Richard BaskervilleDownload PDFPatent Trials and Appeals BoardMay 28, 20202019006372 (P.T.A.B. May. 28, 2020) Copy Citation 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). Appeal 2019-006372 Application 14/491,930 2 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 Appeal 2019-006372 Application 14/491,930 3 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 Appeal 2019-006372 Application 14/491,930 4 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 Appeal 2019-006372 Application 14/491,930 5 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 Appeal 2019-006372 Application 14/491,930 6 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. Appeal 2019-006372 Application 14/491,930 7 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 Appeal 2019-006372 Application 14/491,930 8 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: Appeal 2019-006372 Application 14/491,930 9 (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) Copy with citationCopy as parenthetical citation