Ex Parte Krupenkin et al

Patent Trial and Appeal Board

Aug 21, 2018

14146181 (P.T.A.B. Aug. 21, 2018)

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.
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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.
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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:
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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)
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