Richard Baskerville

Patent Trials and Appeals Board

May 28, 2020

14491930 - (D) (P.T.A.B. May. 28, 2020)

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.
14/491,930 09/19/2014 Richard Frank Baskerville Baskerville, Frank-Cont 5738
61226 7590 05/28/2020
John Karl Buche
Buche & Associates, P.C.
875 Prospect Street, Suite 305
La Jolla, CA 92037
EXAMINER
LYNCH, MEGAN E
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
05/28/2020 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 RICHARD FRANK BASKERVILLE
____________

Appeal 2019-006372
Application 14/491,930
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

OSINSKI, 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 1–15. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM and designate our affirmance of the rejection of claims
1–15 as a NEW GROUND OF REJECTION pursuant to our authority
under 37 C.F.R. § 41.50(b).

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Application 14/491,930

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THE CLAIMED SUBJECT MATTER
Claims 1 and 8 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A method for improving bipedal motion where a heel of a
foot is raised while a ball and pads of a plurality of toes of the
foot are in mechanical contact with a surface said method
comprising the steps of:
obtaining an insole featuring an abrupt drop-off and a
ridge surrounding the abrupt drop-off so that a cutout is created
between the abrupt drop-off and the ridge;
placing the insole on an inside of footwear;
inserting the foot into said footwear;
placing the ball of the foot onto the abrupt drop-off;
placing said pads of said plurality of toes onto the ridge;
and,
pressing downward on the ball of the foot while raising
the heel of the foot so that (a) an edge that defines the abrupt
drop[-]off is positioned under, against, and substantially across
the upper third of the ball of the foot while the lower two thirds
of the ball of the foot are in direct contact with a part of the
insole that is adjacent the drop[-]off, (b) said plurality of toes
extend over said cutout between the abrupt drop-off and the
ridge, (c) said pads of said plurality of toes are supported by the
ridge, (d) said ball is supported by both (i) said edge that
defines the abrupt drop[-]off and (ii) the part of the insole that is
adjacent the drop[-]off and that is in direct contact with the
lower two thirds of the ball of the foot, and (e) said ball and
pads of said plurality of toes are in mechanical contact with the
surface.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Donato US 2012/0096745 A1 Apr. 26, 2012
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Application 14/491,930

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THE REJECTIONS
I. Claims 1–15 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite. Final Act. 6.
II. Claims 1 and 8 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement. Id. at 5.
III. Claims 1–15 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Donato. Id. at 7–12.

OPINION
Rejection I – Indefiniteness
Independent claim 1 recites, in relevant part, “placing the ball of the
foot onto the abrupt drop-off” and “an edge that defines the abrupt drop[-]off
is positioned under . . . the upper third of the ball of the foot while the lower
two thirds of the ball of the foot are in direct contact with a part of the insole
that is adjacent the drop[-]off.” Appeal Br. (Claims App). Independent
claim 8 similarly recites “placing the ball of the foot onto the drop-off” and
“the edge that defines the drop[-]off is positioned under . . . the upper third
of the ball of the foot while the lower two thirds of the ball of the foot are in
direct contact with a part of the insole that is adjacent the drop[-]off.” Id.
The Examiner determines that this language renders the claims indefinite
because
it is unclear where the ball of the foot is to be located.
Applicant first claims that the ball of the foot is placed on the
drop[-]off but then further claims that the upper third of the ball
of the foot is positioned on an edge that defines the drop[-]off
and a lower two thirds of the ball of the foot are in direct
contact with part of the insole adjacent the drop[-]off. Does
Applicant mean for the ball of the foot to be on the drop[-]off or
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for only a portion of the ball of the foot to be positioned on the
drop[-]off?
Final Act. 6. Appellant argues that the Examiner’s rejection is in error
because “a person of skill in the art would understand the above cited claim
language when reading the claim language in view of the cited figures and
paragraphs from the specification.” Appeal Br. 21 (citing Spec. ¶¶ 8, 9, 40,
43, 45, 47; Drawings, Figs. 3, 5A, 14). We are not persuaded by Appellant’s
argument.
Although Appellant argues that a person of ordinary skill in the art
would understand the above cited claim language, Appellant has not
addressed with sufficient particularity the problem identified by the
Examiner. That is, the claim first requires the ball of the foot to be placed
on the drop-off, but subsequently suggests that two thirds of the ball of the
foot are not in contact with the drop-off, but rather are in contact with a part
of the insole that is adjacent the drop-off. The Specification’s lack of clarity
regarding where the lower two thirds of the ball of the foot are placed
relative to the drop-off (see, e.g., Spec. ¶ 45 (explaining only that drop-off
410 fits under top third 1510 of ball 1500 of foot 1000)) only adds to the
uncertainty as to whether the claim should be interpreted as requiring only a
portion of the ball of the foot to be placed on the drop-off or the entirety of
the ball of the foot to be placed on the drop-off. “[A] claim is indefinite
when it contains words or phrases whose meaning is unclear.” In re
Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (citing MPEP § 2173.05(e));
see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing
indefiniteness approved by the Federal Circuit in Packard). We agree with
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the Examiner that it is unclear where the lower two thirds of the ball of the
foot are to be located. Final Act. 6.
In addition to the language identified above, claim 1 recites “an abrupt
drop-off and a ridge surrounding the abrupt drop-off so that a cutout is
created between the abrupt drop-off and the ridge.” Appeal Br. (Claims
App.). A preferred embodiment of an insole featuring an abrupt drop-off,
ridge, and cutout is shown in Appellant’s Figure 5A, reproduced below.

Figure 5A, above, depicts insole 400 with drop-off 410 and ridge 420. Spec.
¶ 45. Independent claim 1 requires both (i) drop-off 410 to be surrounded
by ridge 420 and (ii) a cutout to be created between drop-off 410 and ridge
420. It is unclear what structure can be considered to be the claimed drop-
off that can satisfy both of these requirements. If drop-off 410 is considered
to be the vertical wall of the entirety of the D-shaped feature shown in
Figure 5A such that ridge 420 surrounds such drop-off 410, then it is unclear
how a cutout is created between drop-off 410 and ridge 420 in that any
cutout would appear to be interior of both ridge 420 and drop-off 410. On
the other hand, if drop-off 410 is considered to be the vertical wall of only a
portion of the D-shaped feature shown in Figure 5A (i.e., the straight portion
of the “D” shape) and ridge 420 is considered to be a portion of the insole
surrounding only the curved portion of the “D” shape, then a cutout would
appear to be created between such a drop-off 410 and ridge 420, but it is
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unclear how such a drop-off 410 would be surrounded by ridge 420. The
limitation specifying both that the ridge surrounds the drop-off and that a
cutout is created between the drop-off and the ridge creates confusion as to
the metes and bounds of at least the “drop-off.”
The Examiner determines that “the drop[-]off is part of the insole[;]
therefore[,] it is unclear what structure is meant by ‘part of the insole
adjacent the drop[-]off.’” Final Act. 6. Because the scope of “drop-off” is
unclear, as described above, we agree with the Examiner that it is unclear
what structure constitutes the “part of the insole adjacent the drop[-]off,” as
claimed. See id. Moreover, the uncertainty as to what structure constitutes
the drop-off provides another basis why the limitation specifying the
placement of the ball of the foot relative to the drop-off is unclear.
In short, the claims are indefinite because they do not reasonably
apprise those of skill in the art of the scope of the claimed invention. See
Packard, 751 F.3d at 1313 (claims, when read in light of the specification,
must “reasonably apprise those skilled in the art both of the utilization and
scope of the invention” using language “as precise as the subject matter
permits”).
In view of the foregoing, Appellant does not apprise us of error in the
Examiner’s determination that claims 1–15 are indefinite. Accordingly, we
sustain the rejection of these claims under 35 U.S.C. § 112, second
paragraph. However, because our analysis above includes reasoning that
was not presented by the Examiner, we designate our affirmance of the
rejection as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) to
give Appellant an opportunity to respond thereto.

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Rejections II and III – Written Description, Anticipation
For the reasons discussed above, we determine that claims 1–15 are
indefinite. Having determined that these claims are indefinite, we cannot
sustain the rejection of claims 1 and 8 under 35 U.S.C. § 112, first
paragraph, or the rejection of claims 1–15 under 35 U.S.C. § 102(e), because
to do so would require speculation as to the scope of the claims. See In re
Steele, 305 F.2d 859, 862–63 (CCPA 1962) (holding that the Board erred in
affirming an obviousness rejection of indefinite claims because the rejection
was based on speculative assumptions as to the meaning of the claims); In re
Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred
in affirming an anticipation rejection of indefinite claims). Here, with
respect to the anticipation rejection, Appellant argues that “Donato certainly
does not describe the specific foot positions claimed.” Appeal Br. 23.
Determining whether Donato describes the specific foot positions claimed
first requires understanding where the ball of the foot, including the lower
two thirds of the ball, is to be placed and what structure of the insole is the
drop-off.
The Examiner rejects claims 1 and 8 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement
because “there appears to be no support for where the lower two thirds of the
ball of the foot are located with regard to the insole.” Final Act. 5. We find
the reasoning in In re Steele to be applicable to the written description
rejection because reaching a decision as to whether the claims have adequate
written description support requires that we first understand the metes and
bounds of the claims. Cf. In re Moore, 439 F.2d 1232, 1235 (CCPA
1971) (One is not in a position to determine whether a claim is enabled
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under the first paragraph of 35 U.S.C. § 112 until the metes and bounds of
that claim are determined under the second paragraph of this section of the
statute.). We emphasize, however, that our decision to not sustain these
rejections is based solely on the indefiniteness of the claimed subject matter,
and does not reflect on the adequacy of the evidence or reasoning applied by
the Examiner.

CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference/Basis Affirmed Reversed
New
Ground
1–15 112, second
paragraph
Indefiniteness 1–15 1–15
1, 8 112, first
paragraph
Written
Description
1, 8
1–15 102(e) Donato 1–15
Overall Outcome 1–15 1–15
The Examiner’s decision to reject claims 1–15 is AFFIRMED, and we
designate our affirmance of the rejection of these claims as a NEW
GROUND OF REJECTION.
This decision contains a NEW GROUND OF REJECTION pursuant
to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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; 37 C.F.R. § 41.50(b)