Ex Parte Zolotnik

Board of Patent Appeals and Interferences

Jan 26, 2009

10867964 (B.P.A.I. Jan. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VLADAMIR ZOLOTNIK
____________

Appeal 2008-6102
Application 10/867,964
Technology Center 3700
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Decided: January 26, 2009
____________

Before JAMESON LEE, SALLY LANE and SALLY C. MEDLEY,
Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.

DECISION ON APPEAL
A. Statement of the Case
Vladamir Zolotnik (“Zolotnik”), the real party in interest, seeks review
under 35 U.S.C. § 134(a) of a Final Rejection of claims 1 and 3-12, 14-171.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The Examiner withdrew the Final Rejection of claim 13. (Ans. 2-3).
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Zolotnik’s invention is a reusable basin with a disposable liner. The
basin is formed of a rigid material layer and is defined by a floor and
peripheral wall. The liner is a liquid impermeable layer and is defined by a
liner floor and liner peripheral wall and a protrusion formed on the liner
floor. (Spec. 5-8, 16; figs. 1, 2B, 7, 8B, 13-15).
Representative claim 8, reproduced from the Claim Appendix of the
Appeal Brief, reads as follows:
In combination:
a reusable basin; and
a single use liner;
said basin comprising
a substantially rigid material layer formed to define a
basin floor and a basin peripheral wall projecting upwardly
from said basin floor, said basin floor and peripheral wall
forming a boundary around a basin cavity;
said liner comprising:
a liquid impermeable material layer formed to define a
liner floor and a liner peripheral wall projecting upwardly from
said liner floor, said liner floor and peripheral wall forming a
boundary around a liner cavity;
said liner floor defining a left foot area and a right foot
area; and
a protrusion formed on said liner floor protruding into
said liner cavity; and wherein
said liner floor and peripheral wall are dimensioned to allow
said liner to be removably accommodated in said basin cavity
supported by said basin floor and peripheral wall.

The Examiner relies on the following prior art in rejecting the claims on
appeal:
Garcia 6,772,800 Aug. 10, 2004
Guiste 6,085,367 Jul. 11, 2000
Friedson et al. (‘Friedson”) 4,513,735 Apr. 30, 1985
Cassidy 2,904,037 Sept. 15, 1959
Reimers 430,195 Jun. 17, 1890
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The Examiner rejected the following claims as unpatentable under 35
U.S.C. § 103(a):
claims 8-12, 16 and 17 over Garcia and Friedson;
claims 14 and 15 over Garcia, Friedson and Cassidy;
claims 1, 3-6, 8-12, 16 and 17 over Garcia, Friedson and Guiste;
claim 7 over Garcia, Friedson, Guiste and Cassidy;
claims 8-12, 16 and 17 over Friedson and Reimers; and
claims 1, 3-6, 8-12 16 and 17 over Friedson, Reimers and Guiste.
B. Issues
Does Zolotnik show that Garcia is not prior art?
Does Zolotnik show that the Examiner erred in determining obviousness
on the basis that there is no teaching, suggestion or motivation to combine
the teachings of Garcia and Friedson?
Does Zolotnik show that Garcia and Friedson provide a teaching away?
Does Zolotnik show that Guiste is non-analogous art?
C. Findings of Fact (“FF”)
Zolotnik
1. The instant application is a divisional Application of Application No.
10/421,406 filed on April, 22, 2003. (Spec. 1).
2. Application No. 10/421,406 is a continuation-in-part of Application No.
10/191,263, filed July 05, 2002. (Spec. 1).
3. Zolotnik admits that parent Application No. 10/191,263 fails to fully
support claim 8 because it does not disclose the “protrusion”. (Reply
Br. 4).
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Zolotnik’s parent Application 10/191,263
4. Zolotnik’s ‘263 Application describes a disposable liner that is shaped
to conform to the interior of a commercially available salon soaking
basin. (Spec. 2).
5. Zolotnik describes an example of a salon soaking basin with a reservoir
that is an elongate heart shape to fit two feet comfortably side by side.
(Spec. 3; fig. 1).
6. Zolotnik describes another example of a salon soaking basin with an
oblong shaped. (Spec. 4; fig. 2).
7. Zolotnik does not describe the thickness of the liner.
8. Zolotnik does not describe the liner or basin having a protrusion on the
floor of the liner into the liner reservoir (i.e., cavity).
Garcia
9. Garcia’s Application No. 10/348,806, corresponding to Patent No.
6,772,800, was filed on January 23, 2003.
10. Referring to figure 1, [numbers from figure 1 inserted], Garcia
describes a pedicure basin [10] with a rigid shell that is covered with a
liner [20]. (Col. 2, ll. 37-54).
11. The liner [20] conforms to the interior volume of the pedicure basin
[10]. (Col. 3, ll. 5-10, 24-28).
12. Liner [20] is made of a thin water impervious material such as plastic or
paper. (Col. 2, ll. 54-58).
13. Liner [20] is preferably made of plastic having a thickness of
substantially 0.7 to 0.8 millimeters. (Col. 2, ll. 60-62).
14. Liner [20] can be rigid, where it is shaped as if it is meant to stack upon
and within the pedicure basin [10]. (Col. 3, ll. 20-23).
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Figure 1, reproduced from Garcia’s figure 2, is below.

Figure 1 depicts a basin and a conformable liner.
Friedson
15. Referring to figure 2, [numbers from figure 2 inserted], Friedson
describes a foot massage unit including an upper casing [10a] made of
high grade molding plastic. (Col. 3, ll. 41-46).
16. Upper casing [10a] includes a pair of foot receiving stations [12]
indented into floor [11], providing a ridge [13] between the stations
[12]. (Col. 3, ll. 50-52).
17. The surfaces of the foot receiving stations [12] are provided with a
plurality of protuberances or stimu-nodes [14]. (Col. 3, ll. 57-60).
Figure 2, reproduced from Friedson’s figure 1, is below.

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Figure 2 depicts a foot massage unit.
Guiste
18. Guiste describes an economical and disposable bathtub liner that is 3-5
mils thick. (Col. 5, ll. 56-60).
C. Principles of Law
“Claims found in a later-filed application are entitled to the filing date of
an earlier application if . . . the disclosure in the earlier application provides
an adequate written description of the later-filed claims under 35 U.S.C. 112,
¶ 1.” In re Curtis, 354 F.3d 1347, 1351 (Fed. Cir 2004). “[T]he disclosure
of the earlier application, the parent, must reasonably convey to one of skill
in the art that the inventor possessed the later-claimed subject matter at the
time the parent application was filed.” “A disclosure . . . that merely renders
the later-claimed invention obvious is not sufficient . . . .” Tronzo v.
Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (citations omitted).
In KSR, the Supreme Court rejected the rigid application of the “teaching
suggestion or motivation” (TSM) test, instead favoring the “expansive and
flexible approach” used by the Court. KSR Int’l Co. v. Teleflex Inc., 127
S.Ct. 1727, 1739 (2007).
In an obviousness analysis, it is not necessary to find precise teachings in
the prior art directed to the specific subject matter claimed because
inferences and creative steps that a person of ordinary skill in the art would
employ can be taken into account. Id. at 1741.
“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 1742.
“In the patentability context, claims are to be given their broadest
reasonable interpretations” and “limitations are not to be read into the claims
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from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (citation omitted).
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference's disclosure is unlikely to be
productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
“Two separate tests define the scope of analogous prior art: (1) whether
the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004).
D. Analysis
Obviousness of Claims 8-12, 16 and 17 over Garcia and Friedson
Zolotnik argues that Garcia is not prior art because Garcia’s application
was filed after Zolotnik’s priority date of July 05, 2002. (App. Br. 11-12).
Zolotnik’s instant application claims priority to Application No. 10/421,405
which ultimately claims priority to Application No. 10/191,263, filed July 5,
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2002. (FF2 1). However, Application No. 10/421,405 is a continuation in-
part of Application No. 10/191,263. (FF 2).
In order to be entitled to priority under 35 U.S.C. 120, the earlier
application must, inter alia, provide adequate written description for the full
scope of the later filed claims. The Examiner finds that the “protrusion”
limitation is not disclosed in Application No. 10/191,263. (Ans. 4-5).
Zolotnik admits that parent Application No. 10/191,263 fails to fully support
claim 8 because it does not disclose the “protrusion”. (FF 3). Zolotnik’s
‘263 Application does not disclose the subject matter of claim 8 as required
by 35 U.S.C. 112, first paragraph. (FFs 4-8). For at least this reason
Zolotnik’s claims are not entitled to the priority date of July 5, 2002.
Garcia’s application was filed on January 23, 2003 which is before
Zolotnik’s next best priority date of April 22, 2003 corresponding to
Application No. 10/421,406. (FFs 1, 10). Therefore, Garcia constitutes
prior art.
Zolotnik argues that the Examiner has not provided objective evidence of
a teaching, suggestion, or motivation to make the claimed combination.
(App. Br. 13). Zolotnik’s arguments are unpersuasive because in an
obviousness analysis, it is not necessary to find precise teachings in the prior
art directed to the specific subject matter claimed because inferences and
creative steps that a person of ordinary skill in the art would employ can be
taken into account. In this case, the Examiner relies on Garcia for describing
all the elements of the claims (i.e., basin and corresponding liner), but finds
that Garcia does not describe a protrusion. (Final Rejection 3; Ans. 3; see
FFs 10-11). The Examiner relies on Friedson for teaching a basin with a

2 FF denotes Finding of Fact.
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protrusion. (Final Rejection 3; Ans. 4; see FFs 15-16). The Examiner
determined that it would have been obvious to one with ordinary skill in the
art at the time the invention was made to include a protrusion in the floor of
Garcia’s foot basin and liner in order to define foot areas. (Final Rejection
3; Ans. 3). The Examiner also finds that Garcia’s liner would be supported
by the basin floor (as modified). (Final Rejection 3-4; Ans. 4). The
Examiner further finds that Garcia describes forming the liner of a more
rigid material. (Final Rejection 4; Ans. 4; FFs 12-14).
Zolotnik also argues that Friedson fails to suggest modifying Garcia to
include “a ‘formed’ protrusion on the liner floor ‘protruding into the liner
cavity’ as recited in claim 8. (Reply Br. 2). Zolotnik argues that Garcia
describes using a liner with a common flat-floored pedicure basin. (Reply
Br. 3). Zolotnik argues that Garcia does not suggest providing “a liner
having a ‘formed’ protrusion” or a liner that incorporates the formed
protrusion structure recited in claim 8. (Reply Br. 3).
Zolotnik’s arguments are not commensurate in scope with the claim
language. Claim 8 does not recite a liner having a “formed protrusion”.
(Claim Appx. 3). Instead, claim 8 recites “a protrusion formed on said liner
floor . . .”. (Claim Appx. 3). It appears that Zolotnik wishes for the claim
language to be interpreted as requiring a liner that is rigid or has a fixed
structure. However, claim language is given its broadest reasonable
interpretation during prosecution. We interpret limitations of the claims in
view of the Specification. However, limitations not recited in the claims
will not be read into the claims from the Specification. With the broadest
reasonable interpretation in mind, and absent a recitation in the claim of a
rigid structure, a protrusion can be formed on the floor of a liner by an
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underlying protrusion in a rigid basin floor. As claimed, the protrusion does
not have to be integral with or a part of the liner structure.
Zolotnik further argues that Friedson fails to suggest modifying Garcia
because the introduction of a liner as proposed by Garcia would cover and
conceal Friedson’s stimu-nodes [14] in the basin floor and considerably
compromise the effectiveness of Friedson’s apparatus. (Reply Br. 2, see FF
17). Zolotnik also argues that Garcia does not suggest that its liner would
conform to or be supported and accommodated by Friedson’s indented
stations [12] particularly because the indented stations each have stimu-
nodes [14]. (Reply Br. 3). Finally, Zolotnik argues that even if Friedson
suggested protrusions in Garcia’s liner, the protrusions would have to project
outwardly to fit into Friedson’s indented stations [12]. (Reply Br. 3).
Zolotnik’s additional arguments are not persuasive because the Examiner
does not propose modifying Friedson’s basin to include Garcia’s liner or
bodily incorporating Garcia’s liner in Friedson’s basin. Instead, the
Examiner concludes that it would have been obvious to modify Garcia’s foot
basin and liner to include a protrusion as taught by Friedson in order to
define foot areas. (Final Rejection 3-4; Ans. 3-4).
Zolotnik argues that Garcia “teaches away from preforming a protrusion
in the liner” as recited in claim 8. (Reply Br. 1, 4-5). Zolotnik’s arguments
are not commensurate in scope with the claim limitations. Claim 8 does not
recite “preforming a protrusion in the liner,” nor does it recite that the
protrusion is preformed. (Claim Appx. 3).
Zolotnik argues that Friedson teaches away from the present invention
(App. Br. 12) because Friedson’s teaching of applying a soaking solution in
direct contact with a tub casing fixed floor [11] differs from Zolotnik’s
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concept of providing a disposable liner. (App. Br. 12). Zolotnik’s
arguments are unpersuasive because they do not address why a person of
ordinary skill, upon reading Friedson, would be discouraged from following
the path set out in the reference, or would be led in a direction divergent
from the path taken by the applicant.
For all these reasons, Zolotnik does not sufficiently demonstrate that the
Examiner erred in determining that claims 8-12, 16 and 17 are obvious over
Garcia and Friedson.
Obviousness of Claims 14 and 15 over Garcia, Friedson and Cassidy
Claims 14-15 are dependent on claim 8. (Claim Appx. 4). Zolotnik does
not argue the limitations of claims 14-15 separately. (App. Br. 15). For the
same reasons discussed above with respect to the rejection of claims 8-12,
16 and 17, Zolotnik does not sufficiently demonstrate that the Examiner
erred in determining that claims 14 and 15 are obvious over Garcia, Friedson
and Cassidy.
Obviousness of Claims 1, 3-6, 8-12, 16 and 17 over Garcia, Friedson and
Guiste
In addition to the arguments discussed above, Zolotnik argues that Guiste
is non-analogous art because it teaches a durable and permanent liner
compared to Zolotnik’s disposable and inexpensive liner. (App. Br. 14).
Zolotnik’s arguments are unpersuasive. Zolotnik does not address whether
the art is from the same field of endeavor, regardless of the problem
addressed. Moreover, contrary to Zolotnik’s arguments, Guiste describes an
economical and disposable liner. (FF 18).
Zolotnik further argues that Garcia and Guiste do not “suggest the
provision of a liner formed to define . . . a projecting protrusion”. (App. Br.
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14-15; Reply Br. 4). Zolotnik’s arguments are unpersuasive because the
Examiner does not rely on Garcia and Guiste to suggest a protrusion formed
on the liner floor protruding into the liner cavity. (Final Rejection 3-4; Ans.
3-4). The Examiner’s rejection was based on the combined teachings of
Garcia, Friedson and Guiste. (Final Rejection 3-4; Ans. 3-4). Zolotnik does
not address the combined teachings of Garcia, Friedson and Guiste. Non-
obviousness cannot be established by attacking references individually when
the rejection is based upon the teachings of a combination of references
For all these reasons, Zolotnik does not sufficiently demonstrate that the
Examiner erred in determining that claims 1, 3-6, 8-12, 16 and 17 are
obvious over Garcia, Friedson and Guiste.
Obviousness of Claim 7 over Garcia, Friedson Guiste and Cassidy
Claim 7 is dependent on claim 1. (Claim Appx. 2). Zolotnik does not
argue the limitations of claim 7 separately. (App. Br. 15). For the same
reasons discussed above with respect to the rejection of claims 1, 3-6, 8-12,
16 and 17; Zolotnik does not sufficiently demonstrate that the Examiner
erred in determining that claim 7 is obvious over Garcia, Friedson, Guiste
and Cassidy.
Obviousness of Claims 8-12, 16 and 17 over Friedson and Reimers and
Obviousness of Claims 1, 3-6, 8-12 and 16-17 over Friedson, Reimers and
Guiste
Since we have determined that claims 1, 3-6, 8-12, 16 and 17 are
unpatentable over Garcia and Friedson or Garcia, Friedson and Guiste, we
need not and will not consider the rejections of claims 1, 3-6, 8-12 and 16-17
over Friedson and Reimers or Friedson, Reimers and Guiste.
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E. Conclusions of Law
Based on the Findings of Fact and the Analysis above, Zolotnik has not
sufficiently demonstrated that Garcia is not prior art. Zolotnik also has not
sufficiently demonstrated that the Examiner erred in determining
obviousness on the basis that there is no teaching, suggestion or motivation
to combine the references. Further, Zolotnik has not sufficiently
demonstrated that Friedson and Garcia provide a teaching away or that
Guiste is non-analogous art.
F. Decision
The decision of the Examiner rejecting claims 8-12, 16 and 17 as
unpatentable under 35 U.S.C. § 103(a) over Garcia and Friedson is affirmed.
The decision of the Examiner rejecting claims 14-15 as unpatentable
under 35 U.S.C. § 103(a) over Garcia, Friedson and Cassidy is affirmed.
The decision of the Examiner rejecting claims 1, 3-6, 8-12, 16 and 17 as
unpatentable under 35 U.S.C. § 103(a) over Garcia, Friedson and Guiste is
affirmed.
The decision of the Examiner rejecting claim 7 as unpatentable under 35
U.S.C. § 103(a) over Garcia, Friedson, Guiste and Cassidy is affirmed.
No time period for taking any subsequent action in connection with the
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
ack

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