Ex parte Hellman

Board of Patent Appeals and Interferences

Sep 8, 1999

08850825 (B.P.A.I. Sep. 8, 1999)

Application for patent filed May 2, 1997. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte NORMAN H. HELLMAN
____________
Appeal No. 1999-2100
Application No. 08/850,8251
____________
ON BRIEF
____________
Before ABRAMS, STAAB and NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-8, which constitute all of the
claims of record in the application.
Appeal No. 1999-2100
Application No. 08/850,825
Since claim 3 depends from claim 2, which stands2
rejected on the basis of Krippelz, Kolsky and Ito, it is
apparent that claim 3 should not have been included in this
rejection, but with claims 2 and 4. Moreover, since claim 4
depends from claim 1 and adds only that the two elements of
the slipper be heat bonded together, a feature that is taught
by Krippelz, we are at a loss to understand why claim 4 has
(continued...)
2
The appellant's invention is directed to a disposable
plastic slipper. The claims on appeal have been reproduced in
an appendix to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Rigsby 3,058,241 Oct. 16,
1962
Ito 4,030,212 Jun. 21,
1977
Krippelz 4,112,599 Sep. 12,
1978
Kolsky 5,274,846 Jan. 4,
1994
THE REJECTIONS
The following rejections stand under 35 U.S.C. § 103:
(1) Claims 1 and 3 on the basis of Krippelz and Kolsky.2
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Application No. 08/850,825
(...continued)2
been grouped with claim 2.
3
(2) Claims 2 and 4 on the basis of Krippelz, Kolsky and Ito.
(3) Claims 5-8 on the basis of Krippelz, Kolsky and Rigsby.
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OPINION
Rather than attempt to reiterate the examiner’s full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and the
appellant regarding the rejections, we make reference to the
Examiner’s Answer (Paper No. 17) and to the Appellant’s Brief
(Paper No. 16).
The test for obviousness is what the combined teachings
of the prior art would have suggested to one of ordinary skill
in the art. See, for example, In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima
facie case of obviousness, it is incumbent upon the examiner
to provide a reason why one of ordinary skill in the art would
have been led to modify a prior art reference or to combine
reference teachings to arrive at the claimed invention. See
Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985).
To this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole
or from the knowledge generally available to one of ordinary
skill in the art and not from the appellant's disclosure.
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See, for example, Uniroyal ,Inc. V. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1052 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988).
The appellant’s invention is directed to inexpensive
plastic slippers of the type that are disposable. Objectives
of the invention include providing such a slipper with soft
cushioning and smooth inner and outer surfaces, as well as
preventing the heel portion from folding under during use. As
manifested in independent claim 1, the invention comprises a
sole portion and a vamp portion, both of which are formed of a
material
having a substantially planar thermoplastic top web
and a substantially planar thermoplastic bottom web
spaced apart by a thermoplastic middle web . . .
being in the form of a plurality of bubbles bonded
to the top and bottom webs so that the bubbles are
hermetically sealed.
The claim concludes by stating that the bubbles provide a
cushioning property and the spaced apart webs stiffen the sole
to prevent it from folding under in use.
The examiner has rejected this claim as being
unpatentable over Krippelz in view Of Kolsky. Krippelz is
mentioned in the appellant’s specification as the type of
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slipper over which he believes his invention to be an
improvement. The Krippelz slipper is made from “bubble wrap”
material, which has a planar web on one side and a plurality
of upstanding bubbles on the other. The Krippelz slipper
comprises two sheets of bubble wrap material arranged in
layers. Although Krippelz teaches a first embodiment in which
bubbles contact the ground and a second embodiment in which
the planar web contacts the ground, it is basic to the
invention that bubbles always contact the sole of the user’s
foot, and such is the case in both embodiments. The purpose
of this is to provide effective ventilation so as to prevent
“plastic raincoat effect,” that is, heating and perspiration
dampness against the user’s skin (column 2, lines 17-22).
Therefore, insofar as the requirements of the appellant’s
claim 1 are concerned, Krippelz fails to disclose or teach the
substantially planar top and bottom webs spaced apart by a
middle web of a plurality of bubbles. Krippelz also has not
recognized the problem of the folding under of the heel
portions of this type of slipper.
Kolsky discloses a cushion material that can be used for
mats including “protective” devices for human beings (column
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4, lines 64-67), such as gloves (Figure 19). As shown in
Figure 1, the material is multi-layered, and at the very least
comprises a layer of material (18) which is the type described
in the appellant’s claim 1 plus a layer of foam (14). It is
the examiner’s position that it would have been obvious to one
of ordinary skill in the art to replace the two layers of
plastic bubble-wrap material used in the Krippelz slipper with
a layer of the plastic material disclosed by Kolsky as one of
the elements in the cushioning material.
We do not agree. It is axiomatic that the mere fact that
the prior art structure could be modified does not make such a
modification obvious unless the prior art suggests the
desirability of doing so. See In re Gordon, 733 F.2d 900, 221
USPQ 1125 (Fed. Cir. 1984). In the present situation, we fail
to perceive any teaching, suggestion or incentive which would
have led one of ordinary skill in the art to make the
modification proposed by the examiner. The examiner has
concluded that such a change would provide “better support,
added cushioning and better energy absorption” than the
material used by Krippelz (Answer, page 4). However, from our
perspective, any advantages touted in Kolsky apply to the
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multilayered material and not to the bubble wrap material
alone, for nowhere does Kolsky teach using it by itself.
Moreover, the proposed change would have destroyed one of the
objectives of the Krippelz invention, namely, the elimination
of the “plastic raincoat effect,” which would have operated as
a disincentive to the artisan to do so.
We therefore are of the opinion that the combined
teachings of Krippelz and Kolsky fail to establish a prima
facie case of obviousness with regard to the subject matter
recited in claim 1, and we will not sustain the rejection of
this claim or of dependent claim 3, which stands rejected on
the same basis. Inasmuch as Ito, which was cited against
dependent claims 2 and 4, does not cure the problems with the
basic combination, we also will not sustain the rejection of
these two claims, which depend from claim 1.
Independent claim 5, which has been rejected on the basis
of Krippelz, Kolsky and Rigsby, also requires the elements
discussed above with regard to claim 1. Rigsby does not cure
the deficiencies we found in the basic combination of
references, and therefore the rejection of claim 5 fails also,
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along with that of claims 6 through 8, which depend from claim
5 and were rejected on the same grounds.
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SUMMARY
None of the rejections are sustained.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
bae
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Alvin S. Blum
2350 Del Mar Place
Fort Lauderdale, FL 33301