Ex Parte Law

Patent Trial and Appeal Board

Sep 21, 2016

12958103 (P.T.A.B. Sep. 21, 2016)

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.
12/958,103 12/01/2010 Yuen Mou Law 17376-14 2391
73896 7590 09/21/2016
Adams and Reese LLP
1221 McKinney Street, Suite 4400
Houston, TX 77010
EXAMINER
MOHANDESI, JILA M
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
09/21/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUEN MOU LAW
____________

Appeal 2015-000757
Application 12/958,103
Technology Center 3700
____________

Before ANNETTE R. REIMERS, LISA M. GUIJT, and
JEFFREY A. STEPHENS, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision2 rejecting claims 1–7. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is the sole independent claim on appeal and also
representative of the claims on appeal.

1 Appellant identifies the real party in interest as Magic Land Limited. Br. 1.
2 Appeal is taken from the Final Office Action dated September 3, 2013 (“Final
Act.”).
Appeal 2015-000757
Application 12/958,103
2

1. A slipper body with a sole (1) and a vamp (2), wherein the vamp
(2) is a band of material having an inner surface (22) capable of
contacting an instep and a decorative surface (21) opposite to the inner
surface (22), characterized in that at least one fixing slot (23) is
arranged between the inner surface (22) and the decorative surface (21)
on the vamp (2) for fixing an ornament.

REJECTIONS
I. Claims 1–5 and 7 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Chien (US 2006/0007668 A1; pub. Jan. 12, 2006).
II. Claims 1–7 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Chase (US 2012/0234042 A1; pub. Sept. 20, 2012).

ANALYSIS
Rejection 1
Regarding independent claim 1, the Examiner finds, inter alia, that any one
of Chien’s holes H1–H6 corresponds to the claimed fixing slot arranged between
the inner and decorative surfaces of the vamp. Final Act. 2. The Examiner
determines that Chien’s holes H1–H6 are arranged between the claimed surfaces
because holes H1–H6 “are set into and across the space separating the surfaces.”
Ans. 3; see also Adv. Act. 1.
Appellant argues that Chien’s holes H1–H6 “pass through the inner surface
and the decorative surface of the vamp rather than being arranged between the
inner surface and the decorative surface [of the vamp],” and as a result, when
Chien’s buttons (or light units I1–I6) are installed in the holes, the buttons contact
the wearer’s foot and impair the decorative surface, in contrast to Appellant’s
invention. Br. 3–4 (citing Chien ¶ 32, Figs. 1, 5). Appellant submits that “[a]
claim term ‘must be read in view of the specification of which [it is] a part’” (id. at
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Application 12/958,103
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4 (citing Outside Box Innovations, LLC V. Travel, Inc., 260 Fed. Appx. 316
(2008))), and argues that Appellant’s Specification expressly provides that “by
being ‘situated between the inner surface and the decorative surface’ the fixing
slots will not influence either the inner surface or the decorative surface.” Id. In
further support, Appellant cites to M-Edge Accessories LLC v. Amazon.com, 2013
WL 6154558 (D. Md. 2013), wherein, according to Appellant, the court construed
“formed between” to mean “located between.” Id.
The Examiner responds that Appellant is arguing limitations that are not
recited in the claims. Ans. 2 (citing In re Van Geuns, 988 F.2d 1181 (Fed. Cir.
1993)). In particular, the Examiner determines that claim 1 does not require the
slots to prevent installed buttons from influencing the surfaces. Id.
During examination of a patent application, pending claims are given their
broadest reasonable construction consistent with the specification. In re Am. Acad.
of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest
reasonable interpretation standard, claim terms are given their ordinary and
customary meaning as would be understood by one of ordinary skill in the art in
the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007). Although the claims are interpreted in light of the
specification, limitations from the specification are not read into the claims. See In
re Van Geuns, 998 F.2d at 1184; see also Outside the Box Innovations, LLC, 260
Fed. Appx. at 319.
Claim 1 recites that “at least one fixing slot (23) is arranged between the
inner surface (22) and the decorative surface (21) on the vamp (2).” Br. 8, Claims
App. Claim 1 does not specify an orientation of slots 23 relative to decorative and
inner surfaces 21, 22 of the band of material forming the vamp 2 (or relative to any
other structures of the slipper body). Claim 1 also does not specify dispositions of
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Application 12/958,103
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the openings of slots 23 relative to surfaces 21, 22 (or relative to any other
structures of the slipper body). Further, claim 1 is written in open-ended fashion
using the transitional term “comprising.”
The Specification discloses, with reference to Figure 2, that “fixing slot 23
contained between the inner surface 22 and the decorative surface 21 extends
through the vamp 2.” Spec. ¶ 1022. Figure 2 depicts vamp 2 as having side
surfaces that separate top (decorative) and bottom (inner) surfaces 21, 22 of vamp
2.3 If we define the longitudinal axis of the slot as the axis extending from one
opening of the slot to the opposite opening, Figure 2 depicts slot 23 as “contained
between” the surfaces 21, 22, such that the slot’s longitudinal axis is parallel to
surfaces 21, 22, with the slot’s openings on side surfaces of the vamp.
To interpret claim 1 as requiring such a parallel orientation of the slot (as
compared to, for example, a perpendicular orientation), or as excluding the slot’s
openings from being disposed on surfaces 21 or 22, is to read limitations from the
Specification into the claims, which we decline to do. We remind Appellant that
the burden to precisely define the invention is Appellant’s, not the PTO’s. In re
Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Appellant always has the
opportunity to amend the claims during prosecution, and broad interpretation by
the Examiner reduces the possibility that the claim, once issued, will be interpreted
more broadly than justified. In re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969).
An ordinary definition of the claim term “between,” in view of the
Specification, is “in an intermediate position in relation to two other objects.”

3 Figure 1 of Appellant’s Specification appears to depict an embodiment wherein
surfaces 21, 22 bound one another, for example, along one edge, such that the
openings of the slots shown would necessarily be on one or both surfaces 21, 22,
because the openings of the slots are depicted as greater than the width of the
boundary or edge between surfaces 21, 22.
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Application 12/958,103
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WEBSTER’S THIRD NEW INT’L DICTIONARY, p. 209 (1993). Chien’s holes H1–H6
are arranged between the inner and decorative surfaces of a vamp, as claimed,
because Chien’s holes H1–H6 are in an intermediate position in relation to the
surfaces. Although the longitudinal axes of Chien’s holes H1–H6 (which, for each
slot, extends from one opening of the slot to the other) are perpendicular to the top
and bottom surfaces of Chien’s vamp, rather than extending parallel to surfaces 21,
22 as described in Appellant’s Specification, and although the openings of Chien’s
holes extend (or pass) through the top and bottom surfaces of Chien’s vamp, claim
1 neither specifies the orientation of the slots, nor the dispositions of the openings
of slots 23, relative to surfaces 21, 22, as discussed supra. Therefore, we are not
apprised of error in the Examiner’s finding.
Accordingly, we affirm the Examiner’s rejection of independent claim 1 as
anticipated by Chien. Appellant chose not to present separate arguments for the
patentability of claims 2–5 and 7 depending from claim 1. Br. 5. Therefore, we
also sustain the Examiner’s rejection of claims 2–5 and 7 for the reasons stated
supra.
Rejection II
Regarding independent claim 1, the Examiner finds, inter alia, that any one
of Chase’s receiving holes 216 corresponds to the claimed fixing slot arranged
between the inner and decorative surfaces of the vamp. Final Act. 3. The
Examiner determines that Chase’s holes 216 are arranged between the claimed
surfaces because holes 216 “are set into and across the space separating the
surfaces.” Ans. 3; see also Adv. Act. 1.
Appellant argues that “[s]imilar to Chien . . . , Chase does not provide one or
more fixing slots arranged between the inner surface and decorative surface of the
vamp,” but rather, that Chien’s holes 216 “pass through” the surfaces. Br. 5–6.
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Application 12/958,103
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Chase’s receiving holes 216 are arranged between the inner and decorative
surfaces of a vamp, as claimed, because Chase’s holes 316 are in an intermediate
position relative to the surfaces. Although, similar to Chien, the longitudinal axes
of Chase’s holes 216 (which, for each slot, extend from one opening of the slot to
the other) are perpendicular to the top and bottom surfaces of Chase’s vamp, rather
than extending parallel to surfaces 21, 22 as described in Appellant’s Specification,
and although the openings of Chase’s holes extend (or pass) through the top and
bottom surfaces of Chase’s vamp, claim 1 neither specifies the orientation of the
slots, nor the dispositions of the openings of slots 23, relative to surfaces 21, 22, as
discussed supra. Therefore, we are not apprised of error in the Examiner’s finding.
Accordingly, we affirm the Examiner’s rejection of independent claim 1 as
anticipated by Chien. Appellant chose not to present separate arguments for the
patentability of claims 2–7 depending from claim 1. Br. 6. Therefore, we also
sustain the Examiner’s rejection of claims 2–7 for the reasons stated supra.

DECISION
The Examiner’s decision to reject claims 1–5 and 7 under 35 U.S.C.
§ 102(b) as anticipated by Chien is affirmed.
The Examiner’s decision to reject claims 1–7 under 35 U.S.C. § 102(e) as
anticipated by Chase 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).

AFFIRMED