Ex Parte Pieri

Patent Trial and Appeal Board

Nov 30, 2016

13063974 (P.T.A.B. Nov. 30, 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.
13/063,974 03/15/2011 Antonio Pieri 2501-1026 7916
466 7590 12/02/2016
YOUNG fr THOMPSON
EXAMINER
209 Madison Street PRANGE, SHARON M
Suite 500
Alexandria, VA 22314 ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
DocketingDept@young-thompson.com
y andtpair @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTONIO PIERI
Appeal 2015-000417
Application 13/063,974
Technology Center 3700
Before MICHELLE R. OSINSKI, JEREMY M. PLENZLER, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant, Antonio Pieri,1 appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 11—18 and 20—23.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies Alesia Innovation S.r.l. as the real party in
interest. Br. 1.
2 Claims 1—10 and 19 are cancelled. Id.
Appeal 2015-000417
Application 13/063,974
THE CLAIMED SUBJECT MATTER
The claims are directed to “aerated shoes, i.e.[,] those provided with
means which permit atmospheric air to enter, naturally in a limited manner,
inside the shoe, so [as] to give a feeling of comfort to the user’s foot.” Spec.
1:2—5. Claim 11, the only independent claim, is reproduced below:
11. A shoe comprising:
a lower sole (5) and an upper sole (3) joined together along
an entirety of their respective perimeters by a border (10) bearing
fixed slits (12) that are distributed around an entirety of said
border (10),
wherein said lower sole (5), said border (10) and said
upper sole (3) form an inner chamber or hollow space for the
circulation of atmospheric air that has entered from the fixed slits
(12), and wherein the lower sole (5) lacks holes or micro-holes,
while the upper sole (3) has holes or micro-holes (4) adapted to
allow the air coming from said hollow space to pass through;
an air flow regulator (13, 14, 15, 16, 1 7, 18, 19), manually
or directly operable by the user’s finger or with a special tool,
and comprising a movable part (13) bearing a plurality of
movable slits (15) that are respectively superimposable over said
fixed slits (12) so as to ensure an adjustable flow rate of the
atmospheric air towards said hollow space; and
a plurality of elements (7), arranged in said hollow space
between the lower surface of the upper sole (3) and the upper
surface of the lower sole (5), said elements (7) being made of a
material provided with a certain degree of elasticity, so as to
ensure a suspension and natural cyclic suction and expulsion of
the atmospheric air during walking,
wherein the air freely circulates in the hollow space,
between and/or through said elements (7), since said elements (7)
have interstices which separate them, or openings made thereon,
and
wherein the air flow regulator (13, 14, 15, 16, 17, 18, 19)
comprises a flexible, closed semi-rigid belt (13) constituting said
movable part (13), which laterally extends around the entirety of
said border and is slidable within a perimeter groove (11) that
2
Appeal 2015-000417
Application 13/063,974
extends around the entirety of said border (10), and has said
movable slits (15).
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Cho US 4,837,948 June 13, 1989
Chil US 6,438,872 B1 Aug. 27,2002
Moretti US 6,655,048 B2 Dec. 2,2003
REJECTIONS
The Examiner made the following rejections:
1. Claims 11, 12, 14—18, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Moretti and Cho.
2. Claims 13, 20, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Moretti, Cho, and Chil.
Appellant seeks our review of these rejections.
ANALYSIS
The Rejection of Claims 11, 12, 14—18, 21, and 22
As Unpatentable Over Moretti and Cho
Appellant argues claims 11, 12, 14—18, 21, and 22 as a group. Br. 4—
8. We select claim 11 as the representative claim, and claims 12, 14—18, 21,
and 22 stand or fall with claim 11. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Moretti discloses all of the limitations of
claim 11 except for an air flow regulator that includes “a movable part
having a plurality of movable slits.” Final Act. 2—4. The Examiner also
determined that it would be obvious to provide
3
Appeal 2015-000417
Application 13/063,974
an air flow regulator, as taught by Cho, to the border of [Moretti]
as this would be a simple substitution of one type of air flow
regulator for another, with the predictable result of allowing for
adjustable air flow within the shoe, depending on specific
conditions and/or needs of the user, as well as allowing the slits
to be closed completely to block out unwanted elements.
Final Act. 4.
In response, Appellant presents several arguments contending that the
rejection is incorrect. First, Appellant argues that a skilled artisan would
“not be motivated to replace the [Moretti] waterproof membrane 19 with the
adjustable openings in CHO because the MORETTI shoe would no longer
work as intended by MORETTI.” Br. 5. The Examiner correctly finds that
“the openings of Cho can be closed to provide a waterproof shoe (column 2,
lines 50-55; column 4, lines 40-45), and therefore the Moretti shoe would
still work as intended (providing a waterproof shoe).” Ans. 5. Thus,
Appellant does not identify error by the Examiner.
Second, Appellant argues that Moretti does not disclose an “air flow
regulator” because membrane 19 and protective element 20
only allow the passage of a certain amount of air per unit time
during walking or running, which amount cannot be regulated at
all and is determined (i.e. [,] is fixed beforehand) by the
membrane micro structure. This micro structure (e.g.[,] Gore-
Tex®) must stop the water from penetrating inside the shoe and
must be breathable at the same time. Since it must stop the water
it cannot have larger apertures. Indeed, since the membrane 19
extends around the shoe, there may in certain cases be
insufficient air exchange between the inside and outside of the
shoe.
Br. 5. Appellant does not offer a definition of an “air flow regulator.”
Claim 11 states that an air flow regulator and its movable slits “ensure an
4
Appeal 2015-000417
Application 13/063,974
adjustable flow rate of the atmospheric air towards said hollow space.” In
response to Appellant’s argument, the Examiner asserts that
the membrane 19 and protective element 20 only allow the
passage of a certain amount of air per unit time, therefore acting
to control or maintain the rate at which air flows through the sole.
A regulator does not need to change the rate at which the air
flows, it merely needs to control or maintain that rate.
Ans. 5. The Examiner correctly finds that Moretti’s membrane acts as an air
flow regulator and that both Moretti’s and Cho’s air flow regulators control
or maintain the air flow towards the recited hollow space, and Cho further
provides an adjustable air flow regulator with movable slits. Final Act. 4;
Ans. 6. Appellant does not identify Examiner error.
Third, Appellant argues that Cho does not disclose a “pumping
effect,” and Moretti does not disclose an air flow regulator that is
“adjustable.” Br. 5—7. However, the Examiner finds that Moretti, not Cho,
discloses “natural cyclic suction and expulsion of the atmospheric air during
walking. The air freely circulates in the hollow space, between and/or
through the elements, since the elements have openings.” Final Act. 3^4.
The Examiner also finds that Cho, not Moretti, discloses an air flow
regulator that has movable slits and is, therefore, adjustable. Final Act. 4;
Ans. 5—6. Appellant does not address the rejection as articulated by the
Examiner and, thus, does not show Examiner error.
Fourth, Appellant argues that “the Examiner provides ‘ex post facto’
[i.e., hindsight] analysis of the present invention and of the prior art.” Br. 7.
However, as discussed above, the Examiner’s findings regarding the air flow
regulator are supported by explicit teachings in Moretti and Cho. Appellant
does not identify any knowledge relied upon by the Examiner that was
5
Appeal 2015-000417
Application 13/063,974
gleaned only from Appellant’s disclosure and that was not otherwise within
the level of ordinary skill in the art at the time of the invention, thereby
obviating Appellant’s assertion of hindsight. See In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971). Thus, Appellant does not apprise us of
error.
For the reasons above, the Examiner’s rejection of claim 11 is
sustained. Claims 12, 14—18, 21, and 22 fall with claim 11.
The Rejection of Claims 13, 20, and 23
As Unpatentable Over Moretti, Cho, and Chil
Appellant argues claims 13, 20, and 23 as a group. Br. 8—9. We
select claim 13 as representative. Claims 20 and 23 stand or fall with claim
13. 37 C.F.R. § 41.37(c)(l)(iv). Claim 13 depends from claim 11 and
further recites that “said air flow regulator . . . comprises a locking means . .
. which prevents accidental movements thereof.” The Examiner finds that
Chil teaches this additional feature and, based on that teaching, proposes
further modifying the shoe of Moretti to include a “locking means.” Final
Act. 5. The Examiner reasons that “[i]t would have been obvious ... to
have provided a locking means ... to the sliding parts of the air flow
regulator of the combination of Moretti and Cho in order to prevent
unwanted movement of the sliding parts.” Id.
Appellant does not dispute that Chil teaches the structure of the
“locking means” recited in the claim and, in fact, acknowledges that “[t]he
locking mechanism in CHIL (for shoe size adjustment) is generally similar”
to the recited “locking means.” Br. 8. Appellant, however, “believes it
would not have been obvious to one of ordinary skill in the art to apply this
6
Appeal 2015-000417
Application 13/063,974
locking mechanism to claim 13 in which the locking mechanism is used for
a different purpose, i.e., for regulating an air flow rate.” Id. This does not
apprise us of Examiner error because it does not address the combination or
rationale proposed by the Examiner. That the locking mechanism of Chil is
used with sliding parts in a different part of a shoe does not explain in any
manner, let alone persuasively, why one skilled in the art would not have
found it obvious to use a locking means in connection with sliding parts of
an air flow regulator as proposed by the Examiner. Appellant’s further
contention that “[tjhere is no indication in the references that a locking
mechanism for shoe size would also work for air regulation as claimed” is
also unpersuasive. Id. We do not read the Examiner’s rejection as requiring
that the exact locking mechanism from Chil be bodily incorporated into the
modified shoe of Moretti. See Final Act. 5 (“ft would have been obvious . . .
to have provided a locking means.”) (emphasis added). The test for
obviousness is not “whether the references could be physically combined but
whether the claimed inventions are rendered obvious by the teachings of the
prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en
banc); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (stating “[t]he
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference”).
Appellant’s discussion of the Advisory Action provides no further
indication of Examiner error. See Br. 8—9 (simply summarizing the
Advisory Action and concluding that “CHIL . . . does not disclose or suggest
a locking mechanism for an air flow regulator.”).
Accordingly, we are not apprised of Examiner error in the rejection of
claims 13, 20, and 23.
7
Appeal 2015-000417
Application 13/063,974
DECISION
For the above reasons, the Examiner’s rejections of claims 11—18 and
20-23 are 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)(l)(iv).
AFFIRMED
8