Ex Parte Kennedy

Patent Trial and Appeal Board

Dec 13, 2017

13092211 (P.T.A.B. Dec. 13, 2017)

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.
13/092,211 04/22/2011 Paul Kennedy KE5-1 6084
20808 7590 12/15/2017
BROWN & MICHAELS, PC
400 M & T BANK BUILDING
118 NORTH TIOGA ST
ITHACA, NY 14850
EXAMINER
NGUYEN, SON T
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
12/15/2017 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):
docket@bpmlegal.com
brown @bpmlegal. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL KENNEDY
Appeal 2017-0039891
Application 13/092,2112
Technology Center 3600
Before ANTON W. FETTING, KENNETH G. SCHOPFER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 from the rejection of claims
1—10 and 14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief (“Br.,” filed Mar. 2, 2016), the
Examiner’s Answer (“Ans.,” mailed Sept. 2, 2016), and the Final Office
Action (“Final Act.,” mailed Sept. 3, 2015).
2 According to Appellant, the real party in interest is Paul Kennedy. Br. 1.
Appeal 2017-003989
Application 13/092,211
BACKGROUND
According to Appellant, “[t]he invention pertains to the field of
horseshoes. More particularly, the invention pertains to a cushioned
horseshoe.” Spec. 1,11. 4—5.
ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. A cushioned horseshoe for attachment to a hoof of an
animal by a plurality of nails having heads, comprising:
a U-shaped hoof contacting plate comprising:
a first branch and a second branch connected
by a toe portion, the first branch and second branch
each comprising a side portion adjacent the toe
portion, and a quarter portion adjacent the side
portion;
a top surface in contact with the hoof;
a bottom surface comprising an integrally
formed raised portion; and
a plurality of nail holes-extending from the
top surface of the hoof contacting plate to the
bottom surface of the hoof contacting plate;
a U-shaped ground contacting plate comprising:
a first branch and a second branch connected
by a toe portion, the first branch and second branch
each comprising a side portion adjacent the toe
portion, and a quarter portion adjacent the side
portion;
a top surface comprising a recessed portion
for receiving the raised portion of the hoof
contacting plate,
a bottom surface in contact with a ground
surface, and a plurality of holes aligned with the nail
holes in the hoof contacting plate, extending from
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Application 13/092,211
the top surface of the ground contacting plate to the
bottom surface of the ground contacting plate; and
a pad of resilient material substantially shaped the same as
the ground contacting plate, comprising a first surface bonded to
the bottom surface of the hoof contacting plate with a rubber­
tearing bond and a second surface bonded to the top surface of
the ground contacting plate with a rubber-tearing bond, such that
the pad will fail before failure of the bond between the pad and
either of the hoof contacting plate or the ground contacting plate,
and a plurality of holes aligned with the plurality of holes of the
hoof contacting plate and the plurality of holes of the ground
contacting plate,
the plurality of holes in the ground contacting plate and the
holes in the pad being sized such that the heads of the nails used
for attaching the shoe to a hoof may pass unobstructed through
the ground contacting plate and the pad, and the plurality of holes
in the hoof contacting plate being sized such that the heads of the
nails contact the bottom surface of the hoof contacting plate.
Br. 10-11.
REJECTIONS
1. The Examiner rejects claims 1—4 and 7—10 under 35 U.S.C. § 103(a) as
unpatentable over Coleman3 in view of Hitch,4 McKinlay,5 and
Strickland.6
2. The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as unpatentable
over Coleman in view of Hitch, McKinlay, Strickland, and Moller.7
3 Coleman, US 28,656, iss. June 12, 1860.
4 Hitch, US 458,051, iss. Aug. 18, 1891.
5 McKinlay, US 2007/0068682 Al, pub. Mar. 29, 2007.
6 Strickland, US 2011/0079346 Al, pub. Apr. 7, 2011.
7 Moller, et al., WO 99/65298, pub. Dec. 23, 1999.
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Application 13/092,211
3. The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as unpatentable
over Coleman in view of Hitch, McKinlay, Strickland, and Di Giulio.8
4. The Examiner rejects claim 14 under 35 U.S.C. § 103(a) as unpatentable
over Coleman in view of Hitch, McKinlay, Strickland, Moeller, and Di
Giulio.
DISCUSSION
Rejection 1
With respect to the rejection of claims 1—4 and 7—10, Appellant
addresses the claims as a single group. See Br. 5—7. We select independent
claim 1 as representative of this group and claims 2-4 and 7—10 stand or fall
with claim 1.
With respect to claim 1, the Examiner finds that Coleman discloses a
horseshoe as claimed except that:
Coleman is silent about the bottom surface comprising an
integrally formed raised portion; the top surface comprising a
recessed portion for receiving the raised portion of the hoof
contacting plate shoe; the first surface bonded to the bottom
surface of the hoof contacting plate with a rubber-tearing bond
and a second surface bonded to the top surface of the ground
contacting plate with a rubber-tearing bond, such that the pad
will fail before failure of the bond between the pad and either of
the hoof contacting plate or the ground contacting plate.
Final Act. 3—4. The Examiner relies on Hitch as disclosing a U-shaped hoof
contacting plate with a bottom surface that has an integrally formed raised
portion and ground contacting plate with a top surface having a recessed
portion for receiving the raised portion of the hoof contacting plate. Id. at 4.
The Examiner relies on McKinlay as teaching that it was known “to
Di Giulio, US 5,348,098, iss. Sept. 20, 1994.
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Application 13/092,211
chemically bond layers making up the horseshoe ... with ... an adhesive.”
Id. The Examiner further relies on Strickland as teaching a rubber-tearing
bond used in the layers of a shoe to hold the layers together, and the
Examiner concludes that it would have been obvious to use a rubber-tearing
bonding to provide a stronger bond between shoe parts. Id. at 5.
We agree with and adopt the Examiner findings and conclusions with
respect to the rejection of claim 1. See Final Act. 3—5, 13; Ans. 2—6. As
discussed below, we are not persuaded of reversible error by Appellant’s
arguments.
As an initial matter, Appellant argues that Coleman, Hitch, and
McKinlay do not individually teach or suggest a rubber tearing bond. Br. 5.
However, we are not persuaded by Appellant’s argument against these
references individually because the rejection clearly relies on Strickland as
teaching a rubber tearing bond. See Final Act. 3^4.
Additionally with respect to Coleman, Appellant argues that Coleman
teaches a lower plate with recesses and not holes as claimed. Br. 5.
However, we agree with the Examiner that Coleman discloses a plurality of
nail holes at least when the lower plate is nailed to the hoof through the
upper plate. Coleman discloses that lower plate B has recesses or slots
arranged with respect to nail holes in the upper plate A “so that the entire
shoe can be secured rigidly to the hoof by simply driving the nails and
without separating the plates.” Coleman 2. Thus, even if Coleman’s
recesses or slots are not holes when the device is made, they become holes
when the nails are driven through the recesses to secure the device to the
hoof.
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Application 13/092,211
Appellant also argues with respect to Coleman that “the recesses in
Coleman effectively create a scalloped edge to the lower plate with small
tabs between the recesses which could easily break under use — as opposed
to the ground contacting plate of the invention where the edges are
complete.” Br. 5. However, we agree with the Examiner that this argument
is not persuasive because it is not commensurate with the scope of the claim,
which does not recite that the ground contacting must have edges that are
complete. See Ans. 3.
Next, Appellant argues that Strickland is non-analogous art. In
support, Appellant asserts:
Strickland’s bond is used in another field (running shoes for
humans) in a different way (along a perimeter of a sneaker sole)
to bond different things (attaching various rubber or artificial
rubber components of a sole for a sneaker to the leather or canvas
uppers) for a different purpose (to form a flexible sneaker using
nontoxic water-based adhesive). Strickland applies adhesive on
the outer edges of the sneaker to create a rubber tearing bond
along the edges of the sole, toe cap, heel label, and foxing strip
of the resilient sole and upper part of a sneaker. These are not
parts of a horseshoe, nor are they analogous to parts of a two-part
metal horseshoe with a resilient pad fastened by a rubber-tearing
bond between the two parts.
The art to which the present invention pertains is shoes for
horses, which are traditionally created by farriers or blacksmiths
and nailed to the horses' feet. Therefore, the proper measure of
what a person skilled in the art would find obvious should be
applied with respect to someone like a farrier or blacksmith, who
prepares metal shoes for animals. A person having skill in the
art of horseshoes, looking for solutions to the problems of the
prior art in multi-part horseshoes, would not be looking to the art
of binding the various components of sneakers to be worn by
human beings. Therefore, Strickland cannot be combined with
Coleman, Hitch and McKinlay.
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Application 13/092,211
Br. 6-7.
Our reviewing court has set forth a two-prong test for determining
whether a prior art reference is analogous: (1) whether the reference is from
the same field of endeavor as the claimed invention, and (2) if the reference
is not within the same field of endeavor, whether the reference is reasonably
pertinent to the particular problem with which the inventor is involved. In re
Klein, 647 F.3d 1343 (Fed. Cir. 2011).
We find that Strickland is reasonably pertinent to the problem faced
by Appellant, and thus, we are not persuaded by Appellant’s argument
quoted above. According to the Specification, the invention seeks to solve
problems related to loss of a horse shoe or effects that cause a traditional
cushioned horse shoe to “fall apart.” See Spec. 1,11. 12—26. And more
particularly, in order to create a shoe that is less likely to fall apart, the
invention seeks to provide a rubber pad that is trapped between integrally
formed raised portions and recessed portions of a shoe and adhered using
rubber-tearing bonds such that the rubber pad fails before the bonds between
the shoe parts fail. See id. at 2,1. 29-3,1. 3. Although we agree that
Strickland is not in the same field of endeavor as the claimed invention, we
find that Strickland is reasonably pertinent to the problems outlined above
because Strickland uses rubber tearing bonds to ensure that the materials
used in a shoe fail before the bonds holding the materials of the shoe
together, i.e. ensuring that a shoe does not “fall apart” because of failure of
those bonds. Because Strickland is reasonably pertinent to the problems
faced by Appellant, we are not persuaded by Appellant’s general allegation
that one of ordinary skill in the art would not look to Strickland for solutions
to problems related to multi-part horseshoes.
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Finally, Appellant asserts that Coleman’s device represents the
drawbacks in prior art horseshoe design that the present invention seeks to
overcome. Br. 7. However, Appellant does not indicate how such assertion
is related to any claim limitations that would show that the rejection before
us is in error.
For the foregoing reasons, we are not persuaded of reversible error
with respect to the rejection of claim 1. Accordingly, we sustain the
rejection of claim 1. We also sustain the rejection of claims 2-4 and 7—10,
which fall with claim 1.
Rejections 2—4
Regarding the rejections of claims 5, 6, and 14, Appellant relies on the
same arguments as discussed above and only adds that the additional
references relied upon do not cure the deficiency in the rejection of
independent claim 1. See Br. 8. Having found no deficiency in the rejection
of claim 1, we are not persuaded of error in the rejections here.
Accordingly, we sustain the rejections of claims 5, 6, and 14.
CONCLUSION
We AFFIRM the rejections of claims 1—10 and 14 for the reasons
provided.
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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