Ex Parte Liberman

Board of Patent Appeals and Interferences

Nov 19, 2009

11095366 (B.P.A.I. Nov. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BARNET L. LIBERMAN
____________________

Appeal 2009-012382
Application 11/095,366
Technology Center 3700
____________________

Decided: November 19, 2009
____________________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Barnet L. Liberman (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1, 4 and 8-11. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed to a sport sock,
especially a ski sock, having a non-uniform thickness in different portions of
the sock (Spec. 2: ¶ [0001]).
The invention is readily understood by reference to Figures 1 and 2,
and Claim 1.
Figure 1 is reproduced below:

Figure 1 shows a sport sock 10 including a lateral metatarsal joint
portion 20 at the junction of the instep portion 16 and the toe portion 18
(Spec. 7: ¶ [0011]).
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Figure 2 is reproduced below:

Figure 2 shows a bottom view of a pair of socks 10, 10', wherein each
of the socks 10, 10' has a first metatarsal joint portion 20, 20' and a second
metatarsal portion 22, 22' (Spec. 7: ¶ [0012]).
Claim 1, reproduced below, is representative of the claimed subject
matter on appeal:
1. A sock comprising
a leg portion,
a heel portion,
an instep portion,
a toe portion, and
a pair of lateral metatarsal joint portions
where the instep portion meets the toe portion,
each said metatarsal joint portion covering a
corresponding metatarsal joint of a foot, and being
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limited to an area immediately surrounding said
joint, when the sock is worn,
wherein the sock has a first material
thickness at the instep portion and the toe portion,
and a second material thickness at at least one of
said lateral metatarsal joint portions, wherein the
second material thickness is less than the first
material thickness, and wherein the second
material thickness is confined to said at least one
metatarsal joint portion.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Throneburg US 5,603,232 Feb. 18, 1997
Smith US 6,381,756 B1 May 7, 2002
Sloan US 6,665,883 B2 Dec. 23, 2003

The following rejections by the Examiner are before us for review:
1. Claim 11 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.

1 Claims 1, 4, and 8-11, which are all of the claims on appeal, will be
considered in this appeal as having been rejected under 35 U.S.C. § 112, first
paragraph. We understand the Examiner’s omission of dependent claims 4
and 8-11 from the statement of the rejection under 35 U.S.C. § 112, first
paragraph (Ans. 3, Final Rejection 3) to have been inadvertent. Claims 4
and 8-11, all of the other claims on appeal, depend either directly or
indirectly from claim 1. A claim in dependent form shall be construed to
incorporate by reference all the limitations of the claim to which it refers. 35
U.S.C. § 112, fourth paragraph. Therefore, a rejection of independent claim
1 under 35 U.S.C. § 112, first paragraph, for failing to comply with the
written description requirement, logically also applies to dependent claims 4
and 8-11. Appellant, in the Reply Brief (Reply Br. 2) and the Appeal Brief
(App. Br. 3), has construed the rejection of independent claim 1 under 35
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2. Claims 1 and 4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Throneburg.
3. Claims 1, 4, 8 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sloan.
4. Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sloan in view of Smith.

ISSUES
The issues before us are: (1) whether the Examiner erred in finding
that claim 1 fails to comply with the written description requirement of 35
U.S.C. § 112, first paragraph (Reply Br. 2, App. Br. 3), (2) whether the
Examiner erred in finding that Throneburg describes a first material
thickness at the instep and toe portion as called for in claim 1 (Reply Br. 6,
App. Br. 5), and (3) whether the Examiner erred in finding that Sloan’s vent
holes 24, an area of lesser thickness, covers the lateral metatarsal joint as
called for in claim 1 (Reply Br. 7, App. Br. 6).

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d

U.S.C. § 112, first paragraph, as including dependent claims 4 and 8-11, and
thus is not prejudiced by our consideration of these claims as so rejected.
Moreover, the Examiner, in her response to Appellant’s arguments (Ans.
10), acknowledged that she was responding to Appellant’s arguments
regarding written description support for claims 1, 4, and 8-11, which are all
of the claims on appeal.
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1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
Appellant’s Invention
1. Appellant’s Specification describes that “[a]s used herein, the term
metatarsal joint refers to the joint between the metatarsal bones and
the phalanges, the lateral metatarsal joint portions being located on
the lateral sides of the foot where the foot is widest.” (Spec. 2-3: ¶
[0003] ).
2. Appellant’s Specification describes “a lateral metatarsal joint
portion 20 where the instep portion 16 meets the toe portion 18.”
(Spec. 7: ¶ [0011]) (emphasis added).
3. Appellant’s Specification describes a pair of socks 10, 10' having a
first metatarsal joint portion 20, 20' and a second metatarsal joint
portion 22, 22' (Spec. 7: ¶ [0012] and fig. 2).
4. Appellant’s Specification describes that the sock 10 has a first
material thickness at the instep portion 16 and toe portion 18, and a
second material thickness at at least one of the lateral metatarsal
joint portions 20, 22, wherein the second material thickness is less
than the first material thickness (Spec. 4, 7: ¶¶ [0004], [0013]).
The Examiner’s Findings
5. The Examiner finds that the limitations “being limited to an area
immediately surrounding said joint” and “wherein the second
material thickness is confined to said at least one metatarsal joint
portion” as called for in claim 1, were not described in the original
disclosure (Ans. 3).
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6. The Examiner finds that the oval portions 20, 22, 20', 22', 34 cover
a larger area of the user’s foot than that of just the metatarsal joint.
As evidence thereof, the Examiner references an illustration of the
anatomy of the human foot and Appellant’s Figure 2 (Ans. 4, 5, 6;
see also fig. 2, supra, and illustration, infra).
7. The Examiner finds that Appellant’s Specification, in particular
paragraphs [0003], [0004], [0011] and [0012], do not provide
support for the limitations added to claim 1 (Ans. 14, see also Fact
5).
8. The Examiner finds that in Throneburg, “[t]he sock has a first
material thickness at the instep portion (P2) and the toe portion
(P2) . . .” (Ans. 7) (emphasis added). In support of the finding,
the Examiner references identifiers 22 and 16 as the portions
having the same material thickness (Ans. 15).
9. The Examiner finds that Sloan describes a sock 10', 12 having (a)
a first and second material thickness, (b) the second material
thickness is less than the first material thickness, and (c) the second
material thickness is at at least one of the metatarsal joint portions
(fig. 3) (Ans. 8).
10. The Examiner finds that in Sloan, portions 24 cover the side and
top portion of the sock, and the metatarsal joint (Ans. 21).
The Board’s Findings
11. Appellant has not contested the accuracy of the illustration of the
anatomy of the human foot referenced by the Examiner (Reply Br.
2; App. Br. 3; see also Fact 6).
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12. Throneburg describes a foot protector (sock) 12 having a first
thickness of padding P1 on the toe 22, ball 20 and heel 16 and a
second thickness of padding P2 on the instep 24 and arch 18,
wherein the first thickness of padding P1 is thicker than the second
thickness of padding P2 (col. 7, ll. 9-21, and figs 2 and 4).
13. Sloan describes an oversock 10' including vent holes 24 on an
upper surface thereof to facilitate drying of the sock (col. 4, ll. 18-
29 and fig. 3).
14. The ordinary meaning of the word “immediate” includes “[c]lose
at hand, near.” THE AMERICAN HERITAGE® DICTIONARY OF THE
ENGLISH LANGUAGE (4th ed. 2000).
15. The ordinary meaning of the word “closely” includes “[b]eing near
in space.” THE AMERICAN HERITAGE® DICTIONARY OF THE
ENGLISH LANGUAGE (4th ed. 2000).
16. The ordinary meaning of the word “near” includes “within a short
distance.” THE AMERICAN HERITAGE® DICTIONARY OF THE
ENGLISH LANGUAGE (4th ed. 2000).
17. Additional findings as necessary appear in the Analysis portion of
this opinion.

PRINCIPLES OF LAW
Appellant’s Burden
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
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or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)). See also Ex parte Yamaguchi, 88 USPQ2d 1606, 1614 (BPAI 2008)
[burden on appeal] (on appeal, applicant must show examiner erred); Ex
parte Fu, 89 USPQ2d 1115, 1123 (BPAI 2008); Ex parte Catan, 83
USPQ2d 1569, 1577 (BPAI 2007); and Ex parte Smith, 83 USPQ2d 1509,
1519 (BPAI 2007).
Written Description (35 U.S.C. § 112, first paragraph)
The purpose of the written description requirement is to convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
applicant was in possession of the invention as now claimed. Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The possession test
alone, however, is not always sufficient to meet the written description
requirement. Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969
(Fed. Cir. 2002). Rather, “the written description requirement is satisfied by
the patentee’s disclosure of ‘such descriptive means as words, structures,
figures, diagrams, formulas, etc., that fully set forth the claimed invention.’”
Id. (quoting Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997)).
The claimed subject matter need not be described “in haec verba” in
the original specification in order to satisfy the written description
requirement. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989). Rather, “the
test . . . is whether a person of ordinary skill in the art would recognize that
the applicant possessed what is claimed in the later filed application as of the
filing date of the earlier filed application.” Noelle v. Lederman, 355 F.3d
1343, 1348 (Fed. Cir. 2004).
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Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”).
In KSR, the Supreme Court noted that “[t]o facilitate review, this
analysis should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”)). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418.

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ANALYSIS
Appellant’s argue claims 1, 4 and 8-11, rejected under 35 U.S.C. §
112, as a group (App. Br. 3). As such, we select claim 1 as representative of
the group, and claims 4 and 8-11 will stand or fall with claim 1. 37 C.F.R. §
41.37(c)(1)(vii) (2007).
Rejection of claims 1, 4 and 8-11 under 35 U.S.C. § 112
Appellant contends that the two limitations, “each said metatarsal
joint portion . . . being limited to an area immediately surrounding said joint,
when the sock is worn” and “wherein the second material thickness is
confined to said at least one metatarsal joint portion,” are clearly shown in
Figures 1-3 of the drawings and are supported by paragraphs [0003], [0011],
[0012] and [0013] of the Specification (Reply Br. 2-3, App. Br. 3).
Appellant further contends that the use of the term “immediately” in
claim 1 does not limit the area of the metatarsal portion to be just the same
area of the metatarsal joint, per se. In support thereof, Appellant proffered
the definition of “immediately” as including the word “closely.” (Reply Br.
4).
The Examiner found that the limitations “each said metatarsal joint
portion . . . being limited to an area immediately surrounding said joint,
when the sock is worn . . .” and “wherein the second material thickness is
confined to said at least one metatarsal joint portion” as called for in claim 1
were not described in the original disclosure (Fact 5). The Examiner further
found that the oval portions 20, 22, 20', 22', 34 cover a larger area of the
user’s foot than that of just the metatarsal joint. As evidence thereof, the
Examiner referenced an illustration of the anatomy of the human foot
(hereinafter “illustration”) and Appellant’s Figure 2 (Fact 6; see also fig. 2,
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supra, and illustration, infra). The Examiner still further found that
Appellant’s Specification, in particular, paragraphs [0003], [0004], [0011]
and [0012], do not provide support for the limitations added to claim 1 (Fact
7).
Appellant has not contested the accuracy of the illustration (Fact 11).
Therefore, we will rely on the illustration in this appeal.
The illustration is reproduced below:

The illustration shows the position of the metatarsal bones 8, 9, 10,
11, 12, and the phalanges 13.
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Appellant’s Specification describes that “[a]s used herein, the term
metatarsal joint refers to the joint between the metatarsal bones and the
phalanges, the lateral joint portions being located on the lateral sides of the
foot where the foot is widest.” (Fact 1). Appellant’s Specification further
describes “a lateral joint metatarsal joint portion 20 where the instep portion
16 meets the toe portion 18.” (Fact 2) (emphasis added). Appellant’s
Specification still further describes a pair of socks 10, 10' having a first
metatarsal joint portion 20, 20' and a second metatarsal joint portion 22, 22'
(Fact 3).
As defined by Appellant (Fact 1), the metatarsal joint is the joint
between the metatarsal bones and the phalanges, that is, between first
metatarsal 8 and the phalange 13, as shown in the illustration, supra. The
metatarsal joint is shown in the illustration as extending only a small amount
along the length of the foot, and is located adjacent to but spaced from the
point where the foot is the widest.
Appellant’s metatarsal joint portions 20, 22 are intended to cover the
lateral sides of the foot where the foot is widest. When comparing the
illustration with Appellant’s Figures 1-3, we find that Appellant’s metatarsal
joint portion 20 extends toward the heel a greater distance along the length
of the foot, that is, more than half way down the first metatarsal 8, than the
metatarsal joint.
In support of the position that claim 1 is supported by the original
disclosure, Appellant has proffered a definition of “immediately” as
including the word “closely.” The ordinary meaning of the word “closely”
includes “[b]eing near in space.” (Fact 15). The Appellant’s proffered
definition of “immediately” is consistent with the ordinary meaning of
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“immediate” which includes “[c]lose at hand, near.” (Fact 14). Further, the
ordinary meaning of the word “near” includes “within a short distance.”
(Fact 16).
A person having ordinary skill in the art would not find the original
disclosure of Appellant’s metatarsal joint portions 20, 22 as being limited to
an area immediately (closely) surrounding the metatarsal joint and confined
to the joint portion since the original disclosure of Appellant’s metatarsal
joint portions 20, 22 extend more than half way down the first metatarsal 8.
Therefore, we agree with the Examiner and conclude that the
limitations “each said metatarsal joint portion . . . being limited to an area
immediately surrounding said joint, when the sock is worn” and “wherein
the second material thickness is confined to said at least one metatarsal joint
portion” as called for in claim 1 were not part of the original disclosure and
are, therefore, new matter.
Therefore, we conclude that Appellant has not demonstrated that the
Examiner erred in rejecting claim 1 under 35 U.S.C. 112, first paragraph, as
failing to comply with the written description requirement. Appellant has
likewise not demonstrated error in the Examiner’s rejection of claims 4 and
8-11, which fall with claim 1.
Rejection of claims 1 and 4 under 35 U.S.C. § 103(a) as being unpatentable
over Throneburg
Claim 1 calls for, inter alia, “wherein the sock has a first material
thickness at the instep portion and the toe portion . . .”
Appellant contends that Throneburg does not describe a first material
thickness at the instep and toe portion as called for in claim 1 (Reply Br. 6,
App. Br. 5).
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The Examiner found that in Throneburg, “[t]he sock has a first
material thickness at the instep portion (P2) and the toe portion (P2) . . .”
(emphasis added). In support of the finding, the Examiner references
identifiers 22 and 16 as the portions having the same material thickness.
(Fact 8).
Throneburg describes a foot protector (sock) 12 having a first
thickness of padding P1 on the toe 22 and a second thickness of padding P2
on the instep 24, wherein the first thickness of padding P1 is thicker than the
second thickness of padding P2 (Fact 12).
Therefore, Throneburg does not describe a sock having a first material
thickness, that is, the same material thickness at the instep and toe portion as
called for in claim 1.
We conclude that Appellant has demonstrated that the Examiner erred
in rejecting claim 1 over Throneburg. Appellant has likewise demonstrated
error in the Examiner’s rejection of claim 4, which depends from claim 1.
Rejection of claims 1, 4, 8 and 9 under 35 U.S.C. § 103(a) as being
unpatentable over Sloan; and claims 10 and 11 under 35 U.S.C. § 103(a) as
being unpatentable over Sloan in view of Smith
Claim 1 calls for, inter alia, “a pair of lateral metatarsal joint portions
where the instep portion meets the toe portion, each said metatarsal joint
portion covering a corresponding metatarsal joint of a foot . . . a second
material thickness at at least one of said lateral metatarsal joint portions,
wherein the second material thickness is less than the first material thickness
. . .”
Appellant contends that Sloan’s vent holes 24, having an area of lesser
thickness, do not cover the metatarsal joint as called for in claim 1 (Reply
Br. 7, App. Br. 6).
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The Examiner found that Sloan describes a sock 10', 12 including
portions 24 of lesser thickness that cover the metatarsal joint (Facts 9, 10).
Sloan describes an oversock 10' including vent holes 24 on an upper
surface (Fact 13). Sloan’s vent holes 24 are not located on the lateral sides
of the sock.
Therefore, Sloan’s vent holes 24 do not cover the lateral metatarsal
joint portion as called for in claim 1.
We conclude that Appellant has demonstrated that the Examiner erred
in rejecting claim 1 over Sloan. Appellant has likewise demonstrated error
in the Examiner’s rejection of claims 4, 8 and 9, which depend from claim 1.
The Examiner has not relied on Smith for any teaching that would
remedy the deficiency in Sloan (Ans. 9). We thus conclude that the
Examiner also erred in rejecting claims 10 and 11 over Sloan in view of
Smith.

CONCLUSIONS
Appellants have not established that the Examiner erred in finding that
claim 1 fails to comply with the written description requirement of 35 U.S.C.
§ 112, first paragraph.
Appellants have established that the Examiner erred in finding that
Throneburg describes a first material thickness at the instep and toe portion
as called for in claim 1.
Appellants have established that the Examiner erred in finding that
Sloan’s vent holes 24, an area of lesser thickness, covers the metatarsal joint
as called for in claim 1.

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DECISION
The decision of the Examiner to reject claims 1, 4 and 8-11 under 35
U.S.C. 112 is affirmed. The decision of the Examiner to reject claims 1 and
4 over Throneburg; claims 1, 4, 8 and 9 over Sloan; and claims 10 and 11
over Sloan in view of Smith is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED

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