Ex Parte Rastegar et al

Patent Trials and Appeals Board

May 6, 2013

11479768 - (D) (P.T.A.B. May. 6, 2013)

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.
11/479,768 07/01/2006 Johangir S. Rastegar 10050C 1115
79998 7590 05/06/2013
Thomas Spinelli, Esq.
14 Mystic Lane
Northprot, NY 11768
EXAMINER
PATTERSON, MARIE D
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
05/06/2013 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 JOHANGIR S. RASTEGAR and THOMAS SPINELLI
____________

Appeal 2011-003770
Application 11/479,768
Technology Center 3700
____________

Before WILLIAM V. SAINDON, WILLIAM A. CAPP and
JEREMY M. PLENZLER, Administrative Patent Judges.

CAPP, Administrative Patent Judge

DECISION ON APPEAL

Appeal 2011-003770
Application 11/479,768
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 4-11, 18, 20 and 21. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants’ invention relates to shoe coverings for traction or sports.
Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An elastomer covering for a shoe, the covering
comprising:
an elastomer body having a shape configured to enclose a
perimeter of the shoe, the elastomer body having a size smaller
than a size of the shoe such that the elastomer body is fitted on
the shoe by being stretched over the shoe;
the elastomer body having an exterior elastomer bottom
portion corresponding to a sole and heel of the shoe; and
one or more spikes directly arranged on the exterior
bottom portion, the one or more spikes being configured for a
sporting activity.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

Gottschalk
Bingham
Adair
Nakayama
Larson
US 2,423,143
US 3,158,558
US 3,643,352
US 6,502,332 B1
US 6,836,977 B2
Jul. 1, 1947
Nov. 24, 1964
Feb. 22, 1972
Jan. 7, 2003
Jan. 4, 2005
Appeal 2011-003770
Application 11/479,768
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The following rejections are before us for review:
1. Claims 1, 4-6, and 8-10 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Adair.
2. Claims 7 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Adair and Larson.
3. Claims 18 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Adair and Nakayama.
4. Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Adair and either Gottschalk or Bingham.
OPINION
Anticipation of Claims 1, 4-6, and 8-10 by Adair
Claim 1
The Examiner finds that Adair discloses all limitations of claim 1.
Ans. 3-4. Appellants traverse the rejection by arguing that Adair fails to
disclose spikes that are directly arranged on the exterior bottom portion of
Adair’s golf overshoe. App. Br. 9. Appellants argue that Adair’s spikes are
attached to a sole and heel that are composed of a relatively stiff leather and,
therefore, Adair fails to satisfy the limitation of claim 1 directed to an
exterior bottom of elastomer. Id.
The Examiner responds by stating that Adair’s exterior bottom is
comprised of an elastomer. Ans. 5-6. The Examiner points out that the stiff
leather components identified by Appellants are additional elements placed
inside of the elastomer covering. Ans. 6. The Examiner further responds by
observing that Adair’s spikes are “directly arranged” using a structure that is
identical to the structure shown in Appellants’ drawings. Id.
Appeal 2011-003770
Application 11/479,768
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Appellants have not shown error in the Examiner’s findings. Claim 1
uses an open-ended “comprising” transition that does not preclude the use of
a stiff leather layer between an elastomer exterior bottom and an insole. See
Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.Cir.1997)
(‘Comprising’ means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the
claim).
Neither are we persuaded by Appellants’ “directly arranged”
argument. Appellants do not operationally define what it means for spikes
to be “directly arranged” and, therefore, the Examiner is entitled to apply a
broad construction. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (during examination of a patent application, pending claims
are given their broadest reasonable construction consistent with the
specification). Appellants’ Specification states that:
. . . the spikes 12 may be removably or fixedly disposed on the
base element 11, such as by any number of methods known in
the art, including a threaded stud arrangement similar to that
shown in Figure 8a below. The stem 14 can be configured in
any way known in the art, such as being long and somewhat
sharp for snow as is shown in Figure 2a, such as being short
and relatively sharp for ice as is shown in Figure 2b, such as
being rounded as is known in the art of football and soccer
cleats as is shown in Figure 2c, such as being plate-like as is
known in the art of baseball spikes as is shown in Figure 2d, or
have a number of prongs as is known in the art of golf shoes as
is shown in Figure 2e.
Specification, p. 6. We agree with the Examiner that the manner of
attachment and the arrangement of the spikes in Adair comports with the
scope of claim 1 as informed by Appellants’ Specification and we sustain
the Examiner’s rejection of claim 1.
Appeal 2011-003770
Application 11/479,768
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Claims 4-6 and 8-10
Claims 4-6 and 8-10 all depend, directly or indirectly, from claim 1.
Clms. App'x. Appellants do not offer any arguments or evidence for the
separate patentability of such claims other than those previously considered
with respect to claim 1. Accordingly, we sustain the Examiner’s rejection of
claims 4-6 and 8-10.
Unpatentability of Claims 7 and 11
Claims 7 and 11 depend indirectly from claim 1. Clms. App'x. The
Examiner finds that Adair discloses all of the limitations of claims 7 and 11,
except for a counter bore for the spike fixing elements. Ans. 4. The
Examiner relies on Larson as teaching counter bores. Id. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time of the invention to provide counter bores as taught by Larson
for the spike and spike securing elements in Adair. Id. According to the
Examiner, a person of ordinary skill in the art would have been motivated to
do this to provide secure and smooth attachment of the spikes. Id.
In traversing the Examiner rejection, Appellants rely on the same
arguments advanced with respect to claim 1. App. Br. 5-6. Claim 1 is
unpatentable. See In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (A
disclosure that anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103 since anticipation is the epitome of
obviousness). Appellants do not offer any arguments for the separate
patentability of claims 7 and 11. Accordingly, we sustain the rejection of
claims 7 and 11.
Appeal 2011-003770
Application 11/479,768
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Unpatentability of Claims 18 and 20
Claim 18
The Examiner finds that Adair discloses all of the limitations of claim
18 except for the particular details of the spike. Ans. 4. The Examiner relies
on Nakayama as disclosing a conventional golf spike configuration
comprising a plurality of fingers. Id. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time of the
invention to provide fingered golf spikes on Adair. Ans. 4-5. According to
the Examiner, a person of ordinary skill in the art would have been
motivated to do this to reduce damage to the golf course and to comply with
golf course requirements. Ans. 5.
In traversing the Examiner’s rejection, Appellants rely on the same
arguments advanced with respect to claim 1. App. Br. 5-6. Appellants do
not otherwise challenge the Examiner’s findings and conclusions regarding
the teaching of Nakayama or its combinability with Adair. Appellants have
not shown error in the Examiner’s conclusion and we sustain the Examiner’s
rejection of claim 18.
Claim 20
Claim 20 depends from claim 18 and adds the limitation: “wherein
the one or more spikes are removably secured to the bottom portion.” Clms.
App’x. Appellants do not offer any arguments or evidence for the separate
patentability of claim 20 other than those previously considered with respect
to claim 18. We sustain the Examiner’s rejection of claim 20.
Unpatentability of Claim 21
Claim 21 depends from claim 18 and adds the limitation: “further
comprising one or more of an indicia and a decoration printed on the
Appeal 2011-003770
Application 11/479,768
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covering.” Clms. App’x. The Examiner finds that Adair as modified by
Nakayama discloses all of the limitations of claim 21 except for indicia.
Ans. 5. The Examiner alternatively relies on Gottschalk or Bingham as
disclosing that it is well known and conventional to provide indicia and/or
decorations on footwear. Id. The Examiner concludes that it would have
been obvious to a person of ordinary skill in the art at the time of the
invention to provide indicia on the modified Adair footwear. Id. A person
of ordinary skill would have been motivated to do this for advertisement or
amusement. Id.
Appellants argue that, while it may be well known to have indicia on
shoes, it is not well known to have indicia or decoration on a shoe covering.
App. Br. 10. Appellants’ argument is not persuasive. We agree with the
Examiner that both Gottschalk and Bingham teach providing indicia that is
applicable to all types of footwear, which would include shoe covers.
Ans. 6.
Moreover, the claim to indicia and decoration relate to the appearance
of the shoe cover and have no mechanical function, and thus cannot be relied
upon for patentability. In re Seid, 161 F.2d 229, 231 (CCPA 1947) (features
that relate to ornamentation only and have no mechanical function
whatsoever cannot be relied upon for patentability of a claim in a utility
patent application.). The details of the indicia are “useful and intelligible
only to the human mind.” See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir.
1994) (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)). They
do not exploit or interrelate with any structural elements of the underlying
shoe cover. Accordingly, we do not find that the indicia and decoration
limitation patentably distinguishes the subject matter of Appellants' claim
and we sustain the Examiner’s rejection of claim 21.
Appeal 2011-003770
Application 11/479,768
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DECISION
The decision of the Examiner to reject claims 1, 4-11, 18, 20 and 21 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)(1)(iv).

AFFIRMED

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