressible structure having a top surface, a bottom surface and a side surface extending around the outer perimeter of the inner structure between the top and bottom surfaces; and a flexible outer coating forming a continuous layer that substantially covers the entire top, bottom and side surfaces of the compressible structure; and a strap extending from the sole; wherein the coating is a coating of vinyl polymer that forms a water barrier and the inner compressible structure is a different material than the outer coating. 17. A footwear comprising: a flexible sole including an outsole and an insole, the insole having: a flexible inner compressible structure having a top surface, a bottom surface and a side surface extending around the outer perimeter of the inner structure between the top and bottom surfaces; and a flexible outer coating forming a seamless continuous layer that substantially covers the entire top, bottom and side surfaces of the compressible structure; and a strap extending from the sole; wherein the coating is a coating of vinyl polymer that forms a water barrier and the inner compressible structure is a different material than the outer coating. The Examiner relied on the following prior art reference as evidence of unpatentability. Cole US 6,021,585 Feb. 8, 2000 The Patent Owner contends that Cole does not anticipate appealed claim 1 because it does not teach a continuous coating of vinyl polymer over a flexible inner compressible structure. (Appeal Brief at page 3.) According to the Patent 5 Appeal No. 2007-0382 Reexamination 90/007,172 Owner, Cole arguably teaches a polyvinyl chloride (PVC) covering but “this PVC (vinyl polymer) covering is nowhere described to be a ‘continuous layer’...” (Appeal Brief at page 4.) Specifically, the Patent Owner asserts that Cole’s covering would not be “continuous” because the materials forming the covering are fastened or stitched together. (Appeal Brief at page 6.) With respect to claim 17, which recites a “seamless” continuous layer, the patent owner further contends that Cole does not teach this limitation and that Cole’s fastening or stitching “would create a seam.” (Appeal Brief at 7.) The Examiner, on the other hand, explains that disputed claim terms must be given their broadest reasonable interpretation, taking into account the accompanying specification, and thus the term “a flexible outer coating forming a continuous layer that substantially covers the entire top, bottom and side surfaces of the compressible structure” in appealed claim 1 reads on the type of coverings described in Cole. (Examiner’s Answer at pages 5-7.) As to claim 17, the examiner asserts that the “seamless” limitation is insufficient to confer patentability. (Examiner’s Answer at 7.) We affirm the Examiner’s rejections as to claims 1-16 but reverse as to claims 17-20. 6 Appeal No. 2007-0382 Reexamination 90/007,172 Issues Does fastening or stitching, which the Patent Owner asserts as being described in Cole, preclude the disclosed PVC (a vinyl polymer) covering from being “continuous,” as required by appealed claim 1? Does Cole describe, either expressly or inherently, a PVC covering constituting a “seamless continuous layer,” thus also anticipating the subject matter of claim 17? Findings of Fact The following findings of fact are supported by a preponderance of the evidence. 1. Oral arguments were heard on February 21, 2007. 2. With respect to the 35 U.S.C. § 103(a) rejection of claims 9 and 10, the Patent Owner relies on the same arguments made against the 35 U.S.C. § 102(e) rejection of claim 1. (Appeal Brief at page 3, line 2.) 3. The ‘598 Patent does not contain an express definition of the term “continuous” in the recitation “a flexible outer coating forming a continuous layer that substantially covers the entire top, bottom and side surfaces of the compressible structure [, which compressible structure is part of the insole].” 7 Appeal No. 2007-0382 Reexamination 90/007,172 4. The phrase “continuous layer that substantially covers the entire top, bottom and side surfaces of the compressible structure” does not preclude the presence of stitch holes on the “continuous layer” because the phrase “substantially covers” does not specify that the continuous layer is the only material to the exclusion of other elements. 5. Neither appealed claim 1 nor the ‘598 patent specification necessarily limits the recited “flexible outer coating forming a continuous layer” to be formed by dipping or immersing the insole into a vinyl polymer. 6. The Patent Owner has proffered no evidence to demonstrate any structural (chemical or physical) difference between a layer formed by dipping or immersing the insole into a vinyl polymer and a layer as described in the applied prior art. 7. The ‘598 Patent enlightens one skilled in the relevant art as follows: “The insole 14 includes an inner structure 30 that may be foam-like [i.e., the compressible structure] and is at least partially, if not substantially wholly, encapsulated in a water-proof, water-repellant and/or water-resistant sealant coating 32 [i.e., the flexible outer coating].” (Emphasis added; ‘598 Patent, col. 3, lines 19-23; Fig. 5 and 6.) 8 Appeal No. 2007-0382 Reexamination 90/007,172 8. According to the Patent Owner, appealed claim 1 “recite[s] an insole having a flexible inner compressible structure and a flexible outer coating forming a continuous layer that substantially covers the inner compressible structure.” (Appeal Brief at page 3.) 9. A dictionary definition of the term “continuous” includes: “[u]ninterrupted in time, sequence, substance, or extent” or “[o]f or relating to a line or curve that extends without a break or irregularity.” (Evidence Appendix attached to the Appeal Brief.) 10. Cole describes a slippage-resistant sandal (i.e., a footwear) comprising an insole 12 supported by an outsole 14, wherein the insole 12/outsole 14 combination anchors a long main strap 16, a short forward strap 18, and a heel strap 20. (Col. 2, lines 54-58.) 11. Cole’s Fig. 1 is reproduced below: 9 Appeal No. 2007-0382 Reexamination 90/007,172 12. Cole’s Fig. 1 is said to depict a perspective view of a sandal (i.e., a footwear) having an insole and an outsole. 13. The Patent Owner does not dispute the examiner’s factual finding that Cole describes an “insole 12 having a flexible inner compressible structure...having a top surface, a bottom surface and a side surface extending around the outer perimeter of the inner structure between the top and bottom surfaces....” (Examiner’s Answer at page 3.) 14. Cole states that the exposed surfaces of the insole 12 may be “partially or completely” covered with a non-leather material, which may be the 10 Appeal No. 2007-0382 Reexamination 90/007,172 same materials disclosed for “substitute upper components [i.e., straps].” (Col. 5, lines 4-12.) 15. These “substitute upper components” are said to include man-made imitation leathers such as polyurethane or polyvinylchloride (PVC). (Col. 4, lines 6-12.) 16. The Patent Owner does not contend that Cole’s description of the PVC covering over the insole 12 lacks sufficient specificity. 17. The Patent Owner does not dispute the Examiner’s factual finding that PVC would inherently form a water barrier. (Examiner’s Answer at page 3.) 18. Cole does not specify how the PVC covering is attached to the insole 12. (Fig. 1.) 19. The Patent Owner does not dispute the Examiner’s finding that Cole describes a PVC covering (i.e., coating) that “substantially covers the entire top, bottom and side surfaces of the compressible structure.” 20. Every point on Cole’s PVC covering may be connected to any other point on the covering by an imaginary line without any break or interruption. 21. At oral argument, counsel for the Patent Owner confirmed that the only question raised in the briefs with respect to appealed claim 1 is 11 Appeal No. 2007-0382 Reexamination 90/007,172 whether the fastening or stitching of the PVC covering in Cole would preclude the covering from being a “continuous layer.” 22. Cole does not expressly state that the PVC covering is “seamless.” Principles of Law In the PTO where patentability issues are decided, claims are given their broadest reasonable construction consistent with the specification. In re Bigio, 381 F.3d 1320, 1324, 72 USPQ2d 1209, 1211 (Fed. Cir. 2004) (“[T]he PTO gives a disputed claim term its broadest reasonable interpretation during patent prosecution.”). This mode of claim interpretation applies even for a patent under reexamination. In re American Academy of Science Tech Center, 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004) (“The ‘broadest reasonable construction’ rule applies to reexaminations as well as initial examinations.”). “To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). Under 35 U.S.C. § 102, mere possibilities or probabilities that a claimed characteristic might be present in the prior art is insufficient. In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999). 12 Appeal No. 2007-0382 Reexamination 90/007,172 Analysis We apply these well settled legal principles to the facts of this case. Cole describes a slippage-resistant sandal (i.e., a footwear) comprising an insole 12 supported by an outsole 14, wherein the insole 12/outsole 14 combination anchors a long main strap 16, a short forward strap 18, and a heel strap 20. (Col. 2, lines 54-58.) Cole’s Fig. 1 is reproduced below: Cole’s Fig. 1 is said to depict a perspective view of a sandal (i.e., footwear) having an insole and an outsole. Cole states that the exposed surfaces of the insole 12 may be “partially or completely” covered with a non-leather material, which may be the same materials 13 Appeal No. 2007-0382 Reexamination 90/007,172 disclosed for “substitute upper components [i.e., straps].” (Col. 5, lines 4-12.) These “substitute upper components” are said to include man-made imitation leathers such as polyurethane or polyvinylchloride (PVC). (Col. 4, lines 6-12.) Cole does not expressly state how the PVC covering is fastened to insole 12. (Fig. 1.) The Patent Owner does not dispute the Examiner’s factual finding that Cole describes an “insole 12 having a flexible inner compressible structure...having a top surface, a bottom surface and a side surface extending around the outer perimeter of the inner structure between the top and bottom surfaces...” (Examiner’s Answer at page 3.) Likewise, the patent owner does not contend that Cole’s description of the PVC covering over the insole 12 lacks sufficient specificity. Nor does the Patent Owner dispute the Examiner’s factual findings that (1) PVC would inherently form a water barrier and (2) Cole describes a PVC covering that “substantially covers the entire top, bottom and side surfaces of the compressible structure.” (Examiner’s Answer at page 3.) Rather, the Patent Owner focuses on only one claim limitation to assert that Cole does not anticipate appealed claim 1.2 Specifically, the Patent Owner 2 At oral argument, counsel for the Patent Owner confirmed that the only question raised in the briefs with respect to appealed claim 1 is whether fastening or stitching the PVC covering in Cole would preclude the covering from being a “continuous layer.” 14 Appeal No. 2007-0382 Reexamination 90/007,172 contends that Cole does not describe “a continuous layer” (i.e., the flexible vinyl polymer coating over the compressible structure of the insole) because, unlike the claimed invention in which the coating may be obtained by dipping or immersing the insole into a vinyl polymer, Cole’s covering is fastened or stitched together. (Appeal Brief at page 6-7.) We disagree. The Patent Owner’s position is vitiated by the actual claim language and the specification. Appealed claim 1 does not expressly preclude the presence of stitch holes (assuming that they are present) on the “continuous layer.” Nor does the ‘598 patent specification contain a scope limiting definition of the term “continuous layer” so as to preclude stitch holes. Absent such express claim limitation or a limiting definition in the specification, we are obligated to give terms their broadest reasonable construction. While the Patent Owner would have us believe that stitches would render the PVC covering not “continuous,” we have not been directed to any basis to give the term “continuous” such a narrow construction. Nothing in the language of appealed claim 1 or the specification indicates to one skilled in the relevant art that the uncovered portions of the compressible structure excludes stitch holes. This determination is consistent with the dictionary definition of the term “continuous.” According to the dictionary of record, the term “continuous” may 15 Appeal No. 2007-0382 Reexamination 90/007,172 be defined as: “[u]ninterrupted in time, sequence, substance, or extent” or “[o]f or relating to a line or curve that extends without a break or irregularity.” (Evidence Appendix attached to the Appeal Brief.) We find that every point on Cole’s PVC covering may be connected to any other point on the covering by an imaginary line without any break or interruption. Hence, Cole’s PVC covering is in fact “continuous” as that term would be understood by one skilled in the relevant art. Under these circumstances, we agree with the Examiner that the claim terms (“a continuous layer that substantially covers...the compressible structure”), given their broadest reasonable construction taking into account the specification, encompass the type of PVC covering described in Cole. The Patent Owner would also have us believe that the outer coating would not be continuous unless formed by dipping or immersing the insole into a vinyl polymer. But neither the appealed claims nor the specification provides any basis to limit the invention in this fashion. Here, the Patent Owner has proffered no evidence to demonstrate that a structural (chemical or physical) difference necessarily exists between a layer formed by dipping or immersing the insole into a vinyl polymer and a layer as described in the prior art. The Patent Owner argues that the reexamination Examiner had previously agreed during interviews that Cole does not teach a continuous layer and that the examiner “should not be permitted to change the meaning of a term at such a late 16 Appeal No. 2007-0382 Reexamination 90/007,172 stage of the proceedings....” (Appeal Brief at page 6.) This argument lacks merit. We are unaware of any authority holding that we are bound by an Examiner’s determination as to claim construction. Moreover, we are unaware of any authority that would preclude the reexamination Examiner from reconsidering patentability or unpatentability before issuance of the certificate. BlackLight Power, Inc. v. Rogan, 295 F.3d 1269, 1274, 63 USPQ2d 1534, 1538 (Fed. Cir. 2002)(“The PTO’s responsibility for issuing sound and reliable patents is critical to the nation.”). For these reasons, we detect no error in the examiner’s rejection under 35 U.S.C. § 102(e) of appealed claims 1-8 and 11-16. With respect to the 35 U.S.C. § 103(a) rejection of claims 9 and 10, the patent owner relies on the same arguments made against the 35 U.S.C. § 102(e) rejection of claim 1. (Appeal Brief at page 3, line 2.) We therefore affirm this rejection because the patent owner’s arguments against the §102(e) rejection of appealed claim 1 are unpersuasive. The 35 U.S.C. § 102(e) rejection of appealed claims 17-20 stands on different footing. As pointed out by the patent owner, Cole does not expressly state that the PVC covering is “seamless” as specified in these claims. Trintec Industries, Inc. v. Top U.S.A. Corp., 295 F.3d 1292, 1297, 63 USPQ2d 1597, 1601 (Fed. Cir. 2002) (Appeal Brief at page 7.) While it is possible that Cole’s PVC 17 Appeal No. 2007-0382 Reexamination 90/007,172 covering is “seamless”, it is also possible that it is stitched at the bottom of the insole. Anticipation by inherency cannot be established by mere possibilities or probabilities.3 In re Robertson, 169 F.3d at 745, 49 USPQ2d at 1950-51. ORDER For these reasons, it is: ORDERED that the Examiner’s rejections of: (i) claims 1-8 and 11-16 under 35 U.S.C. § 102(e) as anticipated by Cole and (ii) claims 9 and 10 under 35 U.S.C. § 103(a) as obvious over Cole are AFFIRMED; and FURTHER ORDERED that the examiner’s rejection of claims 17-20 under 35 U.S.C. § 102(e) as anticipated by Cole is REVERSED. 3 We make no determination as to whether one of ordinary skill in the art would have found the subject matter obvious over Cole and other prior art. 18 Appeal No. 2007-0382 Reexamination 90/007,172 No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a) AFFIRMED-IN-PART /Carol A. Spiegel/ ) CAROL A. SPIEGEL ) Administrative Patent Judge ) ) ) /Romulo H. Delmendo/ ) BOARD OF PATENT ROMULO H. DELMENDO ) Administrative Patent Judge ) APPEALS AND ) ) INTERFERENCES /Michael P. Tierney/ ) MICHAEL P. TIERNEY ) Administrative Patent Judge ) RHD/lp 19 Appeal No. 2007-0382 Reexamination 90/007,172 CHRISTIE, PARKER & HALE, LLP PO BOX 7068 PASADENA, CA 91109-7068 20 Copy with citationCopy as parenthetical citation