Ex Parte Eischen

Board of Patent Appeals and Interferences

Oct 2, 2009

11060933 (B.P.A.I. Oct. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CLEMENT G. EISCHEN SR.
__________

Appeal 2009-004249
Application 11/060,933
Technology Center 3700
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Decided: October 2, 2009
__________

Before RICHARD M. LEBOVITZ, MELANIE L. MCCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
inflatable boot. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-
part.

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Statement of the Case
Background
“Inflatable boots have been employed in the rehabilitation of injured
lower extremities for several years. In recent years, therapeutic inflatable
boots which include a massaging feature have been developed” (Spec. 1, ll.
7-9). The Specification teaches that “[r]ecurrent compression of these
inflated chambers creates a variation of pressures, or massaging, upon the
injured lower extremity encased within the inflatable boot, and results in
improved blood flow to the injured area” (Spec. 2, ll. 3-5).
The Claims
Claims 1-30 are on appeal. Claims 1, 8, and 30 are representative and
read as follows:
1. An inflatable boot, comprising:
an inflatable bladder for encasing a portion of a lower
extremity, the bladder being formed by a liner and a cover,
the bladder including at least one wall portion and a sole
portion, wherein the bladder is adapted to be inflated with
air to a bladder air pressure;
at least one passageway fluidically interconnecting the
at least one wall portion and the sole portion;
a pump adapted to move external air into the sole
portion of the inflatable bladder; and
a bladder-pressure-triggered pressure relief valve
disposed in fluid communication with the bladder and
integrally coupled to the bladder cover, wherein the pressure
relief valve is adapted to limit the air pressure within the
bladder to less than or equal to a predetermined maximum
therapeutic pressure by discharging air from within the
bladder when the bladder air pressure exceeds a
predetermined trigger pressure.

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8. The inflatable boot of claim 1, wherein the
predetermined maximum therapeutic pressure is at least
about 25 mm Hg and no more than about 125 mm Hg.

30. The inflatable boot of [claim 1, additionally including
an inlet valve disposed distal from the pump and through
which air may be selectively pumped into the bladder]
wherein the inlet valve is disposed on the sole portion.

The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Eischen, Sr. US 5,868,690 Feb. 9, 1999
Spier US 4,995,173 Feb. 26, 1991

The issue
The Examiner rejected claims 1-30 under 35 U.S.C. § 103(a) as being
obvious over Eischen and Spier (Ans. 3-4).
The Examiner finds that “Eischen discloses in figures 1-8 an inflatable
boot comprising an inflatable bladder 24” and a release valve (Ans. 3). The
Examiner finds that “Eischen doesn't disclose the pressure relief valve being
integrally coupled to the bladder cover, wherein the pressure relief valve is
adapted to limit air pressure within the bladder to less than or equal to a
predetermined maximum therapeutic pressure” (Ans. 3). The Examiner
finds that “Spier teaches in figures 1-5 an inflatable boot (abstract, line 1),
comprising a bladder 24, a pressure relief valve 26 . . . to release air from the
bladder when a pre-selected pressure is exceeded” (Ans. 3-4).
The Examiner finds it obvious that “the pressure relief valve as taught
by Spier could be substituted for the pressure relief valve disclose[d] by
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Eischen in order to use the pressure relief valve to release air from the
bladder when a pre-selected pressure is exceed[ed]” (Ans. 4).
Appellant argues that “[t]he rejection is incorrect for at least two
reasons. First, Spier is non-analogous art and therefore may not be relied on
to establish a prima facie case of obviousness” (App. Br. 5). Appellant
further argues that “even if Spier were analogous art, each and every element
of the pending claims is not found in the combination of Eischen, Sr. and
Spier” (App. Br. 5). Appellant specifically argues that “Appellant has
thoroughly studied Spier in detail and finds no indication that the disclosed
valve is capable of releasing pressure at a predetermined therapeutic
pressure” (App. Br. 13).
In view of these conflicting positions, we frame the obviousness
issues before us as follows:
(i) Has Appellant demonstrated that the Examiner erred in finding it
obvious to modify the pressure relief valve of Eischen with the pressure
relief valve disclosed by Spier to obtain the inflatable boot required by claim
1?
(ii) Has Appellant demonstrated that the Examiner erred in finding it
obvious to set the pressure relief valve disclosed by Spier in the inflatable
boot of Eischen to obtain the pressure required by claim 8?
(iii) Has Appellant demonstrated that the Examiner erred in finding it
obvious to place the inlet valve on the sole of the inflatable boot as required
by claim 30?

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Findings of Fact (FF)
1. Eischen teaches “an inflatable boot with a bladder, and with a
structural interconnection joining an inner layer of the bladder to an outer
layer of the bladder to create a foot-supporting contour when the bladder is
inflated” (Eischen, col. 3, l. 66 to col. 4, l. 3). The boot is stated to be useful
for treating injuries to the foot and leg (see, e.g., Eischen, col. 1, ll. 5-19).
2. Eischen teaches that “[c]over 20 and liner 22 collectively define
a bladder 24 for boot 10. Boot 10 may be inflated by blowing or pumping
air or other fluid into bladder 24. Bladder 24 preferably is contiguous, so
that a pressure change within any part of bladder 24 may be communicated
to the rest of bladder 24” (Eischen, col. 5, ll. 41-45). A valve 64 is shown in
Figure 2 as above the heel (Eichen, col. 7, l. 44).
3. Eischen teaches that “structural interconnection 46 creates a
foot-supporting contour for sole portion 28 of bladder 24, causing a fluid-
filled inflated cushion to form under foot 12 when bladder 24 is inflated”
(Eischen, col. 6, ll. 46-49).
4. Eischen teaches that “boot 10 may be attached to a pump and
release valve, not shown, so that boot 10 may be pressurized and
depressurized automatically” (Eischen, col. 9, ll. 18-20).
5. Spier teaches a boot which “incorporates a foot-actuated pump
preferably in the heel of the footware, which pump is connected to one or
more expandable air bladders located in portions of the footware where
contour fitting is desirable” (Spier, col. 1, ll. 44-48).
6. Spier teaches that “[a]n adjustable relief valve connected to the
bladder releases air therefrom when a pre-selected pressure is exceeded”
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(Spier, col. 1, ll. 65-67). The “pump operating in conjunction wit the relief
valve maintains a preselected pressure and assures that the selected fit
between the user’s foot and the footware is maintained at all times” (Spier,
col. 2, ll. 4-11).
7. Spier teaches that
the adjustable one way pressure relief valve 26 includes a
ball 34 held against a conical seat 36 by the force of a spring
38. The spring 38 is compressed between an adjustment
screw 40 and the ball 34 . . . By turning the screw 40, the
force of the spring 38 against the ball 34 can be varied. In
this way, the pressure in the bladder 24 which will cause the
ball 34 to lift from the conical seat 36 is varied

(Spier, col. 3, ll. 50-58).
8. Spier teaches that the field of endeavor is “a high-tech boot,
sneaker, or other footware which can be readily adjusted for proper fit with
the user’s foot, this adjustment being accomplished automatically and being
automatically maintained” (Spier, col. 1, ll. 33-36).
9. The Specification teaches that “[t]his invention relates to an
inflatable boot” (Spec. 1, l. 4) and “more particularly to an inflatable boot
used in the treatment of a human lower extremity” (Spec. 1, l. 4-5).
10. The Specification teaches that “[b]oot 10 is intended to encase a
portion of a human lower extremity. Boot 10 may be specifically designed
to treat lower extremity injury or disease” (Spec. 5, ll. 2-4, emphasis added).

Principles of Law
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
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(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int'l v. Teleflex Inc., 550 U.S. 398, 418 (2007).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Id. at 416. “If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” Id. at 417.
Moreover, an “[e]xpress suggestion to substitute one equivalent for
another need not be present to render such substitution obvious.” In re Fout,
675 F.2d 297, 301 (CCPA 1982). As noted by the Court in KSR, “[a] person
of ordinary skill is also a person of ordinary creativity, not an automaton.”
550 U.S. at 421.

Analysis
Claim 1
Eischen teaches an inflatable boot with an inflatable air bladder, a
passageway fluidically interconnecting a wall portion and a sole portion, and
a pump and release valve adapted to move air into the sole portion of the
inflatable bladder (FF 1-4). Eischen does not teach the use of a pressure
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relief valve that is adapted to limit air pressure within the bladder to less
than or equal to a predetermined maximum pressure.
Spier teaches a boot with an inflatable air bladder, which includes
“[a]n adjustable relief valve connected to the bladder releases air therefrom
when a pre-selected pressure is exceeded” (Spier, col. 1, ll. 65-67; FF 5).
Spier teaches that the relief valve is adjustable, permitting different pressure
settings (FF 6).
Applying the KSR standard of obviousness to the findings of fact, use
of the Spier adjustable release valve as the relief valve in the inflatable boot
of Eischen represents a combination of known predictable elements which
permit adjustability of the pressure necessary to allow the control of air from
the bladder. Such a combination is merely a “predictable use of prior art
elements according to their established functions.” KSR, 550 U.S. at 417.
Analogous art
We are not persuaded by Appellant’s arguments that Spier is
nonanalogous art. Appellant first argues that “Spier is not within the
Appellant's field of endeavor, and therefore is non-analogous art under the
first prong of the analogous art test and may not be relied on for a prima
facie case of obviousness “ (App. Br. 7). We think that Appellant draws the
field of endeavor too narrowly to encompass only “therapeutic devices for
the treatment of injuries to the lower extremities, or in even more liberal
terms, as simply the field of therapeutic devices for the treatment [of] soft
tissue injuries” (App. Br. 6).
While Appellant argues that Spier “is directed to athletic footware”
(App. Br. 6), Spier has a broader focus. Spier teaches that the field of
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endeavor is “a high-tech boot, sneaker, or other footware which can be
readily adjusted for proper fit with the user’s foot, this adjustment being
accomplished automatically and being automatically maintained” (Spier, col.
1, ll. 33-36; FF 8). Appellant’s and Eischen’s inflatable boots for therapy
are one specific subset of this broader field of endeavor.
The Specification states that “[t]his invention relates to an inflatable
boot” (Spec. 1, l. 4) and only then states “more particularly to an inflatable
boot used in the treatment of a human lower extremity” (Spec. 1, l. 4-5; FF
9). Further, the Specification recognizes that the boot “may be specifically
designed to treat lower extremity injury or disease” (Spec. 5, ll. 2-4,
emphasis added; FF 10).
Consistent with Bigio, we find that Spier is analogous art because the
structure of Spier is within the same field of endeavor as that of both
Eischen and the claim, as per Appellant’s Specification statement that “[t]his
invention relates to an inflatable boot” (Spec. 1, l. 4; FF 9). We find that the
structural similarities between the inflatable boots of Spier and the inflatable
boots of Eischen would have led one of ordinary skill to consider all
inflatable boots (FF 9-10). See In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir.
2004) (“In this case, the Board reached its assessment of the field of the
invention with reference to the function and structure of the invention. . . .
The Board thus correctly set the field of the invention by consulting the
structure and function of the claimed invention as perceived by one of
ordinary skill in the art.”) Even were the boots to be used for different
purposes, each of the references are directed to inflatable boots as is the
claimed invention.
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We also do not find persuasive Appellant’s argument that “Spier is
not reasonably pertinent to the particular problem” (App. Br. 11). While
Appellant attempts to define the particular problem as “problems associated
with the healing of injuries to the lower leg” (App. Br. 8), we find that the
particular problem would be maintaining a pressure inside an inflatable boot
using a valve.
In Icon, the Court found that
an inventor considering a hinge and latch mechanism for
portable computers would naturally look to references
employing other “housings, hinges, latches, springs, etc.”
which in that case came from areas such as “a desktop
telephone directory, a piano lid, a kitchen cabinet, a washing
machine cabinet, a wooden furniture cabinet, or a two-part
housing for storing audio cassettes.”

In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007)
(citing In re Paulsen, 30 F.3d 1475, 1481 (Fed.Cir. 1994).
The instant situation is similar to that of Icon and Paulsen, where an
inventor considering release valves for inflatable boots in Eischen would
have reasonably considered other references of inflatable boots which
incorporated release valves, such as Spier (see FF 5-7).
We have considered the Moore, Saffir, and Eischen Declarations, but
are not persuaded that Spier is nonanalogous art. The Moore Declaration
simply identifies the claimed inflatable boot as a therapeutic device, but
provide no specific evidence that Spier is not in the broad field of endeavor
of inflatable boots nor is there evidence that Spier is not pertinent to the
problem of providing relief valves (see Moore 3 ¶ 11). The Saffir
Declaration, in addition to identifying the claimed device as therapeutic, also
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notes that Spier is not designed for treatment (see Saffir 5 ¶ 18). However,
the Saffir Declaration also provides no specific evidence that Spier is not in
the broad field of endeavor of inflatable boots nor is there evidence that
Spier is not pertinent to the problem of providing relief valves for Eischen’s
inflatable boots (see FF 1-8).
Finally, the Eischen Declaration states that the “field of athletic
footwear, and in particular the disclosure of the ‘173 patent, is so far
removed from the medical, scientific, and therapeutic fields of the ‘933
application, that I would simply not consider the ‘173 patent, or any similar
reference, as relevant” (Eischen Declaration 2 ¶ 10). The Eischen
Declaration is not persuasive for several reasons. First, the Specification
itself directly teaches that “[t]his invention relates to an inflatable boot”
(Spec. 1, l. 4) and only then states “more particularly to an inflatable boot
used in the treatment of a human lower extremity” (Spec. 1, l. 4-5; FF 9).
This teaches that the field of invention broadly encompasses “inflatable
boots.” Second, claim 1 includes no limitations which require that the
inflatable boot is therapeutic, only reciting the limitation that the valve
cannot exceed a particular “maximum therapeutic pressure” (see Claim 1).
Third, and most importantly, the problem suggested by the Eischen prior art
reference is the need for a release valve for the bladder of the inflatable boot
(FF 4) where Spier teaches a particular type of release valve for inflatable
boots (FF 5-7). It is this particular problem of Eischen’s for which Spier
would be pertinent. See, e.g., In re ICON Health and Fitness, Inc., 496 F.3d
1374, 1380 (Fed. Cir. 2007).
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Eischen and Spier teach all elements
We are not persuaded by Appellant’s argument that “Spier fails to
teach a valve ‘adapted to limit the air pressure . . . to less than or equal to a
predetermined maximum therapeutic pressure” (App. Br. 13). Spier teaches
that
the adjustable one way pressure relief valve 26 includes a
ball 34 held against a conical seat 36 by the force of a spring
38. The spring 38 is compressed between an adjustment
screw 40 and the ball 34 . . . By turning the screw 40, the
force of the spring 38 against the ball 34 can be varied. In
this way, the pressure in the bladder 24 which will cause the
ball 34 to lift from the conical seat 36 is varied

(Spier, col. 3, ll. 50-58). Thus, Spier teaches that the bladder may be
adjusted to any desired pressure relief, which encompasses the “therapeutic”
pressures of claim 1. See In re Zierden, 411 F.2d 1325, 1328 (CCPA 1969)
(“[M]ere statement of a new use for an otherwise old or obvious
composition cannot render a claim to the composition patentable.”)
Claims 8, 9, 15, 16, 22, 23, 27-29
Appellant argues that “neither Spier nor Eischen, Sr. disclose any
pressure values associated with the discharge of pressure at a predetermined
maximum therapeutic pressure, let alone the specific ranges of maximum
therapeutic pressures including 25-125 mm Hg” (App. Br. 15). However,
these claims are simply drawn to particular settings for the pressure relief
valve and not to any structural difference in the pressure relief valve itself
(see, e.g., Claim 8).
Appellant has provided no evidence to suggest that the pressure relief
valve of Spier, when combined with Eischen, would not have been capable
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of being set to the particular pressures indicated in the listed claims.
Appellant has also provided no evidence, or even argument, that the
particular ranges of pressure would not have been obvious (see App. Br. 14-
15). See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[I]t is not inventive
to discover the optimum or workable ranges by routine experimentation.”)
Claim 30
We think that for claim 30, Appellant has the better argument. The
specific teaching by Spier that “inlet valve 14 is located above the heel so as
to reduce the possibility of drawing water and dust into the bladder 24”
(Spier, col. 4, ll. 11-13) represents a teaching away from placing the inlet
valve on the sole of the shoe. See also FF2 for Eichen teaching. “A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed.Cir.1994).
We think that the express teaching by Spier that the inlet valve should
be located above the heel would have reasonably discouraged the ordinary
artisan from placing the inlet valve into the sole as required by claim 30.
Conclusions of Law
(i) Appellant has not demonstrated that the Examiner erred in finding
it obvious to modify the pressure relief valve of Eischen with the pressure
relief valve disclosed by Spier to obtain the inflatable boot required by claim
1.
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(ii) Appellant has not demonstrated that the Examiner erred in finding
it obvious to set the pressure relief valve disclosed by Spier in the inflatable
boot of Eischen to obtain the pressure required by claim 8.
(iii) Appellant has demonstrated that the Examiner erred in finding it
obvious to place the inlet valve on the sole of the inflatable boot as required
by claim 30.
SUMMARY
In summary, we affirm the rejection of claims 1 and 8 under 35
U.S.C. § 103(a) as being obvious over Eischen and Spier. Pursuant to 37
C.F.R. § 41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2-7
and 9-29 as these claims were not argued separately.
We reverse the rejection of claim 30 under 35 U.S.C. § 103(a) as
being obvious over Eischen and Spier.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).
AFFIRMED-IN-PART

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