BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 LAMONT v. BERGUER Patent Interference No. 101,474

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)





Patent Interference No. 101,474

March 31, 1988

Hearing: January 27, 1988


ISOTHERMIC Protective Boot



 Application of William D. Lamont, Serial No. 573,871, filed January 25, 1984. Accorded benefit of: Serial No. 477,498, filed March 21, 1983, now U.S. Patent No. 4,478,214, issued October 23, 1984.



 Patent granted to Ramon Berguer on January 25, 1983, Patent No. 4,369,588, filed January 22, 1981, Serial No. 227,367.



Charles W. Chandler for Lamont. Oral argument by same



William H. Griffith, William H. Francis for Berguer. Oral argument by William H. Francis



Before Serota












Urynowicz, Boler and McCandlish












 Because of the novel issue involving count construction raised in this case, as discussed below, an expanded panel has been assigned to decide the questions presented.



 The invention in interference relates to an isothermic boot which gives protection for the foot and lower leg to prevent development of ulcerations. The particular subject matter in issue is illustrated by count 1, the sole count, as follows:



Count 1



   An isothermic protective boot having

 a foot-receiving part and a contiguous leg-receiving part adapted to extend up to at least the lower portion of the calf of a patient,

 said boot having an inner lining of relatively soft, non-allergenic material, and

 a body of weight-bearing material along at least a portion of the back of said leg-receiving part in a position to extend along the heel cord of the wearer such that when the wearer is lying on his back the weight-bearing surface of the extremity of the wearer will be over the heel cord and lower aspect of the calf and not the bottom of the heel.



 The claims of the parties which correspond to this count are:

   Lamont: Claims 1 to 18

   Berguer: Claims 1 to 18



 This interference was declared on November 5, 1985 with count 1. In a  'Decision on Preliminary Motion' rendered May 16, 1986 the Examiner-in-Chief granted a motion of Lamont for judgment on the ground that the claims of Berguer's involved patent corresponding to the count are unpatentable to Berguer under 35 USC 103 over U.S. Patents 3,511,233 and 3,691,658 to Holy, Jr. and DiPerno, respectively. The Examiner-in-Chief further determined that the aforementioned claims of Berguer are unpatentable to him under 35 USC 103 over Walker U.S. Patent 4,076,022 and DiPerno, and that Lamont's claims corresponding to the count are unpatentable under 35 USC 103 over Holy, Jr. or Walker and DiPerno.



 In view of the findings by the Examiner-in-Chief, notice was given that pursuant to the provisions of 37 CFR 1.640(d)(1) and 37 CFR 1.641 judgment on the record would be entered against the parties Lamont and Berguer unless they showed within 20 days of the decision good and sufficient cause why such action should not be taken.



  *2 In response, Berguer requested a final hearing on the issue of patentability of his claims corresponding to the count (Paper No. 14) an filed a motion for a testimony period (Paper No. 15). Lamont did not respond to the above order to show cause but filed oppositions to the Berguer request for final hearing and motion for a testimony period (Paper Nos. 16 and 17, respectively). On June 25, 1986 the Examiner-in-Chief set this proceeding down for final hearing and set a testimony period for Berguer only for the purpose of establishing unobviousness of his claims corresponding to the count over the art applied in the 'Decision on Preliminary Motion.' At that time, Lamont was notified that in view of his failure to respond to the order to show cause, judgment would be entered against him in due course.



 Berguer took deposition testimony in the time provided. Lamont took deposition testimony in rebuttal thereof.



 Both parties filed briefs and appeared for oral hearing.



 Office records indicate that the involved Berguer patent is assigned to Lunax Corporation and that the involved Lamont application is unassigned.



Patentability of Berguer's Claims 1 to 18


 It is urged by the party Berguer that none of the patents relied on in the  'Decision on Preliminary Motion' relates, as his does, to an appliance for the treatment of a patient with vascular deficiency or arterial disease. According to Berguer, his claims should be interpreted in light of his specification and,

   . . . the claims corresponding to the Count should be construed as directed specifically to a boot for the treatment of arterial disease, which protects the entire foot and lower leg from trauma by forming a complete envelop [sic] therefore [sic]; one which does not have straps pressing on the dorsum or ridges pressing on the rim to the heel. (Brief, page 25; original emphasis.)

Berguer cites ACS--Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572, 221 USPQ 929 (Fed. Cir. 1984) in support of his position.



 Berguer asserts a person of ordinary skill designing an appliance for the treatment of vascular deficiency would not expect to get ideas from a cold weather boot as disclosed by DiPerno. Berguer further asserts that the Holy, Jr. and Walker devices,

   (a) do not envelop the entire foot and lower leg; therefore are not really boots and clearly are not isothermic;

   (b) are rigid and therefore make ambulation extremely difficult if not impossible;

   (c) have straps which press upon the skin of the dorsum;

   (d) have ridges which take pressure off the apex of the heel while concentrating pressure in the rim around the heel.



 The senior party further contends that commercial sales of his boots from 1981 into 1986 must be considered as evidence which tends to show unobviousness of the invention and that the invention satisfied a long felt need in that before Berguer designed his boot, there was virtually nothing available that was specifically designed for the treatment of the vascular patient.





  *3 Initially, we note that Berguer does not contend at final hearing that any of his claims 1 to 18 should be designated as not corresponding to the count. Accordingly, these claims stand or fall together with the count. See 37 CFR 1.601(f) and 37 CFR 1.637(c)(4)(ii).



 We are of the opinion that the subject matter of count 1 and, consequently, Berguer claims 1 to 18 are unpatentable under 35 USC 103 over Holy, Jr. or Walker in view of DiPerno. Section 103 requires us to presume that the artisan has full knowledge of the prior art in his field of endeavor and the ability to select and utilize knowledge from analogous arts. In re Deminski, 796 F.2d 436, 230 USPQ 313 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 202 USPQ 171 (CCPA 1979); In re Antle, 444 F.2d 1168, 170 USPQ 285 (CCPA 1971). The references are evidence of knowledge from analogous arts in that each relates to footgear. One of ordinary skill in the art would have been motivated to utilize an isothermic inner lining as taught by DiPerno in the boot of Holy, Jr. or Walker where the wearer of the Holy, Jr. or Walker boot experienced discomfort caused by relatively cool environmental air contacting exposed skin at the instep.



 Reliance of Berguer on ACS-Hospital Systems Inc. v. Montefiore Hospital, supra, is considered misplaced. That case involved an action for patent infringement where the validity of patent claims was in issue and as such, is not considered controlling in an interference proceeding under 35 USC 135(a). Accordingly, the presumption of patent validity under 35 USC 282 which must be overcome by a party charging invalidity is not applicable in interferences. Rather, in reaching our decision, we have applied the established standard of count interpretation that absent any ambiguity, counts are to be given the broadest interpretation which they will reasonably support. Mead v. McKirnan, 585 F.2d 504, 199 USPQ 513 (CCPA 1978). Berguer has specified no count language which he considers ambiguous, nor do we find any, and consequently there is no need to look to the Berguer patent to resolve any ambiguity. Mead v. McKirnan, supra.



 As to aforementioned assertions (b) to (d) of the senior party with respect to Holy, Jr. and Walker, we find nothing in count 1 which requires a non-rigid or strapless boot, or one devoid of ridges.



 It is considered that Berguer's evidence as to commercial success is not indicative of nonobviousness. Commercial success is only probative of nonobviousness if it is the result of the inventive features claimed, as opposed to other factors. Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 227 USPQ 766 (Fed. Cir. 1985); Simmons Fastener Corp. v. Ill. Tool Works, Inc. 739 F.2d 1573, 222 USPQ 744 (Fed. Cir. 1984), cert. denied, 105 S.Ct. 2138 (1985); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983). Here, the senior party has not established the requisite nexus. Any degree of commercial success established by Berguer could have resulted from the prior art feature disclosed by both Holy, Jr. and Walker of a body of weight bearing material along at least a portion of the back of the leg receiving part of the boot to distribute the weight of the extremity over a large surface area and off the heel or to the fact that the majority of the sales of Dr. Berguer's boot were the result of Dr. Berguer and his staff ordering the boot through Harper Hospital from Berguer's marketing unit.



  *4 As to long-felt need, the evidence is even less substantial. At column 1, lines 36 to 38, the Berguer patent indicates a general object of the invention is to provide '. . . a boot which gives improved protection for the foot and lower leg of a patient who may, for example, be suffering from arterial disease'. There is no showing from Berguer that the need was not being satisfied by other boots, i.e., Holy, Jr. and Walker.



Berguer Motion to Suppress Evidence


 On May 20, 1987 the senior party filed a motion to suppress certain specified exhibits of the party Lamont and testimony of the junior party which relates thereto. Berguer contends that this evidence is outside the scope of the evidence for which a testimony period was granted as it discloses additional prior art and the special testimony period was set by the Examiner-in-Chief only for the purpose of establishing unobviousness of Berguer's claims corresponding to the count over the art applied in the 'Decision on Preliminary Motion' of May 16, 1986.



 The motion is granted to the extent the specified exhibits and testimony related thereto are relied on by Lamont to establish unpatentability of Berguer's claims over any art not applied in the aforementioned decision of May 16. In the letter of June 25, 1986 the Examiner-in-Chief set a testimony period for Berguer only for the purpose of establishing unobviousness of his claims corresponding to the count over the art applied in the decision of May 16.



 The motion is denied to the extent it seeks suppression of Lamont Exhibits 5, 6 and 15 and testimony related thereto on the basis that the exhibits are not contained in the list of documents served by the junior party under 37 CFR 1.673(b). The statement in the 'Declaration of Charles W. Chandler' attached to the junior party's opposition filed June 11, 1987 to the effect that the parties had agreed that neither would move under 37 CFR 1.656(h) to suppress any evidence of the other party on the grounds that such evidence was not listed in accordance with 37 CFR 1.673(b) is unanswered by the senior party and such an agreement between the parties is authorized under Rule § 1.673(b).



 In view of our findings and discussion above, entry of adverse judgment against both parties herein is appropriate.





 Judgment as to the subject matter of the count in issue is hereby awarded against William D. Lamont, the junior party. The junior party Lamont is not entitled to a patent containing claims 1 to 18 corresponding to the count.



 Judgment as to the subject matter of the count in issue is hereby awarded against Ramon Berguer, the senior party. The senior party Berguer is not entitled to his patent containing claims 1 to 18 corresponding to the count.






Saul J. Serota






Ian A. Calvert



Vice Chairman



Stanley M. Urynowicz, Jr.






James R. Boler






Harrison F. McCandlish





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