Ex Parte Rieber

Patent Trial and Appeal Board

Nov 9, 2016

13036698 (P.T.A.B. Nov. 9, 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.
13/036,698 02/28/2011 MICHAEL RIEBER 1612 MR 01 CIP 5440
75207 7590 11/10/2016
Gearhart Law LLC
41 River Road
Suite 1A
Summit, NJ 07901
EXAMINER
CONLEY, FREDRICK C
ART UNIT PAPER NUMBER
3673
MAIL DATE DELIVERY MODE
11/10/2016 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 MICHAEL RIEBER
____________________

Appeal 2014-008036
Application 13/036,698
Technology Center 3600
____________________

Before: CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
GORDON D. KINDER, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1 and 5–17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2014-008036
Application 13/036,698

2
CLAIMED SUBJECT MATTER
The claims are directed to a heel support. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1 A cushioned heel support, comprising:
a sleeve having a top surf ace and a bottom surface; and
a cushioning material disposed within said sleeve, said
cushioning material having a 50% compression force deflection
in a range of 2.5 to 4 psi, a 25% compression force deflection in
a range of 0.25 psi to 1 psi, wherein the cushioning material has
a thickness in a range of 0.25 inches to 2 inches and the
cushioning material has a compression set characteristic such
that after being compressed to 50% of an original thickness for
22 hours, the material returns to 100% of said original thickness.

REJECTIONS
Claims 1, 5, 8–11, 13, 14, and 171 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Schecter (U.S. 6,988,286 B2) and PU
Magazine (Vol. 4, No. 5 Oct. 2007).
Claims 6 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schecter, PU Magazine, and Cooper (U.S. 5,896,603).
Claims 7 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schecter, PU Magazine, and Kaiserman (U.S.
6,311,350B1)
Claim 16 is rejected under 35 U.S.C. 103(a) as being unpatentable
over Schecter, PU Magazine, and Lilley (U.S. 5,855,415).

1 Claim 17 was omitted from the rejection statement but discussed in the
rejection. Final Act. 2.
Appeal 2014-008036
Application 13/036,698

3
OPINION
Appellant’s arguments are grouped according to the rejections, with
substantive arguments presented only for the first grouping and the
remaining groupings argued based on dependency. See 37 C.F.R.
§ 41.37(c)(iv).
At the outset we must reject Appellant’s contention that a dispositive
issue in this case is whether it would have been obvious to select the two
particular stress ranges recited in each of the independent claims before us,
claims 1 and 17. See App. Br. 12; dec’l. 3. The Examiner’s position, which
does not appear to be disputed, is that it would have been obvious to use the
material Akton, which was known for use in cushions and pads, in
Schecter’s device. Final Act. 2 (citing PU Magazine 268, 270). This, in
combination with selecting a particular size for Schecter’s device, would
yield the claimed subject matter because the so-called stress ranges of claims
1 and 17 are latent properties of the Akton material. Final Act. 2–3; Ans.
6–8; see Spec. 10–12 (confirming the properties of Akton).2 It is not
dispositive that the particular properties are not expressly disclosed in the
prior art or form the basis for the material selection process. “What matters

2 See, e.g., In re Thorpe, 777 F. 2d 695, 697-99 (Fed. Cir. 1985)(admissions
in an applicant’s own specification indicating that the applicant’s claim
distinguish from the prior art by merely reciting latent properties or
characteristics of an old product, may be used against an applicant to reject
those claims.); see also Elan Pharmaceuticals, Inc. v. Mayo Foundation, 304
F.3d 1221 (Fed. Cir. 2002), J. Dyk, dissenting (distinguishing inherency
from hindsight)(vacated on other grounds at 314 F.3d 1299 (Fed. Cir. 2002)
(en banc)).

Appeal 2014-008036
Application 13/036,698

4
is the objective reach of the claim. If the claim extends to what is obvious, it
is [unpatentable] under § 103.” KSR Int’l. v. Teleflex 127 S. Ct. 1727, 1742
(2007).
Appellant’s next contention, that the thickness of a cushion was not a
known result-effective variable (App. Br. 13–14) is clearly contradicted by
the record. Schecter expressly acknowledged that the thickness of the
cushion, and its size generally, were parameters to be determined, providing
a figure, a discussion, and some examples regarding selecting the filler and
overall cushion thicknesses. See Schecter Fig. 10; col. 9, l. 54–col.10, l. 15.
We agree with and adopt as our own the Examiner’s analysis of the
Kalyon Declaration. Ans. 9–10. In particular, in addition to discussing the
issues addressed above, it consists largely of opinion testimony that the
claimed subject matter would not have been obvious, without factual
supporting evidence. “[A]n expert’s opinion on the legal conclusion of
obviousness is neither necessary nor controlling.” Avia Group Intern., Inc.
v. L.A. Gear Calif., Inc., 853 F.2d 1557, 1564 (Fed. Cir. 1988). We also
note that we agree with the Examiner’s characterization of the disclosure of
Schecter spanning columns 7 and 8. See Final Act. 2. Although Schecter
uses the term “hardness” it is clear that Schecter is not referring to an
indentation type hardness, as Appellant contends (dec’l 3–4), because
Schecter is expressing values in units of force, Newtons, as opposed to
indentation hardness (e.g., Rockwell, Vickers, Shore, or Brinell).
On the record before us, we agree with the Examiner that the evidence
of obviousness outweighs the evidence against.
Appeal 2014-008036
Application 13/036,698

5
DECISION
The Examiner’s rejections 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED