Ex Parte Krupenkin et alDownload PDFPatent Trial and Appeal BoardAug 21, 201814146181 (P.T.A.B. Aug. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/146,181 01/02/2014 Thomas Nikita Krupenkin 27981 7590 08/23/2018 WENDY W. KOBA POBOX556 SPRINGTOWN, PA 18081 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 ATTORNEY DOCKET NO. CONFIRMATION NO. Krupenkin 0107B 7840 EXAMINER MOHANDESI, JILA M ART UNIT PAPER NUMBER 3765 NOTIFICATION DATE DELIVERY MODE 08/23/2018 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): wendykoba@usa.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS NIK.IT A KRUPENKIN and JOSEPH ASHLEY TAYLOR Appeal2018-000652 Application 14/146, 181 Technology Center 3700 Before: CHARLES N. GREENHUT, FRANCES L. IPPOLITO, and NATHAN A. ENGELS, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 2, 4, and 5. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm, designating new grounds of rejection under 37 C.F.R. § 41.50(b). Appeal2018-000652 Application 14/146, 181 CLAIMED SUBJECT MATTER The claims are directed to an apparatus for regulating footwear temperature. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus for regulating footwear temperature, the apparatus formed within an insert for disposition in footwear and comprising a heat generator for converting human locomotion into thermal energy; and a heat storage and release module disposed adjacent to the heat generator and adapted to directly receive heat therefrom, the heat storage and release module including at least one phase change material exhibiting a predetermined phase transition temperature, the heat storage and release module for both storing generated heat produced by the heat generator, and releasing stored heat when an ambient temperature of the footwear falls below the predetermined phase transition temperature, so as to regulate the temperature of footwear. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Zellweger Bryant us 4,799,319 us 5,499,460 REJECTION Jan.24, 1989 Mar. 19, 1996 Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Zellweger and Bryant. OPINION The claimed invention of sole independent claim 1 includes a heat generator ( 12) and heat storage and release module ( 14) in a footwear insert. The claims are rejected on the combination of Zellweger and Bryant. 2 Appeal2018-000652 Application 14/146, 181 Appellants take issue with the Examiner's characterization of the insulative layer 22 of Zellweger as the recited "heat storage and release module." App. Br. 5. We agree with Appellants that an insulative layer, may, but does not necessarily, store and release significant amounts of heat. Reply. Br. 2-3, App'x. B. However, the Examiner is proposing to replace the insulative layer 22 of Zellweger with the insulative and heat storing layer of Bryant. See Bryant col. 2, 11. 22-24, 33-35, 44--45, 49-50. This proposed substitution would yield subject matter that falls within the scope of claim 1. 1 Thus, the Examiner's overreaching inclusion, of Zellweger' s layer 22 as within the recited "heat storage and release module" is not ultimately fatal to a rejection predicated on the combination of Zellweger and Bryant. There is no dispute that Zellweger's layer 22 is an insulator. It would involve only simple substitution to replace Zellweger's insulative layer 22 with Bryant's insulator. "[A] person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR Int 'l. v. Teleflex, 550 U.S. 398, 421 (2007). To demonstrate obviousness there need not be a specific reason to include a particular property of an element that it would have been obvious to include in a combination. Nevertheless, Bryant, by expressly touting the benefits of the thermal storage properties (Bryant col. 5, 11. 46- 55), provides an express motivation to improve upon the insulative layer of Zellweger: maintaining the temperature of the foot longer when exposed to 1 Appellants also argue that Zellweger is incorporated into the shoe itself as opposed to an insert. App. Br. 5. However, Zellweger expressly states that Zellweger's device could be constructed as separate insole. See col. 2, 11. 57-59. 3 Appeal2018-000652 Application 14/146, 181 changes in ambient temperatures. Furthermore, Bryant also provides an express suggestion to couple Bryant's insole with heat generating sources. Bryant col. 5, 11. 56-65. As Zellweger discloses such a source of heat appropriate for use with insoles (Zellweger col. 3, 11. 36-47), Bryant's express suggestion in this regard further evinces the obviousness of the proposed Zell weger-Bryant combination. For these reasons, we sustain the Examiner's rejection predicated on the Zellweger-Bryant combination. As we have found additional facts, modified and supplemented the Examiner's analysis, we designate our opinion as including new grounds of rejection under 37 C.F.R. § 4I.50(b) so as to afford Appellants the procedural options associated therewith. For dependent claims 2, 4, and 5, we note that Appellants rely on the same arguments discussed above for claim 1. DECISION The Examiner's rejection is affirmed. We designate this affirmance as including new grounds of rejection under 37 C.F.R. § 4I.50(b). This decision contains a new ground of rejection pursuant to 37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: 4 Appeal2018-000652 Application 14/146, 181 ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. 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)(l )(iv). AFFIRMED; 37 C.F.R. § 4I.50(b) 5 Copy with citationCopy as parenthetical citation