Ex Parte 7181866 et al

Patent Trial and Appeal Board

Jul 30, 2015

95001320 (P.T.A.B. Jul. 30, 2015)

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.
95/001,320 03/03/2010 7181866 041463-5049 1486
13992 7590 07/30/2015
NDQ Special Reexam Group
1000 Louisiana Street, Fifty-Third Floor
Houston, TX 77002
EXAMINER
WEHNER, CARY ELLEN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
07/30/2015 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)

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UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

K-SWISS INC.
Requester

v.

Patent of GLIDE'N LOCK GMBH
Patent Owner
____________________

Appeal 2012-009494
Reexamination Control 95/001,320
Patent US 7,181,866 B21
Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG and
JOSIAH C. COCKS, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION and ORDER

1 Issued February 27, 2007 to Braunschweiler (hereinafter "'866 patent").
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Patent US 7,181,866 B2

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HISTORY OF THE CASE
Decision of the Board
In the inter partes reexamination of the ’866 patent, the Patent Owner
appealed to the Board, the Examiner's Final Rejection of claims 1–11. The
Board issued a final decision on December 28, 2012 affirming-in-part, the
Examiner's rejections (see, generally, 2012 WL 6811383 (PTAB 2012)
(hereinafter "Board Decision" or "Board Dec.")). Specifically, in reviewing
the Examiner's rejections for error, the Board: affirmed the Examiner's
rejection of claims 1–5, 9 and 10 as anticipated by Okabe;2 reversed the
rejection of claims 8 and 11 as anticipated by Okabe; and affirmed the
rejection of claims 1, 2 and 8–10 as anticipated by Szentes3 (Board Dec.
*16).
The Board Decision also reversed the indefiniteness rejection of claim
11 (id.). The Board further reversed the obviousness rejections of claims 1–
11 based on the combination of one of Pagani,4 Takahashi5 or Inohara6
together with Szentes (id.). As to the combination of Pagani and Szentes,
the Board found that: Szentes disparages using a plurality of small channels;
Szentes suggests using a single, large cavity; Pagani is silent as to any
contact or engagement between the inner surfaces of the upper and lower
portions upon loading; the Declaration of Mr. Frederick asserting such
contact was conclusory and unsubstantiated by the evidence; and "it was not

2 Okabe, Japan H07-284403 (Oct. 31, 1995).
3 Szentes, WO 90/00021 (Jan. 11, 1990).
4 Pagani, GB 2001843 (Feb. 14, 1979).
5 Takahashi, Japan S49-96158 (Dec. 9, 1972).
6 Inohara, US 4,523,393 (June 18, 1985).
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apparent why one of ordinary skill would apply the teachings of notches and
ribs as applied to a large, singular cavity as taught in Szentes, to small
channels shown in Pagani which is very different from the cavity disclosed
in Szentes." (Board Dec. *14–*15).
The Board further reversed the Examiner's rejections of claims 1–11
based on the combination of Takahashi or Inohara together with Szentes
because their disclosures, as well as issues and arguments raised in these
rejection, were substantially the same as the rejection based on Pagani and
Szentes (id. at *15–*16).
Thus, at the conclusion of the appeal at the Board, claims 1–5 and 8–
10 remained rejected, but the Examiner's rejections of claims 6, 7 and 11
were reversed (id. at *16).

Decision of the Court of Appeals for the Federal Circuit
Both the Patent Owner as well as the Requester appealed the Board's
Decision to the Federal Circuit, and the court Affirmed-In-Part, Reversed-In-
Part, and Remanded the case back to the Board. K-Swiss Inc. v. Glide N
Lock GmbH, 567 Fed. Appx. 906 (Fed. Cir. 2014). Specifically, the court
affirmed the Board's decision rejecting claims 1, 2 and 8–10 as anticipated
by Szentes, and claims 3–5 as anticipated by Okabe. Id. at 907. However,
the court reversed the Board's reversal of the Examiner's rejections of claims
6, 7 and 11. Id. The court disagreed with the conclusions of the Board set
forth above with respect to the combination of Pagani, Takahashi, or
Inohara, together with Szentes. Id. at 912.
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As to claim 11, the court concluded that "[i]t would be logical to
apply Szentes's solution for a large cavity to the small channels of Pagani,
Takahashi and Inohara." Id. The court further stated:
it is not necessary that Pagani alone teach engagement of the
upper and lower layers. Szentes teaches engagement to prevent
the floating effect. When Pagani is combined with Szentes,
given that Pagani describes its resilient members as "especially
resiliently yieldable" and "yield[ing] under the wearer's
weight," J.A. 1725 (Pagani) ll. 67–75, it would have been
obvious to one skilled in the art to create engagement of the ribs
or pins in the loaded state to prevent the floating effect.
Takahashi and Inohara also teach plural round tubular cavities
and that such an arrangement is yieldable.[] Therefore, we find
that substantial evidence does not support the Board’s finding
that claim 11 would not have been prima facie obvious over
Szentes in view of Pagani, Takahashi, or Inohara.
Id. at 913.

As to claims 6 and 7, the court noted that the Board never individually
considered these claims, but reversed the Board's decision stating:
We find claims 6 and 7 invalid for two main reasons. First, the
percentages in claims 6 and 7 are inherently disclosed by
Pagani, Takahashi, or Inohara.[] Second, as the patent examiner
found, it would have been obvious to one having ordinary skill
in the art at the time to construct resilient members that achieve
this deformation percentage, since "where the general
conditions of a claim are disclosed in the prior art," as here, "it
is not inventive to discover the optimum or workable ranges by
routine experimentation."
Id. (citations omitted).

Furthermore, the court noted that because the Board reversed the
obviousness rejections, the Board did not need to reach the secondary
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consideration evidence. Id. at 914. The court then stated that the Patent
Owner's declarations:
did not connect the statements of praise, the only alleged
secondary consideration, with claimed features of the ’866
patent. In addition, before the Board, [the Patent Owner]
argued only that the declarations established secondary
considerations with respect to claim 8 and the "positive
engagement" limitation. It did not argue that the declarations
established secondary considerations with respect to claims 6,
7, and 11. Therefore, these declarations are insufficient to
overcome the prima facie case of obviousness.
Id.
The court concluded by stating, "claims 6, 7, and 11 should have been
rejected as obvious, and [we] remand to the Board for entry of an
appropriate order." Id.

ORDERS
In view of the analysis and instructions of the Federal Circuit set forth
above, we enter the following rejections with respect to the ’866 patent:
1. Claims 6, 7 and 11 are rejected under 35 U.S.C. § 103(a) as
obvious over Pagani and Szentes;
2. Claims 6, 7 and 11 are rejected under 35 U.S.C. § 103(a) as
obvious over Takahashi and Szentes; and
3. Claims 6, 7 and 11 are rejected under 35 U.S.C. § 103(a) as
obvious over Inohara and Szentes.

Appeal 2012-009494
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Patent US 7,181,866 B2

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Patent Owner:
NDQ Special Reexam Group
1000 Louisiana Street, 53rd Floor
Houston, TX 77002

Third Party Requester:
Oblon, Spivak, McClelland Maier & Neustadt, L.L.P.
1425 K Street, N.W.
Suite 800
Washington, DC 20005

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