Ex Parte O

Patent Trial and Appeal Board

Nov 26, 2018

14488189 (P.T.A.B. Nov. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/488,189 09/16/2014
24377 7590 11/28/2018
Law Office of R. Dabney Eastham
P.O. Box 1042
Fort Bragg, CA 95437
FIRST NAMED INVENTOR
Catherine Maureen O'Brien
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.
145-lOlUSlNP 5765
EXAMINER
KOZAK, ANNE M
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
11/28/2018 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):
DABNEYEASTHAM@YAHOO.COM
dabneyeastham@gmail.com
dabney _eastham@thinktankphoto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte CATHERINE MAUREEN O'BRIEN
Appeal2018-005291
Application 14/488, 189 1
Technology Center 3700
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner's decision rejecting claims 1 and 3-14. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 "The real party in interest is the applicant and inventor, Catherine M.
O'Brien." Appeal Br. 3.
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Application 14/ 488, 189
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1, 4, and 13 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A disposable shoe liner for a shoe to be worn by a person;
the shoe liner capable of being inserted into either a left or
right version of the shoe and above an insole of the shoe, wherein
the shoe liner comprises:
a first layer forming a top layer of the shoe liner wherein
the first layer is adapted to come in contact with a foot of the
person, the first layer being made of a sheet of absorbent material
impregnated with a substance that absorbs moisture,
a second layer comprising a sheet of a moisture-resistant
material below the first layer,
a third layer comprising tacky adhesive attached to the
second layer on a side of the second layer opposed to the side of
the second layer adjacent to the first layer,
wherein the first layer, the second layer, and the third layer
are made of materials that are biodegradable.
Rejections
I. Claims 4--12 are rejected under 35 U.S.C. § 112(b) as
indefinite.
II. Claims 1, 3, 4, 6, 9, 10, and 12 are rejected under 35 U.S.C.
§ 103 as unpatentable over Janzen (US 6,185,844 Bl, iss. Feb. 13, 2001),
Zeasorb (Zeasorb Athlete's Foot, http://www.zeasorb.com/products/
athletes-foot.html (last visited Sept. 14, 2015)), and Bass (US 2010/0031532
Al, pub. Feb. 11, 2010).
III. Claim 5 is rejected under 35 U.S.C. § 103 as unpatentable over
Janzen, Zeasorb, Bass, and Gelvin (US 2008/0220065 Al, pub. Sept. 11,
2008).
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Application 14/ 488, 189
IV. Claims 7 and 8 are rejected under 35 U.S.C. § 103 as
unpatentable over Janzen, Zeasorb, Bass, and Egerton (US 1,370,799, iss.
Mar. 8, 1921).
V. Claims 11, 13, and 14 are rejected under 35 U.S.C. § 103 as
unpatentable over Janzen, Zeasorb, Bass, and Kosmas (US 7,854,075 B2,
iss. Dec. 21, 2010).
ANALYSIS
Rejection I
Independent claim 4 recites:
A disposable shoe liner for a shoe to be worn by a person;
the shoe liner having a toe end and a heel end joined by a
middle section, and an outline generally symmetrical about a
midline running between the toe end and the heel end of the shoe
liner and capable of being inserted into either a left or right
version of the shoe and above an insole of the shoe.
Appeal Br., Claims App. ( emphasis added).
The Examiner determines that the term "generally symmetrical" in
independent claim 4 is indefinite because it is a relative term and unclear.
See Final Act. 3--4. It is the Examiner's position that "the [S]pecification
does not provide a standard for ascertaining the requisite degree, and one of
ordinary skill in the art would not be reasonably apprised of the scope of the
invention." Id. at 4. The Examiner rejects claims 5-12 "as depending from
a rejected base claim [(i.e., claim 4)]." Id.
The Appellant argues that claim 4, the Specification, and the
Drawings adequately inform one of ordinary skill in the art as to the scope of
the term "generally symmetrical." Appeal Br. 15 (citing Spec ,r 16, Fig. 4).
The Appellant contends that the term "generally symmetrical" refers to an
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Application 14/ 488, 189
outline that permits the claimed shoe liner be used in a shoe for the right or
left foot. See id. The Specification supports the Appellant's argument. For
example, the Specification describes:
The shoe liner 1 preferably has a shape or outline that is generally
bilaterally symmetric about a midline 1 D running between the
toe end IA and the heel end IB (see FIG. 4). This symmetry
permits the shoe liner 1 to be used in a shoe for the right foot or
in a shoe for the left foot, provided the outline of the shoe liner 1
is sufficiently narrow. The shoe liner 1 may be narrower than a
person's foot, that is, not as wide as the person's foot, so the shoe
liner 1 can fit into either a right or left shoe.
Spec. ,r 16. In other words, the term "generally symmetrical" relates to the
shoe liner's ability to be interchangeable between a right shoe and a left shoe
instead of a shoe liner being designed specifically for a right shoe or a left
shoe. See id. ,r,r 6-7.
The Examiner adds that "the claim language may also be interpreted
to include a midline between the toe end and heel end that transverses the
liner across the width (as opposed to the length)." Ans. 3. The Appellant
argues that the claim limitation at issue does not include an interpretation
where the midline between the toe end and heel end that transverses the liner
across the width. See Reply Br. 4. The Appellant's argument is persuasive.
Regardless, even assuming arguendo we were to agree with the Examiner's
interpretation, the claim language would be broad and not indefinite.
Thus, we do not sustain the Examiner's rejection of independent
claim 4 or dependent claims 5-12 as indefinite.
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Application 14/ 488, 189
Rejections 11-V
Independent claims 1, 4, and 13 recite "[a] disposable shoe liner"
including "a first layer forming a top layer of the shoe liner wherein the first
layer is adapted to come in contact with a foot of the person, the first layer
being made of a sheet of absorbent material." Appeal Br., Claims App. In
other words, the independent claims require the shoe liner to have a top layer
that is adapted to come in contact with a foot of the person and is also made
of a sheet of absorbent material. See Appeal Br. 19.
The Examiner relies on Janzen to teach a shoe liner including "a first
layer forming a top layer of the shoe liner wherein the first layer is adapted
to come in contact with a foot of the person, the first layer being made of a
sheet of absorbent material," as recited in claims 1, 4, and 13. See Final
Act. 4--5. Janzen teaches a pair 10 of disposable absorbent shoe inserts 11,
12. Janzen, col. 4, 11. 24--27. Each shoe insert includes "a porous upper
layer 20 allows moisture passage through holes 24 from the user's foot or
sock into the highly absorbent middle layer 30." Id. at col. 3, 11. 1-3, col. 4,
11. 24--27. The Examiner finds that the combination of Janzen's porous
upper layer 20 and absorbent middle layer 30 corresponds to the claimed
shoe liner's top layer. See Final Act. 4--5; Ans. 3--4. 2
The Appellant disagrees with the Examiner's finding. Appeal Br. 18-
19; Reply Br. 3--4. As correctly pointed out by the Appellant, porous upper
layer 20 "is the layer that contacts the foot of the user." Reply Br. 3. And,
2 The Examiner does not rely on teachings from either Zeasorb or Bass to
modify Janzen's porous upper layer 20 to be a sheet of absorbent material.
The Examiner relies on Zeasorb to teach an antifungal agent that absorbs
moisture and Bass to teach a shoe insert to be made of materials that are
biodegradable. See Final Act. 5---6, 23, 25.
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"Janzen teaches '[i]t is generally not desirable that the [porous upper] layer
[20] be absorbent, since that would place a water-containing layer adjacent
to the user's foot."' Id. ( emphasis in original) ( citing Janzen col. 3, 11. 8-1 O);
see Appeal Br. 19. Also, the Examiner fails to adequately support a finding
that Janzen's porous upper layer 20 is made of a sheet of absorbent material.
The Examiner appears to rely solely on Janzen's highly absorbent
middle layer 30 to correspond to the claimed "sheet of absorbent material."
Ans. 4. However, highly absorbent middle layer 30 is not adapted to come
in contact with a foot of a person because porous upper layer 20 is
positioned between highly absorbent middle layer 30 and the sole of a user's
foot. See Janzen, Figs. 1, 4; see also Appeal Br. 19; Reply Br. 4.
In view of the foregoing, we are persuaded that Janzen's shoe liner
fails to include a top layer that is adapted to come in contact with a foot of a
person and is also made of a sheet of absorbent material as required by
independent claims 1, 4, and 13.
Thus, we do not sustain the Examiner's rejection of claims 1, 3, 4, 6,
9, 10, and 12 as unpatentable over Janzen, Zeasorb, and Bass.
The remaining rejections based on Janzen, Zeasorb, and Bass in
combination with Gelvin, Egerton, or Kosmas rely on the same erroneous
finding discussed above. See Final Act. 11-19. Each of the remaining
rejections is not cured by additional findings and/or reasoning associated
therewith. Therefore, we do not sustain the Examiner's rejections of claims
5, 7, 8, 11, 13, and 14.
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DECISION
We REVERSE the Examiner's decision rejecting claims 1 and 3-14.
REVERSED
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