Ex Parte Weiland

Board of Patent Appeals and Interferences

Aug 25, 2008

11025708 (B.P.A.I. Aug. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DENNIS E. WEILAND
____________

Appeal 2008-1250
Application 11/025,708
Technology Center 3700
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Decided: August 25, 2008
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Before WILLIAM F. PATE III, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

Opinion by MOHANTY, Administrative Patent Judge.

Dissenting opinion by PATE, Administrative Patent Judge

DECISION ON APPEAL

Appeal 2008-1250
Application 11/025,708

STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 3, 5-15, 17-18, and 20-27. Claims 2, 4, 16, and 19
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
The Appellant’s claimed invention is directed to footwear with an
insole support device comprising a visco-elastic material having a sufficient
density and thickness to provide uniform pressure when compressed.
(Specification [010]). Claim 1, reproduced below, is representative of the
subject matter of appeal.
1. An insole support device adapted to footwear comprising: a visco-
elastic material having a thickness of at least three inches when not
compressed to provide a relatively uniform pressure to an insole of a
person's foot when compressed between the person's foot and
footwear.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Vacanti US 4,700,403 Oct. 20, 1987
Sandvig US 4,888,225 Dec. 19, 1989
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Sessa US 5,469,639 Nov. 28, 1995
Lamont US 5,797,862 Aug. 25, 1998
Boncutter US 2003/0088998 A1 May 15, 2003

The following rejections are before us for review:
1. Claims 1, 13, and 15 are rejected under 35 U.S.C. § 102(b) as
anticipated by Boncutter.
2. Claims 1, 3, 6, 10-15, 17-18, 21, 25, and 26 are rejected under
35 U.S.C. § 102(b) as anticipated by Sandvig.
3. Claims 3, 5-6, 10-11, 14, 18, and 20-21 are rejected under
35 U.S.C. § 103(a) as unpatentable over Boncutter in view of Sessa.
4. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Boncutter in view of Vacanti.
5. Claims 7, 22, and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sandvig and Vacanti.
6. Claims 8-9 and 23-24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sandvig, Vacanti, and Lamont.

FINDINGS OF FACT
We find the following enumerated findings of fact are supported at
least by a preponderance of the evidence1:

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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1. Boncutter discloses an article of footwear with an inner structure
made from thermoplastic resins and rubber [0025].
2. Sandvig discloses an article of footwear with a base foam block 32
made from resin-impregnated foam (Col. 16:30).
3. Sessa discloses that polyurethane may be used as shoe insert to
provide a resilient and soft material (Col. 2:20-25). The insert is surrounded
by a harder skin (Col. 4:2-9).
4. Vacanti discloses a foot cushion which uses an initially compressed
pad sealed in a case (Col. 2:41-43, Fig. 22). The pad may be made from
polyurethane (Col. 4:18-21).

PRINCIPLES OF LAW
Principles of Law Relating to Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631, (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

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Principles of Law Relating to Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18,
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”) In KSR, the Supreme Court
emphasized “the need for caution in granting a patent based on the
combination of elements found in the prior art,” id. at 1739, and discussed
circumstances in which a patent might be determined to be obvious.

ANALYSIS
Rejections made under Boncutter
The Appellant argues that the rejection of claims 1, 13, and 15 as
anticipated by Boncutter is improper because the reference contains an
obvious error (Br. 11, 16). The Appellant argues that Boncutter discloses
the sole of the shoe to have a thickness of 12” where the related applications
all disclose a thickness of 1.5”. The Examiner states that one of ordinary
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skill in the art “may not necessarily consider such a thickness to be a
typographical error in that thick soles….have been known for years” (Ans.
5).
We agree with the Appellant. “[T]he examiner bears the initial
burden, on review of the prior art or on any other ground, of presenting a
prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). Here, the Examiner has not established a prima facie case
of anticipation with regard to the thickness of the Boncutter insole. “A
claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
631 (Fed. Cir. 1987). The Examiner has provided no description of the
Boncutter reference in the Claim Rejection section (Ans. 3). In the
Response section the Examiner states that in the Boncutter reference the
insole layer 30 “may well have been 12 inches thick, there is nothing in
Boncutter which would preclude such a thickness” (Ans. 6). As the
Examiner takes the position that the insole may be 12 inches thick, a prima
facie case of anticipation by express teaching or inherency has not been
established and we will not sustain the rejection. “Inherency, however, may
not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient.’”
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted)
(internal quotation marks omitted).
For the above reasons the rejection of claims 1, 13, and 15 as
anticipated by Boncutter is not sustained.
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The rejection of claims 3, 5-6, 10, 11, 14, 18, and 20-21 under 35
U.S.C. § 103(a) as unpatentable over Boncutter and Sessa fails to cure the
deficiency of the disclosure of the thickness of insole discussed above and
the rejection of these claims is not sustained.
The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable
over Boncutter and Vacanti fails to cure the deficiency of the disclosure of
the thickness of insole discussed above and this rejection of the claim is not
sustained.

Rejections made under Sandvig
The Appellant argues that the rejection of claims 1, 13, and 15 as
anticipated by Sandvig is improper because Sandvig does not disclose the
use of a “viscoelastic material” (Br. 16). The Examiner has determined that
Sessa’s resin-impregnated foam meets this limitation (Ans. 6).
We disagree with the Appellant. We determine the scope of the
claims in patent applications “not solely on the basis of the claim language,
but upon giving claims their broadest reasonable construction ‘in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc)
(quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004)). Here, the Appellant’s Specification describes that the “visco-elastic
material” is of a “plastic foam type” (Spec. 2:9-11). Giving the term
“viscoelastic material” its broadest reasonable interpretation in light of the
Specification we find it to encompass “resin-impregnated foam” as that
disclosed by Sandvig (FF 2) since that is plastic foam as well.
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For the above reasons the rejection of claims 1, 13, and 15 as
anticipated by Sandvig is sustained.
The Appellant has not separately argued the rejection of claims 3, 6,
10-12, 14, 17-18, 21, 25, and 26 under 35 U.S.C. § 102(b) as anticipated by
Sandvig and accordingly the rejection of these claims is sustained as well.
The Appellant has not separately argued the rejection of claims 7, 22, and 27
under 35 U.S.C. § 103(a) as unpatentable over Sandvig and Vacanti and
accordingly the rejection of these claims is sustained as well. The Appellant
has not separately argued the rejection of claims 8-9 and 23-24 under 35
U.S.C. § 103(a) as unpatentable over Sandvig, Vacanti, and Lamont and
accordingly the rejection of these claims is sustained as well.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1, 13, and 15 under 35 U.S.C. § 102(b) as anticipated by
Boncutter.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1, 3, 6, 10-15, 17-18, 21, 25, and 26 under 35 U.S.C.
§ 102(b) as anticipated by Sandvig.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 3, 5-6, 10-11, 14, 18, and 20-21 under 35 U.S.C. § 103(a) as
unpatentable over Boncutter in view of Sessa.
We conclude that Appellant has shown that the Examiner erred in
rejecting claim 7 under 35 U.S.C. § 103(a) as unpatentable over Boncutter in
view of Vacanti.
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We conclude that Appellant has failed to show that the Examiner
erred in rejecting claims 7, 22, and 27 under 35 U.S.C. § 103(a) as
unpatentable over Sandvig and Vacanti.
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claims 8-9 and 23-24 under 35 U.S.C. § 103(a) as
unpatentable over Sandvig, Vacanti, and Lamont.

DECISON
The Examiner’s rejection of claims 1, 3, 6-15, 17-18, and 21-27 is
SUSTAINED. The Examiner’s rejection of claims 5 and 20 is REVERSED.
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) (2007).

AFFIRMED-IN-PART

DISSENTING OPINON
WILLIAM F. PATE, III, Administrative Patent Judge, dissenting.
I respectfully dissent from all portions of the decision that affirm any
rejections based on Sandvig. Appellant argues that Sandvig does not disclose
a visco-elastic material, and Appellant is correct. A visco-elastic material is
a material that tends to flow or creep under load (the visco part) but will
return to its previous shape (the elastic part) once the load has been
removed. The materials come in many forms. Familiar types of these
materials include gels, solid pads of rubber-like materials, and famously,
foams, such as memory foams used in mattresses and pillows. When
Appellant states that his visco-elastic material is “of a plastic foam-type for
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suitably distributing the pressure from a high pressure area[s] over a
relatively large area contacted by the support device” [0002], he is only
stating the type or form of visco-elastic material that it is.
Sandvig discloses a foam impregnated with an isocyanate which is
curable by water. Sandvig is essential rigid in use, i.e., after the splint has
been shaped around a limb and cured. See col. 3, ll. 21-25. Sandvig
discusses rigidity at col. 3, ll. 25-33. The curable foam splint material of
Sandvig is obviously related to the curable cast and splint materials that
were the subject of the Minnesota Min. and Mfg. Co. v. Johnson & Johnson
Orthopaedics, Inc.,willful damages case of the 1990s. See 976 F.2d 1559
(Fed. Cir. 1992).
Thus, Sandvig is not even resilient or elastic in use, but rather,
essential rigid, to provide orthopedic support and stability to an injured
extremity. In no way can it be considered as a visco-elastic material.
Boncutter discloses a sandal or the like with an insole of a vinyl foam.
Here, the material is simply a compressible or elastomeric foam. Although
Boncutter describes the material in detail, he never states that the material
has any visco-elastic properties, and he would be surprised, indeed, to have
us so find.
I also differ with my colleagues in their finding that any polyurethane
foam is anticipatory or renders obvious the specific type of polyurethane that
is visco-elastic, such as the type of polyurethane that so-called memory
foams are fabricated from.

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JRG

VENABLE, CAMPILLO, LOGAN & MEANEY, P.C.
1938 E. OSBORN RD
PHOENIX, AZ 85016-7234
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