Ex Parte Walsh

Patent Trial and Appeal Board

Sep 27, 2016

12981413 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/981,413 12/29/2010
27550 7590 09/28/2016
WALTERJ. TENCZA JR.
100 Menlo Park
Suite 210
Edison, NJ 08837
FIRST NAMED INVENTOR
Brendan Walsh
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.
Walsh- 1 6511
EXAMINER
CARTER, CAMERON A
ART UNIT PAPER NUMBER
3765
MAILDATE DELIVERY MODE
09/28/2016 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 BRENDAN WALSH
Appeal2014-008744
Application 12/981,413
Technology Center 3700
Before KEN B. BARRETT, BRANDON J. WARNER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
Appeal2014-008744
Application 12/981,413
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An apparatus comprising:
a retaining device; and
a plurality of flexible spike devices, which have memory
of form so that each of the plurality of flexible spike devices is
adapted to be flexed by a flexing force to change from a rest state
into a deformed state, and when the flexing force is removed,
each of the plurality of flexible spike devices returns to a rest
state;
wherein the retaining device is adapted to be temporarily
attached to a shoe;
wherein the retaining device is adapted so that the plurality
of spike devices is adapted to be attached or detached from the
retaining device, while the retaining device is temporarily
attached to the shoe;
wherein the retaining device has a toe end and a heel end;
wherein the retaining device has a plurality of first
chambers and second chambers;
wherein each of the plurality of first chambers leads to a
corresponding one of the plurality of second chambers;
wherein each of the plurality of first chambers is
substantially smaller than each of the plurality of second
chambers;
wherein the retaining device is adapted to be temporarily
attached to the shoe so that each of the plurality of second
chambers lies between the shoe and one of the plurality of first
chambers;
wherein each of the plurality of flexible spike devices
includes a top portion, a middle portion, and a base portion;
wherein in a non compressed state, each of the top portions
of each of the flexible spike devices has an area substantially
larger than each of the plurality of first chambers;
wherein in a compressed state, each of the top portions of
each of the flexible spike devices has an area which is less than
or equal to each of the plurality of first chambers so that each of
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Application 12/981,413
the top portions is adapted to be inserted into and through each
of the plurality of first chambers;
wherein each of the flexible spike devices is adapted to be
inserted into the retaining device so that each of the top portions
sits within one of the plurality of second chambers while
simultaneously each of the middle portions sits within one of the
plurality of first chambers;
wherein the retaining device comes in contact with a sole
of the shoe at a plurality of regions, each of the plurality of
regions immediately adjacent one of the plurality of second
chambers, when the retaining device is temporarily attached to
the shoe without any of the flexible spike devices being inserted
into the retaining device; and
wherein the retaining device comes in contact with the sole
of the shoe at the plurality of regions, when the retaining device
is temporarily attached to the shoe, and with the flexible spike
devices inserted into the retaining device, so that each of the top
portions sits within one of the plurality of second chambers while
simultaneously each of the middle portions sits within one of the
plurality of first chambers.
REJECTIONS 1
1) Claims 3 and 11 are rejected under 35 U.S.C. § 102(b) as
anticipated by Larson (US 2005/0198860 Al, pub. Sept. 15, 2005).
1 The Examiner rejected claims 1 and 9 under 35 U.S.C. § 112, second
paragraph, stating that a limitation recited in both claims, "can be", is
indefinite. Final Act. 2-3. On February 19, 2014, Appellant filed, with the
Appeal Brief, an amendment removing the phrase "can be" from claims 1
and 9. Adv. Act. 1; see Appeal Br. 23-24, 26-27 (Claims App.). The
Examiner entered the amendment. Id. The Examiner did not explicitly
withdraw this rejection in the Answer. We assume the rejection is
effectively withdrawn, and thus do not consider it as being before us for
review, because Appellant and the Examiner both address claims 1 and 9, as
amended, in the Appeal Brief and Answer. Appeal Br. 17-18; Ans. 3.
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Application 12/981,413
2) Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Larson.
3) Claims 1, 2, 4, 6-10, 12, and 14--16 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Larson and Bell (US 6,154,982, iss.
Dec. 5, 2000).
4) Claims 5, 13, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Larson, Bell, and Lee Tsai (US 2008/0301973
Al, iss. Dec. 11, 2008).
5) Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Larson, Bell, and Tymchyn (US 2004/0254034
Al, pub. Dec. 16, 2004).
DISCUSSION
Rejection 1: Claims 3 and 11: Anticipation by Larson
The Examiner finds that Larson discloses all the limitations of claims
3 and 11. Final Act. 4--6. Among the Examiner's specific findings are that
Larson's retaining device 10 "has a periphery (14)," "a first pull tab (34)"
that "projects out from the periphery a first distance," and "a second pull tab
(38)" that "projects out from the periphery a second distance." Id.
Appellant contends the Examiner erred with respect to both claim 3 and
claim 11 because "pull tabs 34 and 38 of Larson do not project out from
peripheral band 14, but rather are part of peripheral band 14." Appeal Br. 14
(referring to Larson, Fig. lb), 15. For the following reasons, we do not
sustain the rejection.
Larson discloses anti-slip overshoe 10 that "is worn over other
footwear." Larson i-fi-121-22, Fig. 2. Larson discloses that the overshoe
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Application 12/981,413
"includes a contour outer band or outer ring structure 14." Id. if 24, Fig. lb.
Overshoe 10 also has opening 32 in toe portion 34 and opening 36 in heel
portion 38. Id. iii! 41, 43. Opening 32 and opening 36 as well as toe portion
34 and heel portion 38 are contained within outer ring structure 14. See id.,
Fig. 1 b. Consequently, the Examiner's findings that Larson discloses "a first
pull tab 34" that "projects outward from the periphery" and "a second pull
tab 38" that "projects outward from the periphery" is not supported by a
preponderance of the evidence. We, thus, do not sustain the rejection of
claims 3 and 11 as anticipated by Larson.
Rejection 2: Claim 20: Obviousness over Larson
Claim 20 is dependent on claim 3. Appeal Br. 31 (Claims App.). The
Examiner's rejection of this claim relies on the same unsupported findings
discussed above, and hence this rejection is likewise deficient. We do not
sustain the rejection of claim 20 for the same reasons as stated above for
claim 3.
Rejection 3: Claims 1, 2, 4, 6--10, 12, and 14-16:
Obviousness over Larson and Bell
The Examiner finds that Larson teaches certain limitations of
independent claims 1 and 9 but does not disclose the "retaining device has a
plurality of first chambers and second chambers," other recitations
associated with the plurality of first and second chambers, and "the plurality
of flexible spike devices includ[ing] a top portion, a middle portion and a
base portion" and other recitations associated with the plurality of flexible
spike devices. Final Act. 7-9, 12-15. The Examiner finds that Bell "teaches
an attachment device (20 of Bell) for footwear containing a plurality of
spikes" and "the retaining device (20 of Bell) has a plurality of first
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Application 12/981,413
chambers (90 of Bell) ... and second chambers (portion above 90 of Bell)."
Id. at 9; Ans. 3. The Examiner finds that Bell's base member 86 is the
recited top portion of the flexible spike devices, elongated fingers 92 are the
recited middle portion, and projection member 88 is the recited base portion.
Final Act. 7, 9-10; Ans. 3. The Examiner concludes that "it would have
been obvious to ... have constructed the retaining device of Larson with two
chambers as taught by Bell in order to provide a snug fit for the removable
spike devices." Id. at 11, 15.
Appellant contends that Bell's spike devices do not have top portions
inserted into and through Bell's first chamber 90. Appeal Br. 17 (referring
to Bell's Fig. 4). Appellant contends that Bell's base member 86 "is not
adapted to be 'compressed' to be inserted into and through aperture 90, and
there is no disclosure whatsoever in Bell ... that base member 86 is
compressed or that it can be compressed to any appreciable extent." Id. at
17-18. Appellant further contends that in order to attach Bell's spike to the
attachment device, "one must remove the entire attachment device 20 from a
shoe and then insert the base member 86 through the top of pad 28." Id. at
28.
The Examiner responds that top portion 86 "must be compressed"
when placed inside the chamber, "any material with a force exerted on it is
'compressed' even just a little," and the recitation "adapted to be inserted
into and through each of the plurality of first chambers" is merely an
"intended use limitation[]." Ans. 3. The Examiner asserts, without
elaboration or explanation, that "[t]he spike devices of Bell can be inserted
into the retaining device and taken out of the retaining device while the
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Application 12/981,413
retaining device is on the footwear." Final Act. 10. For the following
reasons, we do not sustain the rejection.
Bell discloses footwear attachment device 20. Bell, col. 3, 1. 49.
Device 20 fits over a shoe. Id., Fig. 2. Bell's device 20 contains spikes 84
each consisting of base member 86, projection member 88, and elongated
fingers 92. Id. at col. 6, 11. 7-24, Fig. 4. Bell does not disclose that base
member 86 is inserted into and through aperture 90. Rather, as shown in
Bell's Figure 4, the elongated fingers are placed through aperture 90 on the
bottom of device 20 and snap connect to base member 86 on the side of
device 20 opposite to aperture 90. See id. at col. 6, 11. 25-34, Fig. 4. Base
member 86 is inserted into device 20 from the top in the area that is in
contact with a shoe when device 20 is attached thereto. Id., Figs. 2, 4.
Bell discloses that base member 86 and projection member 88 are
"preferably molded of a plastic material." Id. at col. 6, 11. 8-9. The
Examiner does not direct us to any disclosure in Bell concerning whether
base member 86 can be compressed. Therefore, the Examiner's findings
that Bell's base member 86 "in a non-compressed state ... has an area
substantially larger than each of the plurality of first chambers" and "in a
compressed state ... has an area which is less than or equal to the each of
the plurality of first chambers so that [base member] 86 is adapted to be
inserted into and through each of the plurality of first chambers" are not
supported by a preponderance of the evidence. Likewise, the finding that
spikes 84 can be attached or detached from retaining device 20 while
retaining device 20 is attached to a shoe is not supported by Bell. As the
rejection of claims 1 and 9 is based on unsupported factual findings, the
conclusion of obviousness cannot stand. See In re Warner, 379 F.2d 1011,
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Application 12/981,413
1017 (CCPA 1967) (Holding that "[t]he legal conclusion of obviousness
must be supported by facts. Where the legal conclusion is not supported by
facts it cannot stand."). We, thus, do not sustain the rejection of independent
claims 1 and 9. We also do not sustain the rejection of claims 2, 4, and 6-8,
which are dependent on claim 1, and claims 10, 12, and 14--16, which are
dependent on claim 9.
Rejections 4 and 5: Claims 5, 13, and 17-19:
Obviousness over Larson and Bell, with either Lee Tsai or Tymchyn
The Examiner rejects claim 5, which is dependent on claim 1, and
claims 13 and 17-19, which are dependent on claim 9, based on various
combinations of Larson and Bell with one of Lee Tsai and Tymchyn. Final
Act. 4--8. The Examiner does not rely on Lee Tsai or Tymchyn to cure the
deficiencies in the combination of Larson and Bell noted above in
connection with claims 1 and 9. Consequently, we do not sustain the
rejections of claims 5, 13, and 17-19 for the same reasons as stated above.
DECISION
The Examiner's decision rejecting claims 1-20 is reversed.
REVERSED
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