Ex Parte Hamill

Patent Trial and Appeal Board

Nov 29, 2016

12765526 (P.T.A.B. Nov. 29, 2016)

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.
12/765,526 04/22/2010 Kristan Lisa Hamill 45TC-218048 9592
133759 7590 12/01/2016
Sheppard Mullin Richter & Hampton LLP
12275 El Camino Real, Suite 200
San Diego, CA 92130
EXAMINER
FAN, HONGMIN
ART UNIT PAPER NUMBER
2686
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
dmipdocketing@ sheppardmullin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRISTAN LISA AHMILL
Appeal 2015-000210
Application 12/765,526
Technology Center 2600
Before ST. JOHN COURTENAY III, CARLA M. KRIVAK, and
JOYCE CRAIG, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a non- final
rejection of claims 1—42. An Oral Hearing was held November 10, 2016.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-000210
Application 12/765,526
STATEMENT OF THE CASE
Appellant’s invention is directed “to a personal tracking device
integrally associated with a removable insole for footwear” (Spec. 11).
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. A multilayer insole for removable placement in an
article of footwear, the multilayer insole comprising:
a top side;
an underside;
two or more layers between the top side and the
underside formed from flexible material configured to provide
cushioning and/or support to a foot of a wearer within the
article of footwear;
an insole location data receiver configured to receive an
input signal relating to a location of the insole; and
an insole location data transmitter configured to transmit
an output signal relating to the location of the insole;
wherein the insole location data receiver and the insole
location data transmitter are both integrally associated with the
insole.
REFERENCES and REJECTIONS
The Examiner rejected claims 9 and 10 under 35 U.S.C. § 112 (b) as
failing to distinctly claim subject matter Appellant considers as their
invention.
The Examiner rejected claims 1, 2, 4, 5, 8—27, and 29-42 under
35 U.S.C. § 103(a) based upon the teachings of Daniel (US 7,714,709 Bl;
May 11, 2010) and Son (US 2010/0004566 Al; Jan. 7, 2010).
The Examiner rejected claims 3 and 28 under 35 U.S.C. § 103(a)
based upon the teachings of Daniel, Son, and Huang (US 5,875,571; Mar. 2,
1999).
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Appeal 2015-000210
Application 12/765,526
The Examiner rejected claims 6 and 7 under 35 U.S.C. § 103(a) based
upon the teachings of Daniel, Son, and Schrock (US 2010/0063779 Al; Mar.
11,2010).
ANALYSIS
Rejection of claims 9 and 10 under 35 U.S.C. § 112 (b)
Appellant contends the Examiner erred in rejecting claims 9 and 10 as
having no antecedent basis for the limitations “the bottom surface” and “the
top surface.” Appellant asserts an ordinarily skilled artisan “would
appreciate that the recitation of ‘a top surface’ is the same as a ‘top side’ and
that a ‘bottom surface’ is the same as ‘an underside’” (App. Br. 7). We
agree. Thus, we do not sustain the Examiner’s rejection of claims 9 and 10
under 35 U.S.C. §112 (b).
Rejection of claims 1—42 under 35 U.S.C. §103
Appellant contends the Examiner erred in finding Son teaches or
suggests embedding a transmitter into a shoe, as the Examiner merely makes
conclusory statements about embedding a processor including a transmitter
into an insole (App. Br. 10-11). Further, Appellant asserts it would not have
been obvious to integrally incorporate the electronics module taught by
Daniel into an insole so it can be easily movable between different shoes, as
Daniel’s electronic module is already moveable between shoes, and
therefore “teaches away from integrating the module into an insole which
cannot be interchanged between shoes of different sizes,” as the Examiner
finds (App. Br. 11—13). We do not agree.
We first note Son is cumulative to the Examiner’s findings, as Daniel
discloses the electronic module 10 “comprises communication circuitry 14
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Appeal 2015-000210
Application 12/765,526
which enables it to transmit (and selectively receive) signals” (emphasis
omitted) (Daniel col. 5,11. 17—19), thus disclosing a transmitter in an
electronic module integrally associated with an insole as claimed. Appellant
is arguing the references separately and not the combination asserted by the
Examiner.
Second, we note Daniel also “embeds” an electronic module into a
sole “integrally located with the insole”), as shown in Figure 2 and within
the ordinary meaning of that term.* 1 2 3Daniel’s electronic module is also
moveable between shoes (the module can be inserted and removed from a
cavity within the insole (Daniel col. 5,11. 48—50; Fig. 2)).
We also find Appellant’s teaching away argument is not persuasive.
“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 Kahn, 441 F.3d 977, 990 (Fed.
Cir. 2006) (citation omitted). In this case, Appellant fails to present
evidence that the references criticize or even discourage the proposed
combination, particularly, as noted above, Daniel teaches the electronic
module can be inserted and removed from a cavity.
1 Embed: verb -beds, -bedding, -bedded
1. (usually foil by in) to fix or become fixed firmly and deeply in a
surrounding solid mass: to embed a nail in wood
2. (transitive) to surround closely: hard rock embeds the roots
3. (transitive) to fix or retain (a thought, idea, etc) in the mind
Collins English Dictionary - Complete & Unabridged 2012 Digital Edition
© William Collins Sons & Co. Ltd. 1979, 1986 © HarperCollins Publishers
1998, 2000, 2003, 2005, 2006, 2007, 2009, 2012. Last visited Nov. 26,
2016.
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Appeal 2015-000210
Application 12/765,526
For the above reasons, on this record, we are not persuaded the
Examiner erred. We find a preponderance of the evidence supports the
Examiner’s ultimate legal conclusion of obviousness, and therefore sustain
the Examiner’s rejection of independent claims 1, 24, 29, 31, 33, 35, 37, and
40 argued for substantially the same reasons, and their dependent claims 2—
23, 25-28, 30, 32, 34, 36, 38, 39, 41, and 42.2
DECISION
The Examiner’s decision rejecting claims 9 and 10 under 35 U.S.C.
§112 (b) is reversed.
The Examiner’s decision rejecting claims 1—42 under 35 U.S.C. §103
is affirmed.
2 Claim 31 recites a step of “transmitting an insole output signal, relating to
a location of an insole according to claim 1, from the insole . . . .” Method
claim 31 thus includes a reference to the “insole according to claim 1,” as
does method claim 35. In the event of further prosecution, we leave it to the
Examiner to determine whether method claims 31 and 35 meet the
requirements of 35 U.S.C. § 112, fourth paragraph, for failing to further limit
the subject matter of apparatus claim 1. To the extent claims 31 and 35
depend upon claim 1, these method claims fails to specify a further
limitation of the subject matter of claim 1 to which it refers, because method
claims 31 and 35 are completely outside the scope of apparatus claim 1. See
Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1292 (Fed. Cir. 2006).
Moreover, “[a] single claim which claims both an apparatus and the method
steps of using the apparatus is indefinite under 35 U.S.C. 112, second
paragraph.” MPEP § 2173.05(p)(II) (citing In re Katz Interactive Call
Processing Patent Litigation, 639 F.3d 1303, 1318 (Fed. Cir. 2011) (citing
IP XL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005)).
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do
so. See Manual of Patent Examining Procedure (MPEP) §1213.02.
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Appeal 2015-000210
Application 12/765,526
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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