Ex Parte 6766598 et al

Board of Patent Appeals and Interferences

Mar 8, 2007

90007172 (B.P.A.I. Mar. 8, 2007)

The opinion in support of the decision being entered today is not binding precedent of the Board.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
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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:
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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.
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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
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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.

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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].”
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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.)
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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:
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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
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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
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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).

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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
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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.”
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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

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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
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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
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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.
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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

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Appeal No. 2007-0382
Reexamination 90/007,172

CHRISTIE, PARKER & HALE, LLP
PO BOX 7068
PASADENA, CA 91109-7068
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