Ex Parte Brown

Patent Trial and Appeal Board

Sep 30, 2016

13245954 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/245,954 09/27/2011
35222 7590 10/04/2016
McMillan LLP
BROOKFIELD PLACE, Suite 4400
181 BAY STREET
TORONTO, ON MSJ 2T3
CANADA
FIRST NAMED INVENTOR
Paul Anthony Brown
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
800257-2 1033
EXAMINER
GRACZ, KATHARINE
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
USPTOMail@mcmillan.ca
Sherif.Abdel-kader@mcmillan.ca
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL ANTHONY BROWN
Appeal2015-000364
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 CASE
The Appellant appeals under 35 U.S.C. § 134 of the Examiner's
rejection of claims 1, 3, 6-8, 10-13, 19, and 20. Claims 4, 9, and 14--18
were withdrawn from consideration. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
Appeal2015-000364
Application 13/245,954
THE CLAIMED SUBJECT MATTER
The Appellant's claims are directed generally to "footwear
construction with a fluid circulating system for visually altering the
appearance of the footwear." Spec. i-f 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.
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wan US 2004/0255490 Al Dec. 23, 2004
REJECTION
The Examiner made the following 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. Final Act. 2.
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Appeal2015-000364
Application 13/245,954
ANALYSIS
The sole issue on appeal is whether the Examiner has correctly
substantiated the obviousness of the inclusion of a filter as claimed within
the system disclosed in Wan. See App. Br. 2-3. As the Appellant states,
[t]he Examiner and Appellant are in agreement that Wan does
not disclose an inlet filter proximate the cartridge inlet and an
outlet filter proximate the cartridge outlet, such that the filters are
sized and otherwise dimensioned to prevent particulate matter
from being carried by the fluid out of the cartridge.
App. Br. 3. Wan is completely silent regarding filters of any kind in regard
to the pump system. According to the Examiner, however, "it would have
been obvious for one skilled in the art to incorporate a filter on either side of
the tubes/valves in order to prevent particles from entering the hydraulic
system." Ans. 4. As the Appellant points out, the Examiner has provided no
evidence as to the supposed obviousness of this modification. App. Br. 4.
The Examiner's only response is to state, "[i]t is known in the fluid
exchange art that filters are normally placed at an inlet and outlet in order to
prevent foreign particles or debris from entering the system, which would
cause failure." Ans. 5.
In this case the Examiner has essentially taken official notice of the
use of filters without providing any evidence to support the conclusion of
obviousness. An examiner may not invoke "good common sense" to reject a
patent application without some factual foundation, where "basic knowledge
and common sense was not based on any evidence in the record." In re
Zurko, 258 F.3d 1379, 1383, 1385 (Fed. Cir. 2001). In cases such as these,
the examiner should at least explain the logic or common sense that leads the
examiner to believe the claim would have been obvious. Anything less than
this results in a record that is insulated from meaningful appellate review.
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Appeal2015-000364
Application 13/245,954
Zurko, 258 F.3d at 1386. If the examiner is able to render a claim obvious
simply by saying it is so, neither the Board nor a court is capable of
reviewing that determination. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (citing In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)
("[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.")).
As the Appellant states, "the Examiner's assertions amount to an
Official Notice type objection." App. Br. 4. We also agree with the
Appellant that "[r]eviewing courts must rely on the record, and the Federal
Circuit has always required that absent the case where Official Notice is
'instant and unquestionable', the Office Action must provide support and
reasoning for Official Notice to be proper." Id. We do not agree that the
Examiner's finding of obviousness rests on such an instant and
unquestionable premise. Furthermore, although not dispositive by itself, the
Examiner asserts that use of a filter in Wan would be advantageous to
prevent clogging of the system by the particulate, but Wan contains no
discussion at all regarding the need for or desirability of a filter for proper
operation despite the disclosure of particulates in its fluid. Accordingly, we
conclude that the Examiner's basis for obviousness amounts to a mere
conclusory statement without any proper supporting evidence. A
preponderance of the evidence must show nonpatentability before the PTO
may reject the claims of a patent application. In re Caveney, 761 F.2d 671,
674, (Fed.Cir.1985). As such we do not sustain the Examiner's proposed
modification of Wan as articulated.
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Appeal2015-000364
Application 13/245,954
DECISION
For the above reasons, we REVERSE the Examiner's decision to
reject claims 1, 3, 6-8, 10-13, 19, and 20.
REVERSED
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