Ex Parte Khantzis

Board of Patent Appeals and Interferences

Mar 19, 2010

10800233 (B.P.A.I. Mar. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARLOS A. KHANTZIS
____________

Appeal 2009-003421
Application 10/800,233
Technology Center 3700
____________

Decided: March 19, 2010
____________

Before MICHAEL W. O’NEILL, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Carlos A. Khantzis (Appellant) seeks our review under 35 U.S.C.
§ 134 (2006) of the final rejection of claims 1-14 and 32-45. Appellant
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canceled claims 15-31 and 46-62. We have jurisdiction under 35 U.S.C.
§ 6(b) (2006).
The Invention
The claimed invention is to a toe support system that permits a user to
rest his or her toes on a deformable material.
Claim 41, reproduced below, is illustrative of the subject matter on
appeal.
41. A foot wearing item to be worn on a foot, the foot
wearing item including an insole against which the foot
rests and having a front area over which the toes of the
foot rest when the foot wearing item is worn, the
improvement comprising:
a. a flexible and deformable material formed within
the front area of the foot wearing item and aligned
with the insole so that the flexible material is
located beneath the toes of the foot when the foot
wearing item is worn so that all five toes rest on
the flexible material;
b. whereby the flexible material permits the toes to
curl downward when a wearer of the wearing
apparel is walking.

The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:
Krinsky US 4,211,236 Jul. 8, 1980
Kawashima US 4,557,060 Dec. 10, 1985
Ito US 4,768,295 Sep. 6, 1988
McClelland US 5,775,005 Jul. 7, 1998

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The Rejections
The following Examiner’s rejections are before us for review:
(1) Claims 4, 6, 7, 10, 11, 12, 35, 37, 38, 41, 42, and 43 are rejected
under 35 U.S.C. § 102(b) as being anticipated by Kawashima. See Ans. 3.
(2) Claims 10, 12, 13, 41, 43, and 44 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Krinsky. See Ans. 3-4.
(3) Claims 11 and 42 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Krinsky. See Ans. 4-5.
(4) Claims 14 and 45 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Krinsky in view of Official Notice. See Ans. 5.
(5) Claims 1-6, 8-14, 32-37, and 39-45 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Krinsky in view of Official Notice. See
Ans. 5-7.
(6) Claims 1 and 32 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kawashima in view of Ito. See Ans. 7.
(7) Claims 5 and 36 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kawashima. See Ans. 7.
(8) “Claims 2, 33 and 8, 13, 39, 44 are rejected under 35 U.S.C.
103(a) as being unpatentable over the references, as applied to claims 1, 32
and 4, 10, 35, 41, respectively above, and further in view of US 5775005
(McClelland).” Ans. 8.
(9) “Claims 3, 34 and 9, 14, 40, 45 are rejected under 35 U.S.C.
103(a) as being unpatentable over the references, as applied to claims 1, 32
and 4, 10, 35, 41, respectively above, and further in view of Official Notice.”
Ans. 8.

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SUMMARY OF DECISION
We AFFIRM.

OPINION
Rejection (1) – Anticipation based on Kawashima
Since Appellant does not separately argue claims 4, 6, 7, 10, 11, 12,
35, 37, 38, 41, 42, and 43 for this ground of rejection as set forth by the
Examiner, claim 41 is selected as the representative claim. 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
Based on Appellant’s contentions, no error appears present in the
Examiner’s finding that claim 41 lacks novelty. Arguing that the Examiner
erred because the figures of Appellant and Kawashima are different is
unconvincing because what matters is what the claims recite vis-à-vis what
Kawashima describes. As stated by our reviewing court in In re Hiniker
Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game is the
claim.” If Kawashima describes the claimed subject matter, then
Kawashima anticipates the claim. Arguing that anticipation is a three prong
test with an identity component is unconvincing to show error on the
Examiner’s part. Anticipation is not an ipsissimis verbis test. In re Bond
910 F.2d 831, 832 (Fed. Cir. 1990). A single prior art reference that
discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Minn. Mining & Mfg. Co. v. Johnson
& Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed. Cir. 1992). Here,
the Examiner made several findings regarding Kawashima’s disclosure, and
ultimately found that Kawashima anticipates claim 41. Final Rej. 2; Ans. 3,
9-10. Therefore, it is incumbent upon Appellant to particularly point out
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what claim limitations are missing within Kawashima’s description. See Ex
parte Frye,1 2009-006013 (BPAI February 26, 2010) (precedential).
Appellant argues since Kawashima has two regions of cushioning
Kawashima does not anticipate one region of cushioning. This argument is
unconvincing to show error because the transitional phrase “improvement
comprising” recited in claim 41 is open-ended and, as such, does not exclude
additional, unrecited elements such as more than one cushion, projections,
notches, and the like. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495,
501 (Fed. Cir. 1997) (“Comprising” is a term of art used in claim language
which means that the named elements are essential, but other elements may
be added and still form a construct within the scope of the claim).
Arguing there is a difference in purpose between Appellant’s
cushioning vis-à-vis Kawashima’s cushioning is unconvincing to show error
in the anticipation rejection as well. What matters is not the purpose of the
invention, but the objective reach of the claim. Cf. In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new
intended use for an old product does not make a claim to that old product
patentable.”)
Likewise, focusing on Kawashima’s claims to demonstrate that
Kawashima does not anticipate the claimed invention is unconvincing,
because a patent is valuable for all it teaches to one of ordinary skill in the
art. In re Preda, 401 F.2d 825, 826 (CCPA 1968). It is well-settled that the
use of patents as prior art references is not limited to what the patentees
claim as their own inventions. They are relevant for all they contain. In re
Heck, 699 F.2d 1331, 1332-33 (Fed. Cir. 1983) (quoting In re Lemelson, 397

1 http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd09006013.pdf
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F.2d 1006, 1009 (CCPA 1968)). A patent’s claims determine what infringes
the patent, not what the patent discloses. In re Benno, 768 F.2d 1340, 1346
(Fed. Cir. 1985).
Moreover, Kawashima’s intentions for its cushioning or its manner of
retaining the toe cushion are not germane as to whether Kawashima’s
description anticipates claim 41, because it is not necessary that the
reference teach what the subject application teaches, but only that the claim
read on something disclosed in the reference, i.e., that all of the limitations
in the claim be found in or fully met by the reference. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983). In this case, the
Examiner found that claim 41 reads on certain aspects of Kawashima’s
description.
Regarding the aspect of the figures showing a deformable gel vis-à-vis
claim 41, claim 41 is not limited to a gel, it is limited to a flexible and
deformable material which the Examiner finds to be anticipated by
Kawashima. As such, the argument is not commensurate with the scope of
claim 41. On page 1 of the Reply Brief, Appellant asserts that the
deformable padding of claim 4 is “comparable” to the deformable gel of
claim 1. Even if this were to be construed as a separate argument for claim
4, the argument also is not commensurate with the scope of the rejected
claim – claim 4 is not limited to a deformable gel and claim 1 is not subject
to this first rejection.
Kawashima’s ability to be used inverted as shown in figure 5 does not
prohibit Kawashima from anticipating claim 41. Figure 4 of Kawashima
depicts the cushion 4 located in a region for the toes to rest as set forth in
claim 41.
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Further, claim 41 is not limited to having a deformable padding the
entire depth of the insole. Again, the claim recites a flexible and deformable
material formed within the front area of the foot wearing item, and the
Examiner found that Kawashima anticipates such a feature. As such,
Appellant’s arguments directed to such matters regarding depth are not
commensurate with the scope of claim 41.2
Moreover, how an apparatus invention is used is not germane to
whether it is anticipated by the prior art for the subject matter of an
apparatus claim must be distinguished from the prior art in terms of structure
in order to avoid anticipation. Ex Parte Masham, 2 USPQ2d 1647, 1648
(BPAI 1987).
For the foregoing reasons, the Examiner did not err in rejecting claim
41 as anticipated by Kawashima. Claims 4, 6, 7, 10, 11, 12, 35, 37, 38, 42,
and 43 fall with claim 41. 37 C.F.R. § 41.37(c)(1)(vii).
Rejection (2) – Anticipation based on Krinsky
Since Appellant does not separately argue claims 10, 12, 13, 41, 43,
and 44 for this ground of rejection as set forth by the Examiner, claim 41 is
selected as the representative claim. 37 C.F.R. § 41.37(c)(1)(vii).
Many of Appellant’s arguments are essentially repetitive of what
Appellant argued against the anticipation rejection based on Kawashima. As
such, the reasons given supra why these arguments fail to note an error on
the Examiner’s part are applicable and are incorporated herein. What
Krinsky claims and depicts in its figures; comparison of Krinsky’s figures to

2 Appellant misquotes the Examiner’s Answer and suggests that the
Examiner ignored the recitation in claim 4 of padding location language
similar to that of claim 41. Reply Br. 2. The Examiner correctly noted that
the claim does not limit the location to only under the toes. Ans. 9.
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Appellant’s figures; stating that the law requires identity to establish
anticipation; alleged physical differences between Appellant’s disclosed
embodiments and Krinsky’s figures; what Krinsky teaches and that being
different from what Appellant’s disclosure teaches; any difference in
Krinsky’s intentions vis-à-vis Appellant’s intentions; Appellant’s limited
applicability to the toe region compared to Krinsky when the Appellant’s
claim contains an open-ended transition phrase; Appellant’s claimed
invention’s capability compared to Krinsky’s capability when the claimed
invention is directed to an apparatus; and Krinsky’s foot wearing item
having more features than the claimed invention when the claimed invention
contains an open-ended transitional phrase, are unconvincing to demonstrate
the Examiner erred in rejecting claim 41 as anticipated by Krinsky for the
same reasoning as given supra regarding no error on the part of the
Examiner for rejecting claim 41 as anticipated by Kawashima.
For the foregoing reasons, the Examiner did not err in rejecting claim
41 as anticipated by Krinsky. Claims 10, 12, 13, 43, and 44 fall with claim
41. 37 C.F.R. § 41.37(c)(1)(vii).
Rejection (3) – Obviousness based on Krinsky
In setting forth the rejection of claims 11 and 42, the Examiner
concludes that to have one of the listed materials as the viscous material
described in Krinsky would be obvious to a person of ordinary skill in the art
“since it has been held to be within the general skill of a worker in the art to
select a known material on the basis of its suitability for the intended use as
a matter of obvious design choice.” Ans. 4-5.
The Examiner’s belief that In re Leshin, 277 F.2d. 197 (CCPA 1960)
stands for the proposition stated in the Answer turns the holding of Leshin
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on its head. The court in Leshin concluded that the mere selection of known
plastics to make a known metal container of plastic based on the suitability
of the plastic for the intended use was obvious to a person having ordinary
skill in the art because the Anderson reference taught a similar container
made from plastic. Id. at 199. In other words, there was prior art that
evidenced using a suitable plastic for the intended use of the claimed
invention.
Taking the proposition in the Answer to its logical conclusion, when
the only difference between the scope and content of the prior art and the
claimed invention is the material used, the claimed invention is per se
obvious. However, as stated in In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir.
1995):
The use of per se rules, while undoubtedly
less laborious than a searching comparison of the
claimed invention--including all its limitations--
with the teachings of the prior art, flouts section
103 and the fundamental case law applying it. Per
se rules that eliminate the need for fact-specific
analysis of claims and prior art may be
administratively convenient for PTO Examiners
and the Board. Indeed, they have been sanctioned
by the Board as well. But reliance on per se rules
of obviousness is legally incorrect and must cease.
Any such administrative convenience is simply
inconsistent with section 103, which, according to
Graham and its progeny, entitles an applicant to
issuance of an otherwise proper patent unless the
PTO establishes that the invention as claimed in
the application is obvious over cited prior art,
based on the specific comparison of that prior art
with claim limitations. We once again hold today
that our precedents do not establish any rules of
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obviousness, just as those precedents themselves
expressly declined to create such rules.
As the court further noted, “[a]ny conflicts as may be perceived to
exist derive from an impermissible effort to extract per se rules from
decisions that disavow precisely such extraction.” Id. In other words, cases
like Leshin are limited to the specific facts of that case and are not to be
extrapolated to general rules stating that claimed features are automatically
obvious to persons of ordinary skill in the art without some foundation of
evidence and/or analysis to support such a conclusion.
For the foregoing reasons, the Examiner erred in rejecting claims 11
and 42 as being obvious.
Rejection (4) – Obviousness based on Krinsky in view of Official Notice
Since Appellant does not separately argue claims 14 and 45 for this
ground of rejection as set forth by the Examiner, claim 45 is selected as the
representative claim. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 45 further limits claim 41 to having the flexible and deformable
material treated with a fungicide. The Examiner took official notice that use
of fungicide is old and well known. Appellant does not challenge the notice.
Therefore, the Examiner’s official notice is taken as an admission on
Appellant’s part. Appellant, instead, argues essentially what Appellant
argued regarding the anticipation rejection based on Krinsky. Inasmuch as
those arguments do not show error on the part of the Examiner they further
do not show error in the Examiner’s conclusion of obviousness with respect
to claim 45. As such, Appellant has failed to demonstrate either by
argument and/or evidence that the Examiner made an error in either (1) an
underlying finding of fact upon which the final conclusion of obviousness
was based, or (2) the reasoning used to reach the legal conclusion of
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obviousness. Moreover, Appellant has not submitted evidence of secondary
considerations of non-obviousness for consideration to weigh against the
Examiner’s legal conclusion of obviousness.
For the foregoing reasons, the Examiner did not err in rejecting claims
14 and 45 as being obvious.
Rejection (5) – Obviousness based on Krinsky in view of Official Notice
The Examiner’s lack of discussion of Krinsky in light of the case law
does not show error on the Examiner’s part and is in fact innocuous.
In setting forth a prima facie case of obviousness, the Examiner needs
to determine the scope and content of the prior art, acknowledge any
differences, if needed, resolve the level of ordinary skill, and, if presented,
take into account any secondary considerations. With respect to claims 10,
12-14, 41, and 43-45, it appears the Examiner has followed the proper
procedures for making an obviousness rejection so as to put Appellant on
notice of the reasons why the Appellant is not entitled to a patent on the
claim scope that Appellant seeks.
However, concerning claims 1-6, 8, 9, 11, 32-37, 39, 40, and 42, the
Examiner again relied on an improper understanding of Leshin, stating
“since it has been held to be within the general skill of a worker in the art to
select a known material on the basis of its suitability for the intended use as
a matter of obvious design choice” as support for the conclusion that it
would have been obvious to use a gel or gel-like material as set forth in
claims 1, 4, 11, 32, 35, and 42 as the viscous material within Krinsky. Per
se rules directed to the alleged obviousness of a claimed invention are
looked upon with disfavor. See In re Ochiai, 71 F.3d at 1572 (reliance on
per se rules of obviousness that eliminate the need for fact-specific analysis
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of claims and prior art is legally incorrect). As such, the Examiner erred in
rejecting claims 1, 4, 11, 32, 35, and 42 as obvious. Claims 2, 3, 5, 6, 8, 9,
33, 34, 36, 37, 39, and 40 are likewise erroneously rejected based on the
Examiner’s reliance on a per se rule of obviousness. See In re Fine, 837
F.2d 1071, 1076 (Fed. Cir. 1988) (If an independent claim is nonobvious
under 35 U.S.C. § 103, then any claim dependent therefrom is nonobvious).
Accordingly, the Examiner erred in rejecting these claims as obvious within
this ground of rejection.
Regarding claims 10, 12-14, 41, and 43-45, no per se rule of
obviousness was applied by the Examiner. As such, it is now incumbent
upon Appellant to either submit argument and/or evidence to show that the
Examiner made an error in either (1) an underlying finding of fact upon
which the final conclusion of obviousness was based, or (2) the reasoning
used to reach the conclusion of obviousness; or submit evidence of
secondary considerations of non-obviousness. However, Appellant does not
challenge the Examiner’s particular findings, or cogently explain why they
are insufficient to establish that the combined teachings of the references
render obvious the claimed subject matter. Instead, Appellant merely points
out what is disclosed as the Appellant’s invention and alleges that the
references do not describe exactly these features. In view of the particular
findings of the Examiner for these claims, Appellant’s mere allegations are
not persuasive. See Ex parte Belinne,3 2009-004693, slip op. at 7, 8 (BPAI
Aug. 10, 2009) (designated as an “Informative Opinion’), (citing 37 C.F.R. §
41.37 (c)(l)(vii) (2007)). Moreover, many of the arguments have been
addressed substantively supra concerning Krinsky anticipating claim 41.

3 http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf
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Since Appellant does not separately argue claims for this ground of
rejection as set forth by the Examiner, claim 41 is selected as the
representative claim for claims 10, 12-14, and 43-45 and since no error has
been shown by Appellant regarding claim 41, these claims fall as well. 37
C.F.R. § 41.37(c)(1)(vii).
In view of the foregoing, the Examiner did not err in rejecting claims
10, 12-14, and 43-45 as obvious under this ground of rejection.
Rejection (6) – Obviousness based on Kawashima in view of Ito
Since Appellant does not separately argue claims 1 and 32 for this
ground of rejection as set forth by the Examiner, claim 32 is selected as the
representative claim. 37 C.F.R. § 41.37(c)(1)(vii).
Notwithstanding Appellant’s listing of statements attributed to various
courts, a combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
KSR Int’l., 550 U.S. at 416. A prima facie conclusion of obviousness may
be supported by a showing that the claims are directed to a process, machine,
manufacture, or composition of matter already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, and such modification yields a predictable result. See id. (citing
United States v. Adams, 383 U.S. 39, 50-51 (1966)). The Court further
stated that, “if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.” KSR Int’l, 550 U.S. at 417.
The Examiner found Kawashima discloses a footwear item as set forth
in claim 32 sans the cushioning material constituting a gel. The Examiner
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found Ito teaches the cushioning material constituting a gel. The Examiner
further found Ito teaches that using this gel facilitates absorbing shock
instantly. Ans. 7. As such, modifying the cushioning material in
Kawashima to be made of the gel material taught in Ito appears to be
nothing more than applying a technique used to improve the usability of one
device and improving a similar device in the same way, which involves
nothing more than ordinary creativity well within the technical grasp of a
person of ordinary skill in the art. See KSR Int’l, 550 U.S. at 417.
Appellant’s arguments regarding why Ito is completely different from
the present invention appear to opine that Ito teaches away. These
arguments are not persuasive because in order to “teach away” a reference
must “criticize, discredit, or otherwise discourage the solution claimed….”
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Ito’s purpose of
providing both cushioning and lateral support for sport shoes does not show
that Ito teaches away because “familiar items may have obvious uses beyond
their primary purposes.” In re ICON Health & Fitness, Inc., 496 F.3d 1374,
1380 (Fed. Cir. 2007) (citations omitted).
Moreover, in making a determination with regard to obviousness, the
inquiry is not limited to looking only at the problem Appellant was trying to
solve. The question is not whether the combination was obvious to
Appellant but whether it was obvious to a person of ordinary skill in the art.
Thus, “[u]nder the correct analysis, any need or problem known in the field
of endeavor at the time of invention and addressed by the patent can provide
a reason for combining the elements in the manner claimed.” KSR Int’l.,
550 U.S. at 420. Ito describing more structure than set forth in the claim is
unconvincing to show error because the transitional phrase of the claim is
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open-ended and does not exclude additional, unrecited elements such as
more than one cushion, channels, grooves, chambers, and the like. See
Genentech, Inc., 112 F.3d at 501.
With respect to Appellant’s contentions against Kawashima, these
contentions are similar to the contentions Appellant raised against
Kawashima anticipating the claimed subject matter, i.e., what Kawashima
claims and depicts in its figures; comparison of Kawashima’s figures to
Appellant’s figures; requiring identity to establish unpatentability; alleged
physical differences between Appellant’s disclosed invention and
Kawashima’s figures; what Kawashima teaches and that being different to
what Appellant’s disclosed invention teaches; differences in Kawashima’s
intentions vis-à-vis Appellant’s intentions; Appellant’s limited applicability
to the toe region compared to Kawashima when the Appellant’s claim
contains an open-ended transition phrase; Appellant’s claimed invention
capability compared to Kawashima’s capability when the claimed invention
is directed to an apparatus; and Kawashima’s foot wearing item having more
features than the claimed invention when the claimed invention contains an
open-ended transitional phrase. These contentions are unconvincing to
demonstrate that the Examiner erred in rejecting claim 32 as obvious over
Kawashima and Ito for the same reasoning given supra regarding no error
on the part of the Examiner for rejecting claims as anticipated by
Kawashima.
For the foregoing reasons, the Examiner did not err in rejecting claim
32 as obvious given the combined teachings of Kawashima and Ito. Claim 1
falls with claim 32. 37 C.F.R. § 41.37(c)(1)(vii).
Rejection (7) – Obviousness based on Kawashima
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Since Appellant does not separately argue claims 5 and 36 for this
ground of rejection as set forth by the Examiner, claim 36 is selected as the
representative claim. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 36 further requires the deformable padding to be a thickness of
at least 6 mm. The Examiner concluded that having a thickness of
Kawashima’s padding of at least 6 mm would be an obvious design choice
dependent upon certain particular factors. Appellant does not specifically
challenge that the Examiner’s conclusion of having Kawashima’s padding at
least 6 mm thick would be an obvious design choice dependent upon the
factors stated by the Examiner. Instead, Appellant argues that the thickness
of Kawashima’s cushion padding is less than 6 mm because Kawashima’s
figures 4 and 5 appear to depict the padding as very thin. However, patent
drawings not designated as being drawn to scale cannot be relied upon to
define precise proportions of elements if the specification is completely
silent on the issue. Hockerson-Halberstadt, Inc. v. Avia Group Int'l, 222
F.3d 951, 956 (Fed. Cir. 2000). As such, Appellant’s reliance on
Kawashima is unconvincing to highlight an error on the Examiner’s part.
Addressing Appellant’s contention of the impossibility of a wearer’s foot
fitting inside Kawashima’s shoe having a padding at least 6 mm thick, “a
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR Int’l, 550 U.S. at 421. Accordingly, a person of ordinary
skill could readily modify the shoe in order to accommodate the thickness of
the padding being at least 6 mm thick.
For the foregoing reasons, the Examiner did not err in rejecting claim
36 as obvious given Kawashima. Claim 5 falls with claim 36. 37 C.F.R.
§ 41.37(c)(1)(vii).
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Rejection (8) – Obviousness based on Kawashima and McClelland
Appellant appears to identify “Rejection (8)” supra as set forth in the
Answer on page 8 as the Examiner rejecting these claims as obvious over
Kawashima in view of McClelland. Since it is Appellant that seeks review
of an adverse decision of the Examiner, the rejection set forth by the
Examiner will be reviewed as to whether the Examiner erred in rejecting
these claims as obvious based on the combined teachings of Kawashima (as
applied to claims 4, 10, 35 and 41) and McClelland and the combined
teachings of Kawashima and Ito (as applied to claims 1 and 32) and
McClelland. Since Appellant does not separately argue claims 2, 8, 13, 33,
39, and 44 for this ground of rejection as set forth by the Examiner, claim 44
is selected as the representative claim. 37 C.F.R. § 41.37(c)(1)(vii).
Again, notwithstanding Appellant’s listing of statements attributed to
various courts, the combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results. KSR Int’l., 550 U.S. at 416. A prima facie conclusion of
obviousness may be supported by a showing that the claims are directed to
an apparatus already known in the prior art that is altered by the mere
substitution of one element for another known in the field, and such
modification yields a predictable result. See id. (citing United States v.
Adams, 383 U.S. 39, 50-51 (1966)). The Court further stated that, “if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” KSR Int’l, 550 U.S. at 417.
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Claim 44 requires the flexible and deformable material to be covered
with a covering material. The Examiner found McClelland teaches
providing a covering material for covering an insole. The Examiner
reasoned that a person having ordinary skill in the art would combine the
covering material with Kawashima’s cushion in order to provide additional
comfort to the wearer. The Examiner’s reasoning has a rational
underpinning because a person having ordinary skill in the art could readily
improve Kawashima’s cushioning with a covering since such a technique
has not been shown to be beyond the skill of an artisan.
Appellant’s contentions comparing McClelland’s disclosure to
Appellant’s disclosure and differentiating McClelland’s and Appellant’s
inventions by focusing on the fact that Appellant’s invention has less
structure and different purposes for the cushioning, are unconvincing to
highlight an error on the Examiner’s part in rejecting claim 44 for the
following reasons.
McClelland describing more structure than set forth in the claim is
unconvincing to show error because the transitional phrase of the claim is
open-ended and does not exclude additional, unrecited elements such as
more than one cushion, grooves, cheats, and the like. See Genentech, Inc.,
112 F.3d at 501.
Appellant’s argument that McClelland is completely different from
the present invention appears to opine that McClelland teaches away. This
argument is not persuasive because in order to “teach away” a reference
must “criticize, discredit, or otherwise discourage the solution claimed….”
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). McClelland providing
cushioning with the ability to view the cushion to observe any defect does
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not show Ito teaches away because “familiar items may have obvious uses
beyond their primary purposes.” In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1380 (Fed. Cir. 2007) (citations omitted). Moreover, in making a
determination with regard to obviousness, the inquiry is not limited to
looking only at the problem Appellant was trying to solve. The question is
not whether the combination was obvious to Appellant but whether it was
obvious to a person of ordinary skill in the art. Thus, “[u]nder the correct
analysis, any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.” KSR Int’l., 550 U.S. at 420.
Appellant’s argument that McClelland’s scope and content lies
outside that of the present invention could be considered an argument that
McClelland is non-analogous art. “A reference is reasonably pertinent if,
even though it may be in a different field from that of the inventor’s
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s attention in
considering his problem.” In re ICON Health & Fitness, Inc., 496 F.3d at
1379-80. McClelland is directed to footwear soles. It seems that a reference
directed to footwear soles would logically commend itself to an inventor’s
attention when considering the problem of improving a foot wearing item to
be worn on a foot as has been set forth in dependent claim 44, which
incorporates the limitations of independent claim 41. Therefore, McClelland
lies within the scope and content of art to be considered and is not non-
analogous.
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For the foregoing reasons, the Examiner did not err in rejecting claim
44 as obvious over Kawashima in view of McClelland. Claims 2, 8, 13, 33,
and 39 fall with claim 44. 37 C.F.R. § 41.37(c)(1)(vii).
Rejection (9) – Obviousness based on the prior art and official notice
An Appellant requests the Board to review the Examiner’s adverse
decisions. See 35 U.S.C. § 134(a). The Appellant has not separately argued
claims 3, 9, 14, 34, 40, and 45 for the ground of rejection set forth in the
Answer on page 8. As such, claim 45 is selected as the representative claim.
Claim 45 is dependent upon claim 41. As stated supra, the Examiner
did not error in rejecting claim 41 as anticipated by either Kawashima or
Krinsky. Claim 45 requires the flexible and deformable material to be
treated with a fungicide. The Examiner took official notice that use of
fungicide with shoe pads, cushions, and insoles is old and well known. Ans.
8. Appellant does not challenge the notice. Therefore, the Examiner’s
official notice is taken as an admission on Appellant’s part. Appellant,
instead, argues essentially what Appellant argued regarding the anticipation
and obviousness rejections based on Kawashima and Krinsky. Inasmuch as
those arguments do not show error on the part of the Examiner they further
do not show error in the Examiner’s conclusion of obviousness with respect
to claim 45.
Further, Appellant does not challenge the Examiner’s particular
findings, or cogently explain why they are insufficient to establish that the
combined teachings of the references render obvious the claimed subject
matter. Instead, Appellant merely points out what is disclosed as the
Appellant’s invention and alleges that the references do not describe exactly
these features. In view of the particular findings of the Examiner for these
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claims, Appellant’s mere allegations are not persuasive. As such, Appellant
has failed to demonstrate either by argument and/or evidence that the
Examiner made an error in either (1) an underlying finding of fact upon
which the final conclusion of obviousness was based, or (2) the reasoning
used to reach the legal conclusion of obviousness. Moreover, Appellant has
not submitted evidence of secondary considerations of non-obviousness for
consideration to weigh against the Examiner’s legal conclusion of
obviousness.

CONCLUSION
We have considered Appellant’s remaining arguments in the Appeal
Brief and Reply Brief, but do not find them persuasive to demonstrate error
in the Examiner’s conclusions of anticipation and obviousness other than
what is articulated above. Therefore, we conclude that, but for the Examiner
utilizing a per se rule of obviousness for particular claims designated supra,
the Examiner did not otherwise err in rejecting the claims for lack of novelty
and want of nonobviousness.

DECISION
The Examiner’s decision to reject claims 4, 6, 7, 10, 11, 12, 35, 37,
38, 41, 42, and 43 under 35 U.S.C. § 102(b) as being anticipated by
Kawashima is affirmed.
The Examiner’s decision to reject claims 10, 12, 13, 41, 43, and 44
under 35 U.S.C. § 102(b) as anticipated by Krinsky is affirmed.
The Examiner’s decision to reject claims 11 and 42 under 35 U.S.C. §
103(a) as being unpatentable over Krinsky is reversed.
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The Examiner’s decision to reject claims 14 and 45 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Krinsky in view of Official
Notice is affirmed.
The Examiner’s decision to reject claims 10, 12-14, 41, and 43-45
under 35 U.S.C. § 103(a) as being unpatentable over Krinsky in view of
Official Notice is affirmed; however, under the same ground of rejection as
set forth in the Answer on pages 5 through 7 the Examiner’s decision to
reject claims 1-6, 8, 9, 11, 32-37, 39, 40, and 42 is reversed.
The Examiner’s decision to reject claims 1 and 32 under 35 U.S.C. §
103(a) as being unpatentable over Kawashima in view of Ito is affirmed.
The Examiner’s decision to reject claims 5 and 36 under 35 U.S.C. §
103(a) as being unpatentable over Kawashima is affirmed.
The Examiner’s stated rejection of “[c]laims 2, 33 and 8, 13, 39, 44 …
under 35 U.S.C. 103(a) as being unpatentable over the references, as applied
to claims 1, 32 and 4, 10, 35, 41, respectively above, and further in view of
US 5775005 (McClelland),” (Ans. 8) as argued by Appellant is affirmed.
The Examiner’s stated rejection of “[c]laims 3, 34 and 9, 14, 40, 45 …
under 35 U.S.C. 103(a) as being unpatentable over the references, as applied
to claims 1, 32 and 4, 10, 35, 41, respectively above, and further in view of
Official Notice,” (Ans. 8) as argued by Appellant is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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