Ex parte Potter

Board of Patent Appeals and Interferences

Dec 23, 1997

08095476 (B.P.A.I. Dec. 23, 1997)

Application for patent filed July 23, 1993. According to1
the appellant, the application is a continuation of Application
No. 07/786,704, filed November 1, 1991, now abandoned.
Subsequent to the final rejection the examiner withdrew2
the 35 U.S.C. § 112, second paragraph, rejection of claims 45
through 47 (see Paper No. 28, mailed December 20, 1994) and the
35 U.S.C. § 103 rejections of claims 55 through 61 (see page 2 of
the examiner's answer).
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 45
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DANIEL R. POTTER
____________
Appeal No. 96-1881
Application No. 08/095,4761
____________
HEARD: December 9, 1997
____________
Before STONER, Chief Administrative Patent Judge, and
McQUADE and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 37 through 40 and 45 through 54. Claims 55
through 61 have been allowed. Claims 1 through 36 and 41 through
44 have been canceled.2
Appeal No. 96-1881
Application No. 08/095,476
2
We AFFIRM.
Appeal No. 96-1881
Application No. 08/095,476
3
BACKGROUND
The appellant's invention relates to a shoe sole. Claims 37
and 40 are representative of the subject matter on appeal and a
copy of those claims, as they appear in the appendix to the
appellant's brief, is attached to this decision.
The prior art references of record relied upon by the
examiner as evidence of obviousness under 35 U.S.C. § 103 are:
Reed 2,677,906 May
11, 1954
Casey et al. (Casey) 4,049,854
Sep. 20, 1977
Rudy (Rudy '945) 4,219,945
Sep. 2, 1980
Rudy (Rudy '250) 4,287,250
Sep. 1, 1981
Vermeulen 4,999,931
Mar. 19, 1991
Bolla 2,050,145 Jan.
7, 1981
(United Kingdom)
Claims 37 through 39, 45, 46 and 48 stand rejected under
Appeal No. 96-1881
Application No. 08/095,476
4
35 U.S.C. § 103 as being unpatentable over Bolla in view of Reed
and Rudy '250.
Claims 49 and 50 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the references as applied to claims 37
and 39 above, and further in view of Vermeulen.
Appeal No. 96-1881
Application No. 08/095,476
5
Claims 40, 51, 53 and 54 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Bolla in view of Casey and Rudy
'250.
Claims 47 and 52 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the references as applied to claims 37,
40 and 45 above, and further in view of Rudy '945.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the § 103 rejections, we
make reference to the examiner's answer (Paper No. 34, mailed
August 8, 1995) for the examiner's complete reasoning in support
of the rejections, and to the appellant's brief (Paper No. 33,
filed May 8, 1995) and reply brief (Paper No. 35, filed October
20, 1995) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. Upon evaluation of all the evidence before us, it is
Appeal No. 96-1881
Application No. 08/095,476
6
our conclusion that the evidence adduced by the examiner is
sufficient to establish the obviousness of the claimed subject
matter. Accordingly, we will sustain the examiner's rejection of
claims 37 through 40 and 45 through 54 under 35 U.S.C. § 103.
Our reasoning for this determination follows.
We turn first to the examiner's rejection of independent
claim 37 which was rejected under 35 U.S.C. § 103 as being
unpatentable over Bolla in view of Reed and Rudy '250.
Bolla discloses a shoe sole including a bladder. The
bladder is made of an upper and lower surfaces of elastomeric
material (Bolla's pliable or flexible layers 1 and 2 of plastic
sheet material). The upper and lower surfaces define three
pressurized fluid-filled chambers (Bolla's air pockets 3, 4 and
5). As can be seen in Figures 1 and 2, each chamber has a
different volume from the other chambers. The upper and lower
surfaces are in contact at one location to define a blocking seal
(Bolla's edge 12 along the lower right side of the sole as shown
in Figure 1). Each of the three chambers have an end disposed
adjacent that blocking seal so that the blocking seal precludes
Appeal No. 96-1881
Application No. 08/095,476
7
fluid communication between any one of the three chambers and the
remaining chambers through their ends.
Appeal No. 96-1881
Application No. 08/095,476
8
The examiner determined on page 4 of the examiner's answer
that
[i]t would have been obvious in view of Reed and Rudy
'250 to provide distinct and separate chambers being of
either constant or varied pressure to the shoe of Bolla
to further improve the shock absorbing abilities of the
insole.
Implicit in this rejection is the examiner's view that the
above noted modification of Bolla would result in an apparatus
which corresponds to the apparatus recited in claim 37 in all
respects.
We agree with the examiner that providing the same pressure
in each of the three pockets 3, 4 and 5 of Bolla's shoe sole
would have been obvious to one of ordinary skill in the art at
the time of the appellant's invention in view of the teachings of
Reed and Rudy '250. In fact, the appellant has not challenged
this determination.
The arguments advanced by the appellant (brief, pp. 23-25)
do not convince us of any error in the position of the examiner
that claim 37 reads on the modified sole of Bolla. In that
regard, contrary to the appellant's assertions, Bolla does
Appeal No. 96-1881
Application No. 08/095,476
See page 9 of the appellant's brief.3
9
disclose three chambers (air pockets 3, 4 and 5) each having an
end (as shown in Figure 1, each air pocket has an end adjacent to
the rightmost edge 12) which is adjacent to a blocking seal
(rightmost edge 12 along the area where the three pockets come
together). Thus, Bolla does disclose a weld line (rightmost edge
12) that isolates three chambers from each other.
In light of the foregoing, we conclude that claim 37 is
unpatentable under 35 U.S.C. § 103.
The appellant has grouped claims 37 through 39 and 45
through 50 as standing or falling together. Accordingly, claims3
38, 39 and 45 through 50 fall with claim 37. Thus, it follows
that the examiner's rejection of claims 38, 39 and 45 through 50
under 35 U.S.C. § 103 is also sustained.
Next we turn to the examiner's rejection of independent
claim 40 which was rejected under 35 U.S.C. § 103 as being
unpatentable over Bolla in view of Casey and Rudy '250.
Appeal No. 96-1881
Application No. 08/095,476
The test for obviousness is what the combined teachings of4
the references would have suggested to one of ordinary skill in
the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981).
10
The examiner determined on page 5 of the examiner's answer
that
[i]t would have been obvious in view of Casey and Rudy
'250 to make the bladder of Bolla by sealing the
chambers after pressurization to a common pressure to
further facilitate manufacturing and increase comfort.
Implicit in this rejection is the examiner's view that the
above noted modification of Bolla would result in a method which
corresponds to the method recited in claim 40 in all respects.
In applying the test for obviousness, we reach the4
conclusion that the combined teachings of the applied prior art
would have suggested the claimed method to one of ordinary skill
in the art at the time of the appellant's invention. The
arguments advanced by the appellant (brief, pp. 12-20) are
unpersuasive for the following reasons.
Contrary to the appellant's argument (brief, pp. 15-18), we
find that Casey is analogous art. The test for non-analogous art
Appeal No. 96-1881
Application No. 08/095,476
11
is first whether the art is within the field of the inventor’s
endeavor and, if not, whether it is reasonably pertinent to the
problem with which the inventor was involved. In re Wood, 599
F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979). A reference is
reasonably pertinent if, even though it may be in a different
field of endeavor, it logically would have commended itself to an
inventor’s attention in considering his problem because of the
matter with which it deals. In re Clay, 966 F.2d 656, 659, 23
USPQ2d 1058, 1061 (Fed. Cir. 1992). In the present instance, we
are informed by the appellant's originally filed specification
(p. 3) that by practicing the method of the present invention, a
bladder can be fabricated quickly, easily, and at low cost. The
method that accomplishes those results is stated to involve
selectively forming a number of chambers with an elastomeric
material, such that each chamber is in fluid communication with
the others. Thereafter, the interior is supplied with an amount
of fluid, so that the chambers are all pressurized at the same
desired level. The fluid communication is then sealed so that
each of the chambers is separated from the other chambers. Casey
teaches (1) that inflatable cushions can easily be prepared which
have individual chambers in any of a large variety of desired
Appeal No. 96-1881
Application No. 08/095,476
See column 1, lines 47-57, of Casey.5
12
sizes and shapes, (2) that all of the chambers in the cushions
can be simultaneously inflated through a single opening
communicating with separate inlet passageways for the chambers,
and (3) that this is done by a device which first directs air
from a nozzle through the opening and into the chambers, and then
seals the ends of the inlet passageways in a small area around
the opening to provide an inflated and sealed air cushion. 5
Thus, Casey falls at least into the latter category of the
Wood test, and logically would have commended itself to an
artisan's attention in considering the appellant's problem.
Thus, we conclude that Casey is analogous art.
Contrary to the appellant's argument (brief, pp. 13-15 and
18-19), we find that Casey does disclose isolated chambers and
thus does provide the suggestion for modifying Bolla in the
manner set forth by the examiner. Figures 7-9 of Casey show the
sequence of inflating the chambers 26 and sealing the passageways
28. Specifically, Figure 7 is an enlarged fragmentary view,
partially in section of an inflation station illustrating a
cushion positioned about an inflating nozzle therein; Figure 8 is
an enlarged fragmentary view, partially in section of the nozzle
Appeal No. 96-1881
Application No. 08/095,476
13
in Figure 7 during the inflation of a cushion; and Figure 9 is an
enlarged fragmentary view, partially in section of the nozzle in
Figures 7 and 8, but illustrated with a heated tube in position
to seal an inflated cushion. Casey further discloses that
(1) the cushions (14 in Figure 2 or 110 in Figure 10) have a
plurality of inflatable chambers (26 in Figure 2 or 115 in Figure
10) between layers of polyolefin (18 and 20 in Figure 2 or 112
and 113 in Figure 10), (2) the one layer of the cushion has an
opening (22 in Figure 2 or 116 in Figure 10), and (3) the
chambers are disposed around the opening and each have a portion
providing an inlet passageway (28 in Figure 2 or 117 in Figure
10) to the chamber from the opening. Additionally, Casey teaches
at column 4, lines 4-9, that the means for sealing the inflated
chambers in the cushion 14, includes the end of a heated, hollow,
cylindrical tube 48 which is pressed toward the support surface
46 around the nozzle 44 to seal shut the inlet passageways 28
around the opening 22 (see Figure 9). Further, Casey discloses
at column 6, lines 40-61, that the means for sealing the inlet
passageways 28 to the chambers 26 after the cushion 14 is
inflated (i.e., the hollow cylindrical heated tube 48) includes
an annular end sealing surface 97 which is movable by cylinder
102 between a waiting position spaced from an inflatable cushion
Appeal No. 96-1881
Application No. 08/095,476
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14 and a sealing position at which the sealing end surface 97 of
the heated tube 48 will be pressed against such a cushion 14 on
the support surface 46 to seal shut the inlet passageways 28 of
the cushion 14 in a narrow band around its central opening 22
(see Figure 9). In view of these teachings of Casey that the
inlet passageways are sealed shut, we find that Casey would have
taught one skilled in the art that after the inlet passageways
are sealed shut, the chambers (26 in Figure 2 or 115 in Figure
10) are isolated from each other (i.e., the chambers are out of
fluid communication from each other). Thus, Casey teaches the
following steps (1) forming a bladder having opposing surfaces
from elastomeric material, the bladder formed to include two
chambers opened at one end to a common area, the chambers
isolated from each other except at said common area;
(2) supplying fluid into the bladder, the fluid flowing through
the common area so that each chamber is pressurized; and
(3) joining the surfaces to each other at the common area after
the chambers are pressurized and thereby isolating the chambers
out of fluid communication from each other. In view of the
above-noted teachings of Casey, we believe there is ample
motivation for one skilled in the art to have inflated Bolla's
air pockets 3 and 4, for example, simultaneously through a single
Appeal No. 96-1881
Application No. 08/095,476
See page 1, lines 97-100, of Bolla.6
15
opening communicating with separate inlet passageways for each
air pocket and to have then sealed the ends of the inlet
passageways in a small area around the opening.
Lastly, the appellant's argument (brief, pp. 19-20) that
Bolla teaches away from the asserted combination is unpersuasive
for the following reason. First, the examiner's rejection is not
based upon sealing interuptions 50 of Bolla but upon Bolla's
sealed air pockets 3, 4 and 5. Second, while Bolla does
specifically disclose that the air pockets 3, 4 and 5 can be
inflated by means of a syringe or appropriate valve, Bolla also
states the air pockets 3, 4 and 5 can be inflated by a known
method. Thus, we agree with the examiner (answer, p. 9) that6
Bolla would have suggested to one skilled in the art to inflate
his air pockets 3, 4 and 5 by any known method.
In light of the foregoing, we conclude that claim 40 is
unpatentable under 35 U.S.C. § 103.
Appeal No. 96-1881
Application No. 08/095,476
See page 9 of the appellant's brief.7
16
The appellant has grouped claims 40 and 51 through 54 as
standing or falling together. Accordingly, claims 51 through 547
fall with claim 40. Thus, it follows that the examiner's
rejection of claims 51 through 54 under 35 U.S.C. § 103 is also
sustained.
CONCLUSION
To summarize, the decision of the examiner to reject claims
37 through 40 and 45 through 54 under 35 U.S.C. § 103 is
affirmed.
Appeal No. 96-1881
Application No. 08/095,476
17
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
BRUCE H. STONER, JR. Chief, )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 96-1881
Application No. 08/095,476
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BANNER, BIRCH, MCKIE & BECKETT
1001 G STREET, N.W.
WASHINGTON, DC 20001-4597
Appeal No. 96-1881
Application No. 08/095,476
1
APPENDIX
37. A shoe sole including a bladder, said bladder made of
an elastomeric material and comprising upper and lower surfaces
defining at least three pressurized fluid-filled chambers, each
chamber having a different volume from the other said chambers,
said upper and lower surfaces in contact at one location to
define a blocking seal, each said chamber having an end, each
said end disposed adjacent said blocking seal, said blocking seal
precluding fluid communication between any one said chamber and
another said chamber through said ends, wherein said at least
three chambers are pressurized to the same pressure and thereby
have a different resistance to compression.
40. A method of making a shoe sole comprising the steps of:
forming a bladder having opposing surfaces from elastomeric
material, said bladder formed to include two chambers opened at
one end to a common area, said chambers isolated from each other
except at said common area;
supplying fluid into said bladder, said fluid flowing
through said common area so that each chamber is pressurized; and
joining said surfaces to each other at the common area after
the chambers are pressurized and thereby isolating said chambers
out of fluid communication from each other.
APPEAL NO. 96-1881 - JUDGE NASE
APPLICATION NO. 08/095,476
APJ NASE
APJ McQUADE
CAPJ STONER
DECISION: AFFIRMED
Prepared By: Delores A. Lowe
DRAFT TYPED: 21 Dec 98
FINAL TYPED:
HEARD: 9 Dec 97