Ex Parte Zake

Board of Patent Appeals and Interferences

May 19, 2008

10412058 (B.P.A.I. May. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YAMUNA ZAKE
____________

Appeal 2008-1095
Application 10/412,058
Technology Center 3700
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Decided: May 19, 2008
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Before DONALD E. ADAMS, LORA M. GREEN, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-17 and 19.1 We have jurisdiction

1 Claims 1 and 19 stand as being objected to by the Examiner (App. Br. 7).
An objection, however, is not reviewable by Appeal to the Board, but may
only be reviewed by petition to the Director. MPEP § 706.01
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Application 10/412,058

under 35 U.S.C. § 6(b). Claims 1, 2, 4, and 6 are representative of the
claims on appeal, and read as follows:
1. In a foot-therapy device having a dome for foot therapy the
improvements consisting essentially wherein the dome is a central,
substantially solid but resilient, substantially spherical dome with a bead rim
about and extending a substantially circular, generally planar base of the
dome that extends substantially across the dome.

2. The device according to claim 1, wherein at least the dome is made of
a resilient material that compresses and/or deforms but does not collapse
under average and/or normal human body weight.

4. The device according to claim 2, and further comprising a blind hole
that extends from the base more than half a height of the dome to a frustrum-
shaped end within the dome, whereby to aid the deformation that does not
collapse under average and/or normal human body weight.

6. A method of foot therapy with the device according to claim 1,
comprising supporting the base and pressing a selected portion of the bottom
of a foot against the dome.

The Examiner relies on the following references:
Voykin US 4,852,553 Aug. 1, 1989
Vanderwoude US 4,196,722 April 8, 1980
Johnson US 6,228,001 B1 May 8, 2001

We affirm-in-part.

DISCUSSION
Claims 1, 2, and 4 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Vanderwoude.
The Examiner relies on Figure 1 of Vanderwoude as disclosing a
device as claimed (see Ans. 3).
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Appellant argues that Vanderwoude “show no rim about a planar base
that extends substantially across the dome and none is described in the
patent.” (App. Br. 10.)
It is axiomatic that in order for a reference to anticipate a claim, every
element and limitation of the claimed invention must be found in a single
prior art reference, arranged as in the claim. Karsten Mfg. Corp. v.
Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
Claim 1 requires “a substantially circular, generally planar base of the
dome that extends substantially across the dome.” Thus, the “generally
planar base” must extend “substantially across the dome.” As neither the
Appellant nor the Examiner point to a definition for substantially in the
Specification, and nor can we find one, the term takes on its ordinary
meaning. Optical Disc Corp. v. Del Mar Avionics, 208 F.3d 1324, 1334
(Fed. Cir. 2000). The ordinary meaning of “substantially”2 is
“[c]onsiderable in . . . degree, amount, or extent.”
Figure 1 of Vanderwoude, relied upon by the Examiner, is reproduced
below.

2 substantially. Dictionary.com. The American Heritage® Dictionary of the
English Language, Fourth Edition. Houghton Mifflin Company, 2004.
http://dictionary.reference.com/browse/substantially (accessed: April 22,
2008).

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Application 10/412,058

Figure 1 is a vertical cross-section of an embodiment of the respiratory
therapy percussion instrument taught by Vanderwoude (Col. 3, ll. 26-28).
As can be seen from the Figure, the base is at the end of the dome, but does
not extend substantially, i.e., a considerable extent, across the bottom of the
dome. Thus, Figure 1 of Vanderwoude as relied upon by the Examiner does
not teach all of the limitations of independent claim 1, and we are compelled
to reverse the rejection.

Claims 1, 2, 4, and 19 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Johnson. As Appellant does not argue claims 2 and 19
separately, they stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner relies on Figures 10 and 11 as disclosing a device
“capable to be used for foot therapy.” (Ans. 3-4.) According to the
Examiner, Johnson teaches that the device consists essentially of “a central
substantially solid but resilient, substantially spherical dome 359 (fig. 11)
with a bead rim 314 (fig. 11) about and extending a substantially circular,
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generally planar base of the dome that extends substantially across the
dome.” (Id. at 4). The Examiner also relies on Johnson for teaching that the
dome is made of a resilient, elastomeric material (id.).
Appellant argues that the Johnson device is not a dome with a rim
around the base (App. Br. 13). According to Appellant, the device in shown
in Figures 10 and 11 of Johnson has a bottom edge 314, not a base that
extends substantially across the dome (id.). Moreover, Appellant asserts, the
lower surface 340 is spaced from the bottom rim 314 by the skirt portion
346, and thus cannot be the claimed base (id.). Appellant also argues that it
is concave, and not planar as claimed, and thus Johnson does not teach a
device having a generally planar base as claimed (id. at 13-14).
Appellant asserts further:
Labeling the interior concave section 342 of the Johnson,
et al. patent in the rejection as the blind hole of claim 4 does not
change this. Only the interior concave section 342 of the
Johnson, et al. patent extends substantially across the dome and,
therefore, only the interior concave section 342 can be in the
place of the base claimed to extend substantially across the
dome and, because the interior concave section 342 is concave,
and not generally planar, as claimed, it cannot anticipate
identically the claimed base as required for the rejection with or
without the addition of the blind hole of claim 4 that, by law
(35 USC 112) includes the base of claim 1.

(Id. at 14.)
Figure 11 of Johnson is reproduced below.
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Figure 11 is a sectional view of one of the embodiments the exercise device
of Johnson, a perspective view of which may be seen in Figure 10 of
Johnson (Johnson, col. 3, ll. 14-17). As can be seen from the drawing, the
lower surface 340 has a concave section 342 (col. 5, ll. 60-61). We find that
the lower concave surface 340 reads on the “generally planar base of the
dome that extends substantially across the dome” of claim 1.
Our mandate is to give claims their broadest reasonable interpretation.
In re American Academy of Science Tech Center, 367 F.3d 1359, 1364 (Fed.
Cir. 2004). “An essential purpose of patent examination is to fashion claims
that are precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claim scope be removed, as much as possible, during the
administrative process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
We cannot find a definition for “generally” in the Specification, the
term thus takes on its ordinary meaning. The ordinary meaning of
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generally3 is “for the most part” or “without reference to particular instances
or details; not specifically.” Thus, given its broadest reasonable
interpretation, a “generally planar base” reads on the lower surface of the
device as shown in Figure 11 of Johnson, as the concave surface is
generally, that is, not specifically, but is for the most part, planar. In
addition, the lower surface extends substantially, in this case, all the way
across the lower surface of the dome. Moreover, Appellant’s argument that
lower surface 340 is spaced from the bottom rim 314 by the skirt portion 346
is unavailing, as the lower surface 340 is at the bottom of the dome as can be
seen in the Figure.
The outcome is different, however, as to claim 4. Claim 4 requires “a
blind hole that extends from the base more than half a height of the dome to
a frustrum-shaped end within the dome.” As we find that the concave lower
surface 314 is the generally planar base as required by claim 1, it cannot not
also serve as the blind hole. Thus, Johnson does not teach all of the
limitations of claim 4, and we reverse the rejection as to that claim.
Appellant argues further that the device of Johnson is drawn for use
by the hand, wrist, and art, and is thus not a foot-therapy device (App. Br.
13). Claim 1, however, is drawn to a device, and the statement that it is
drawn to a foot therapy device is merely intended use, and not a patentable
limitation.
Thus, in summary, we affirm the rejection as to claims 1, 2, and 19,
but reverse as to claim 4.

3 generally. Dictionary.com. The American Heritage® Dictionary of the
English Language, Fourth Edition. Houghton Mifflin Company, 2004.
http://dictionary.reference.com/browse/generally (accessed: April 22, 2008).

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Claims 1-6, 8, 10, 12, 14, 16, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over the combination of Voykin and Johnson.
Appellant argues claims 2, 4, and 5 separately from claim 1. Thus, claims 3,
6, 8, 10, 12, 14, 16, and 19 stand or fall with claim 1. 37 C.F.R. §
41.37(c)(1)(vii).
As to claim 1, we found above that Johnson anticipates claim 1. As
anticipation is the epitome of obviousness, In re McDaniel, 293 F.3d 1379,
1385 (Fed. Cir. 2002), we affirm this rejection as well. As claims 3, 6, 8, 10,
12, 14, 16, and 19 stand or fall with claim 1, we affirm the rejection as to
those claims as well.
As to claims 2, 4, and 5, Appellant argues that the combination
ignores “the stability of claim 2 and the hole of claims 4 and 5, which are
part of the claimed invention as a whole.” (App. Br. 16.)
As to claim 2, as noted by the Examiner, Johnson teaches that the
dome is made of a resilient, elastomeric material (Ans. 4). The ability of the
material to collapse and/or deform but not collapse under average body
weight would be an inherent characteristic of the material. Thus, Johnson
teaches the added limitation of claim 2, as we affirm the rejection as to that
claim.
As to claims 4 and 5, we found above that Johnson does not teach a
blind hole as required by those claims. As Voykin does not remedy that
deficiency of Johnson, the rejection is reversed as to claims 4 and 5.

Claims 7, 9, 11, 13, 15, and 17 stand rejected under 35 U.S.C.
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§ 103(a) as being obvious over the combination of Voykin and Johnson as
further combined with McClain.
As Appellant does not argue the merits of this rejection (see App. Br.
18), this rejection is summarily affirmed.

CONCLUSION
In summary, we: reverse the rejection of claims 1, 2, and 4 under 35
U.S.C. § 102(b) as being anticipated by Vanderwoude; affirm the rejection
of claims 1, 2, and 19 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Johnson, but reverse the rejection as to claim 4; affirm the
rejection of claims 1-3, 8, 10, 12, 14, 16, and 19 under 35 U.S.C. § 103(a) as
being obvious over the combination of Voykin and Johnson, but reverse as
to claims 4 and 5; and affirm the rejection of claims 7, 9, 11, 13, 15, and 17
stand rejected under 35 U.S.C. § 103(a) as being obvious over the
combination of Voykin and Johnson as further combined with McClain.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART

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