Ex Parte 8915382 et al

Patent Trials and Appeals Board

May 21, 2019

90014053 - (D) (P.T.A.B. May. 21, 2019)

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.
90/014,053 12/11/2017 8915382 27784.3 3115
122269 7590 05/21/2019
Brian Tucker
Kirton McConkie
36 South State Street, Suite 1900
Salt Lake City, UT 84111
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
05/21/2019 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 PDT ORIGINAL DESIGNS, LLC1
____________________

Appeal 2019-002891
Reexamination Control 90/014,053
Patent No. US 8,915,382 B22
Technology Center 3900
____________________

Before DANIEL S. SONG, MEREDITH C. PETRAVICK, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Claims 1–23 are subject to reexamination and stand rejected. Patent
Owner appeals under 35 U.S.C. §§ 134(b) and 306 from a Final Rejection of
these claims. Appeal Br. 10. We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306.
We REVERSE.

1 Peter Totman is listed as the sole inventor.
2 Issued December 23, 2014 (hereinafter the “’382 Patent”).
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CLAIMED SUBJECT MATTER
Claims 1, 12, and 17 are independent. Claim 1, in amended format3
for purposes of discussion, is reproduced below:
1. An apparatus for [supporting] hanging a ski [on] in a
vertical orientation from a support structure, the ski having a
binder toe piece and a binder heel piece coupled to a deck
surface of the ski, the binder toe piece having a boot retention
flange extending parallel to the deck surface of the ski, wherein
the deck surface and the boot retention flange define a receiving
space for receiving a toe end of a ski boot, the apparatus for
[supporting a] hanging the ski comprising:
a ski support member comprising a ski engaging portion
and a binder engaging portion oriented above the ski engaging
portion,
wherein the binder engaging portion [of the ski
support member including] includes a [first] front surface
positioned opposite a [second] rear surface with [an end]
a top surface extending between the front and rear
surfaces, [first surface and the second surface,] the binder
engaging portion being configured to be inserted into
[positionable within] the receiving space of the ski to
engage the binder toe piece of the ski and to position the
rear surface against the boot retention flange of the ski
while the ski hangs from the ski support member, [in an
engaged position, wherein in the engaged position the
end surface is positioned within the receiving space and
wherein the first surface engages the boot retention
flange,]
wherein the ski engaging portion has [having] a
substantially flat surface [engageable with] that is
configured to abut at least one of the deck surface of the
ski and an element disposed on the deck surface of the
ski while the ski hangs from the ski support member to

3 The claim language in brackets was deleted by Patent Owner and the
language that is underlined was added.
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thereby maintain the ski in [a desirable] the vertical
orientation,
[wherein] the ski engaging portion being further
configured to cause the binder heel piece of the ski to be
[is substantially] free from engagement with the ski
support member while the ski hangs from the ski support
member;
a spacer having a front end that couples to the ski support
member, a rear end opposite the front end and spaced from the
front end, and an outer wall that extends between the front and
rear ends, the rear end being configured to mount to the support
structure to thereby cause the ski support member to be spaced
from the support structure when the rear end of the spacer is
mounted to the support structure, the spacer being coupled to
the ski support member to cause the outer wall of the spacer to
be positioned below the rear surface of the binder engaging
portion; and [positioned between the ski support member and
the support structure; and]
a coupling element extending through the rear end of the
spacer, the coupling element being configured to [couple]
mount the ski support member to the support structure with the
top surface upwardly oriented.
Appeal Br., Claims App.
REJECTIONS
1. Claims 1–23 are rejected under 35 U.S.C. § 305 as enlarging the
scope of the claims of the patent being reexamined.
2. Claims 1–23 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
3. Claims 9, 10, 14, 17–20, and 23 are rejected under 35 U.S.C.
§ 112, second paragraph, as indefinite.
4. Claims 1, 7, 12, 14, 21, and 22 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Solheim (US 4,805,784, issued Feb. 21, 1989).
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5. Claims 1, 7, 8, 12, 14, 21, and 22 are rejected under 35 U.S.C.
§ 102(b) as anticipated by de Keratry (US 2006/0214080 A1, published Sep.
28, 2006).
6. Claims 1, 6, 9, 12, and 16–23 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Short (US Des. 429,991, issued Aug. 29, 2000).
7. Claims 1, 2, 6, 9, 12, 13, and 16–23 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Short and Magnuson (US 3,352,429,
issued Nov. 14, 1967).
8. Claims 1, 9, 12, 14, 17, and 19–23 are rejected under 35 U.S.C.
§ 102(b) as anticipated by McCain (US Des. 221,052, issued July 6, 1971).
9. Claims 1, 2, 9, 12–14, 17, and 19–23 are rejected under 35
U.S.C. § 103(a) as being unpatentable over McCain and Magnuson.
10. Claim 8 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Solheim, Kingery (US 5,301,823, issued Apr. 12, 1994),
Henke (DE 20010091, published Oct. 11, 2001), and Levy (US 3,180,494,
issued Apr. 27, 1965).
11. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over de Keratry, Kingery, Henke, and Levy.
12. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Short (or Short and Magnuson), Kingery, Henke, and
Levy.
13. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over McCain (or McCain and Magnuson), Kingery, Henke, and
Levy.
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14. Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Short (or Short and Magnuson) and Kellaher (US
2006/0010652 A1, published Jan. 19, 2006).
15. Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over McCain (or McCain and Magnuson) and Kellaher.
OPINION
35 U.S.C. § 305
The Examiner rejects claims 1–23 under 35 U.S.C. § 305 as
impermissibly enlarging the scope of the claims being reexamined. Final
Act. 23–24. The amendment to claim 1 that the Examiner determines
impermissibly enlarges the claim scope recites
a ski support member comprising a ski engaging portion
and a binder engaging portion oriented above the ski engaging
portion,
wherein the binder engaging portion being
configured to be inserted into [positionable within] the
receiving space of the ski to engage the binder toe piece
of the ski and to position the rear surface against the boot
retention flange of the ski while the ski hangs from the
ski support member, [in an engaged position, wherein in
the engaged position the end surface is positioned within
the receiving space and wherein the first surface engages
the boot retention flange,].
Appeal Br., Claims App. The corresponding amendments to claims 12 and
17 are similar. Id. We refer only to claim 1 below for simplicity, with the
understanding that discussion applies equally to the similar limitations
recited in claims 12 and 17.
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Patent Owner responds that the amendments recite, and more
narrowly define, the structure originally recited in the claims. Appeal Br.
11–14. We agree with Patent Owner.
Before we can compare the scope of the amended claim language to
that originally found in the claim, it is useful to construe that language. As
seen above, the amended claim language states that “the binder engaging
portion” of the “ski support member” is “configured to be inserted into the
receiving space of the ski to engage the binder toe piece of the ski and to
position the rear surface against the boot retention flange of the ski while the
ski hangs from the ski support member.” The recitation of the phrase
“configured to” requires more than “mere capability.” Rather, that term is
synonymous with “made to” and “designed to.” See In re Giannelli, 739
F.3d 1375, 1379–80 (Fed. Cir. 2014). This is consistent with the
Specification, which repeatedly emphasizes the features of “binder engaging
portion” as being specifically designed to accommodate the features of the
ski to support the ski in a particular orientation. See, e.g., ’382 Patent 5:29–
57, 7:17–27, 8:60–9:5, 10:62–67. Thus, the claim requires a “binder
engaging portion” that is designed to “be inserted into the receiving space of
the ski to engage the binder toe piece of the ski and to position the rear
surface against the boot retention flange of the ski while the ski hangs from
the ski support member.”
As seen above, the original claim language required that “the binder
engaging portion [is] positionable within the receiving space to engage the
binder toe piece in an engaged position, wherein in the engaged position the
end surface is positioned within the receiving space and wherein the first
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surface engages the boot retention flange.” The amended claim language,
however, requires that “the binder engaging portion” be specifically
designed to carry out the recited functionality. Even if the “configured to”
language only required capability to perform the recited function, it would at
least require that the “ski support member” be dimensioned appropriately for
the recited functionality. That is, regardless of whether the claim requires
that “the binder engaging portion” be specifically designed to carry out the
recited functionality, or that it simply be capable of carrying out the recited
functionality, we do not agree that the amendment broadens the scope of the
claims.
Accordingly, we do not sustain the Examiner’s decision to reject
claims 1–23 under 35 U.S.C. § 305.
35 U.S.C. § 112, First Paragraph
The Examiner rejects claims 1–23 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 24–27. The Examiner has the initial burden of presenting
evidence of reasons why persons skilled in the art would not recognize in the
disclosure a description of the invention defined by the claims. In re
Wertheim, 541 F.2d 257, 263 (CCPA 1976). The Examiner fails to meet that
burden.
With respect to claims 1 and 17, for example, after summarizing the
claim limitation at issue (“[t]he ski engaging portion of the ski support
member ‘being . . . configured to cause’ the binder heel piece to be free from
engagement with the ski support member while the ski hangs therefrom”),
the Examiner simply concludes that “the original disclosure does not
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describe the ski engaging portion 404 as being ‘configured’ in some
particular way such that it functions to ‘cause’ the binder heel piece to be
free from engagement with the ski support member while the ski hangs
therefrom.” Final Act. 24. As Patent Owner points out, however, Figure 3,
for example, illustrates the arrangement from claims 1 and 17 noted above.
Appeal Br. 17.
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Figure 3 is reproduced below, with annotations, for reference.

Figure 3 is “a front perspective view of another embodiment of an apparatus
for supporting a ski or pair of skis on a support structure with a pair of skis
supported by a ski support member.” ’382 Patent, 3:58–61. Our annotations
are circled to make more readily apparent binder heel piece 112 and ski
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support member 206. As seen in that figure, there is distinct separation
between those components, supporting Patent Owner’s position regarding
sufficient disclosure of binder heel piece 112 being free from engagement
with the ski support member 206 while ski 102 hangs from ski support
member 206.
Accordingly, we do not sustain the Examiner’s decision to reject
claims 1 and 17.
Similarly, for claims 2 and 13, which depend from claims 1 and 12,
respectively, the Examiner summarizes the limitations at issue (“[t]he ski
support member as having ‘corresponding openings through which the
fasteners extend’, with ‘the openings being spaced to prevent rotation of the
ski support member relative to a longitudinal axis of the spacer’”) and
concludes that “the original disclosure does not describe ‘corresponding
openings through which the fasteners extend’, or ‘the openings being spaced
to prevent rotation of the ski support member relative to a longitudinal axis
of the spacer.’” Final Act. 24–25. The Examiner, however, acknowledges
that “[t]he original disclosure describes the ski support member 206 as
having two or more screws 402a, 402b that function to prevent rotation of
the ski support member 206 and the spacer 208.” Id. at 24. Patent Owner
correctly responds that “Figures 5 and 6, among others, clearly show
openings for the described screws” and “[t]he Office . . . fails to consider
that one skilled in the art would readily determine that the spacing of these
openings . . . would prevent rotation relative to the longitudinal axis of the
spacer.” Appeal Br. 17–18.
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Figure 5 is reproduced below, with an annotation, for reference.

Figure 5 is “a rear perspective view of another embodiment of an apparatus
for supporting a ski or pair of skis on a support structure.” ’382 Patent,
3:65–67. The openings referenced by Patent Owner are those circled in the
figure reproduced above.
Accordingly, we do not sustain the Examiner’s decision to reject
claims 2 and 13.
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As for claims 6, 16, and 18, which depend from claims 1, 12, and 17,
respectively, the Examiner concludes that “the original disclosure does not
define the end (top) surface 412 as forming rounded portions on opposing
sides of a flat portion” and, instead, “the rounded portions shown in Fig. 4
are spaced from and distinct from the flat end surface 412.” Final Act. 25.
Patent Owner correctly responds that the Examiner does not address the
actual claim language and “[f]rom at least Figures 4 and 9, one of skilled in
the art would have readily concluded that the inventor had possession of the
claimed invention.” Appeal Br. 18.
Figure 4 is reproduced below, with an annotation, for reference.

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Figure 4 is “a front perspective view of another embodiment of an apparatus
for supporting a ski or pair of skis on a support structure.” ’382 Patent,
3:62–64. The rounded portion is circled in the figure reproduced above.
Claims 6, 16, and 18 each recite that “the top surface forms a flat portion
that is upwardly oriented when the ski support member is mounted to the
support structure and rounded portions on opposing sides of the flat
portion.” As seen above, rounded portions are located on opposite sides of
the upwardly oriented flat portion.
Accordingly, we do not sustain the Examiner’s decision to reject
claims 6, 16, and 18.
The Examiner also determines that there is no support for the
“adjustment member” including “a fastener,” as recited in claim 7, which
depends from claim 1. Final Act. 25. Patent Owner directs us to Figure 7
and the corresponding description at column 9, lines 37–57 as support for
that limitation.
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Figure 7 is reproduced below.

Figure 7 is “a front perspective view of one embodiment of an adjustable
apparatus for supporting a plurality of skis or pairs of skis on a support
structure.” ’382 Patent, 4:4–6. We are persuaded by Patent Owner’s
contentions based on the cited portions of the ’382 Patent, which explain that
“adjusting members 712 . . . facilitate[s] adjustment of a position of the ski
support members 206 relative to the support structure 204.” Id. at 9:38–40.
The ’382 Patent provides an example where “the one or more adjusting
members 712 are channels 714 elongated in a lengthwise direction,” with
“[a] fastener (not shown) . . . received within each of the one or more
channels 714” and “movable along the one or more channels 714 in the
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lengthwise direction” in order “to position the ski support member 206 at a
desired position.” Id. at 9:40–53.
Accordingly, we do not sustain the Examiner’s decision to reject
claim 7.
Claim 9, which depends from claim 1, and claim 17 each add a
“contact bumper that extends frontwardly beyond the substantially flat
surface” of the “ski support member.” Claims 19 and 20, which depend
from claims 9 and 17, respectively, further specify that “the contact bumper
extends from the substantially flat surface.” The Examiner determines that
there is no written description support for those claims because “[i]n the
disclosed embodiments including the contact bumper required by claims 9,
17, 19 and 20 . . . the substantially flat surface is not capable of abutting the
ski since the contact bumper extends beyond the substantially flat surface
and itself abuts the ski.” Final Act. 25. The Examiner, however, does not
explain why the Specification fails to support this limitation. Patent Owner
directs us to the embodiment of Figure 9 as supporting the limitations in
these claims.
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Figure 9 is reproduced below.

Figure 9 is “a front perspective view of another embodiment of an apparatus
for supporting a ski or pair of skis on a support structure.” ’382 Patent,
4:10–12. The corresponding description of that figure, which includes
bumper 910 extending beyond substantially flat surface 908, explains that
“the ski engaging portion 906 of the ski support member 206 has a
substantially flat surface 908 engageable with one of the deck surface 104 of
the ski 102 and an element disposed on the deck surface 104 of the ski 102.”
Id. at 11:1–5. That is, the Specification expressly describes what is recited
in the rejected claims. The Examiner does not address this, or any, portion
of the written description. Rather, the Examiner simply concludes, in the
Answer, that “Fig[ure] 9 . . . does not illustrate the substantially flat surface
of the ski engaging portion as configured to abut the ski; rather, the figure
shows the ski abutting the contact bumper.” Ans. 34.
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Accordingly, we do not sustain the Examiner’s decision to reject
claims 9, 17, 19 and 20.
Claim 12 recites that “the ski engaging portion [is] further configured
to cause the ski braking element of the binder heel piece of the ski to be free
from engagement with the ski support member while the ski hangs from the
ski support member.” The Examiner concludes that “the original disclosure
does not describe the ski engaging portion 404 as being ‘configured’ in some
particular way such that it functions to ‘cause’ the ski braking element to be
free from engagement with the ski support member while the ski hangs
therefrom,” without further explanation. Final Act. 25–26. Patent Owner
responds that “Figure 3 unquestionably shows that the ski engaging portion
is configured to cause the ski braking element to be free from engagement
with the ski support member” and “by viewing Figure 3 one skilled in the art
would readily ascertain that the inventor had possession of embodiments
where the ski engaging portion is configured to cause the ski braking
element to be free from engagement with the ski support member.” Appeal
Br. 19.
Figure 3 is reproduced above in connection with the discussion of the
written description rejection of claims 1 and 17. As seen in that figure, ski
support member 206 (circled in the annotated figure) is located above, and
free from engagement with ski braking elements 314, 316 (also circled in
that figure).
Accordingly, we do not sustain the Examiner’s decision to reject
claim 12.
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Claim 14 depends from claim 12 and further recites that “the ski
support member is circular with the top surface extending fully around the
ski support member.” The Examiner concludes that “the original disclosure
does not provide support for a ski support member that is ‘circular’ (only
‘substantially circular’).” Final Act. 26. The Examiner additionally
concludes that
the original disclosure . . . does not describe the embodiment of
Fig. 11 as having a ski engaging portion with a substantially flat
surface that is configured to abut at least one of the deck surface
of the ski and an element disposed on the deck surface of the
ski while the ski hangs from the ski support member or as
having a spacer coupled to the ski support member to cause the
outer wall of the spacer to be positioned below the rear surface
of the binder engaging portion.
Id. Patent Owner responds that “Figure 11 obviously shows a circular ski
support member. One skilled in the art would readily ascertain from Figure
11, as well as from the corresponding description, that the inventor had
possession of circular ski support members.” Appeal Br. 19.
Figure 11 is reproduced below in connection with the discussion of
the rejection of claim 14 as being indefinite. It is readily apparent that figure
depicts ski support member 1102 as being circular. The Examiner does not
provide, nor do we see, any basis for the additional conclusions regarding
the features of ski support member 1102 in Figure 11.
Accordingly, we do not sustain the Examiner’s decision to reject
claim 14.
Claims 21–23, depend from claims 1, 12, and 17, respectively. Each
of those claims further recites that “the coupling element is positioned within
the outer wall of the spacer.” The Examiner acknowledges that in the
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Specification, “the screws 402a, 402b appear to be disclosed as extending
through the spacer 208.” Final Act. 26. The Examiner determines, however,
that “[t]here is no disclosure of the screws 402a, 402b as being ‘positioned
within’ an ‘outer wall’ of the spacer 208” because “extending through the
spacer 208 is not synonymous with being positioned within an outer wall of
the spacer.” Id. at 26–27. Patent Owner responds that “this is exactly what
is shown in Figure 4 among other figures.” Appeal Br. 19.
As seen in Figures 4 and 5, which are reproduced above with the
discussion of the rejection of claims 2 and 13 and that of claims 6, 16, and
18, the outer wall of spacer 208 surrounds screws 402a, 402b. That is, those
screws are positioned within the outer wall of spacer 208.
Accordingly, we do not sustain the Examiner’s decision to reject
claims 21–23.
35 U.S.C. § 112, Second Paragraph
The Examiner rejects claims 9, 10, 14, 17–20, and 23 as indefinite.
Final Act. 27. The Examiner fails to establish indefiniteness of those claims.
The basis for the Examiner’s rejection of claims 9, 17, 19, and 20 is
that “the substantially flat surface is not capable of abutting the ski” as
required by claims 1 and 17 because “the contact bumper [recited in claims
9, 17, 19, and 20] extends beyond the substantially flat surface and itself
abuts the ski,” which is similar to that discussed above relative to the written
description rejection of those claims. Id. Patent Owner disagrees,
responding that “this is exactly what is shown in Figure 9.” Appeal Br. 20.
Patent Owner then simply concludes, without meaningful explanation, that
“[t]hose skilled in the art would understand what is claimed when claims 9,
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17, 19 and 20 are read in light of the specification” and “[b]y simply viewing
Figure 9, one skilled in the art would understand that the claimed apparatus
can include a contact bumper that extends frontwardly beyond the
substantially flat surface.” Id. at 20–21. Patent Owner concludes by
alleging that “[a]ny ambiguity could be resolved by reading the
specification,” but does not direct us to any particular portion of the
Specification. Id. at 21.
Regardless of whether Figure 9 depicts the particular arrangement of
claims 9, 17, 19, and 20, the Examiner has failed to establish sufficiently that
those claims are indefinite. That is, the Examiner has failed to identify
anything in those claims that is unclear based on reading those claims.
Claim 1, for example, recites that “the ski engaging portion has a
substantially flat surface that is configured to abut at least one of the deck
surface of the ski and an element disposed on the deck surface of the ski
while the ski hangs from the ski support member.” Claim 9, which depends
from claim 1, adds “a contact bumper that extends frontwardly beyond the
substantially flat surface” of the “ski engaging portion.” As best we can tell,
the Examiner’s rejection appears to be based on a purported impossibility of
the abutment between the “substantially flat surface” of the “ski engaging
portion” and the “deck surface” of the ski when the “contact bumper . . .
extends frontwardly beyond the substantially flat surface” (i.e., when the
bumper is located between the “substantially flat surface” and the “deck
surface”). The rejection fails at least because it does not address the
recitation in claim 1 that the “substantially flat surface” can “abut . . . the
deck surface of the ski [or] an element disposed on the deck surface.” For
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example, there is no explanation as to why it is not possible for the
“substantially flat surface” to “abut . . . an element disposed on the deck
surface” and have the “contact bumper . . . extend[] frontwardly beyond the
substantially flat surface,” possibly contacting the “deck surface.” Further,
the claims do not specify any particular structure of the deck surface, itself,
that would preclude abutment between the “substantially flat surface” of the
“ski engaging portion” and the “deck surface” of the ski when the “contact
bumper . . . extends frontwardly beyond the substantially flat surface.”
Claim 10 is rejected because it depends from claim 9 and claim 18 is
rejected because it depends from claim 17. Those rejections fail for the
reasons set forth above.
The basis for the Examiner’s rejection of claim 14 is that it “recit[es]
‘the top surface extending fully around the ski support member,’” and
although “a surface extending ‘fully around’ the ski support member can
comprise a top portion (as well as a bottom portion)” that entire surface
“does not constitute a ‘top surface.’” Final Act. 27. Patent Owner responds
that “this is exactly what is shown in Figure 11” and “[b]y simply viewing
Figure 11, those skilled in the art would understand what is meant by the top
surface extending fully around the ski support member.” Appeal Br. 21.
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Figure 11 is reproduced below, with our annotation, for reference.

Figure 11 is “a front perspective view of one embodiment of an adjustable
apparatus for supporting a ski or pair of skis on a support structure.” ’382
Patent, 4:17–19. The arrow indicates the surface considered the “top
surface” by Patent Owner in this embodiment. The Examiner faults the use
of the term “top” to describe the surface in the claim, but offers no
explanation as to why one skilled in the art would not understand the scope
of claim in view of the Specification. Although the claim language is
unconventional, based on the disclosure identified by Patent Owner, we
agree that one skilled in the art would appreciate what is meant by “the top
surface extending fully around the ski support member” recited in claim 14.
For at least these reasons, we do not sustain the Examiner’s decision
to reject claims 9, 10, 14, 17–20, and 23 as indefinite.
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35 U.S.C. §§ 102 and 103
The Examiner provides a number of rejections for the claims based on
various references. In each rejection, however, the reference relied on by the
Examiner as teaching the “ski support member” has no specific application
to hanging skis. The Examiner does not assert that any of those references
are related specifically to hanging skis. Rather, the Examiner’s position is,
for example, that each of those references “includes all of the structural
requirements of the claimed hanging apparatus” and “meets the functional
requirements of the claimed hanging apparatus because it is capable of
performing the function of hanging a ski in a vertical orientation.” Final
Act. 5–6; see also id. at 8–9, 13–14, 17–18. Patent Owner responds, for
example, that the Examiner has improperly construed much of the claim
language as functional. Appeal Br. 21, 23–28. Patent Owner contends that
“the Office employs a claim construction that ignores the fact that the
claimed apparatus is specifically designed for hanging a ski in a vertical
orientation from a support structure.” Id. at 21–22. Patent Owner’s
contention is persuasive.
The resolution of the prior art rejections turns on the claim
construction discussed above relative to the Examiner’s rejection of the
claims under 35 U.S.C. § 305. As explained above with respect to that
rejection, claim 1 requires a “binder engaging portion” that is designed to
“be inserted into the receiving space of the ski to engage the binder toe piece
of the ski and to position the rear surface against the boot retention flange of
the ski while the ski hangs from the ski support member.” Independent
claims 12 and 17 have similar requirements. The Examiner fails to identify
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this structure in the prior art rejections of the claims. Indeed, the Examiner
does not purport to make such a finding. Rather, the Examiner determines
that the prior art need only be capable of performing the function associated
with the “configured to” limitations. See, e.g., Final Act. 5–6, 8–9, 13, 17.
We disagree with that determination. Moreover, even if the claims only
required that the prior art be capable of performing the functions following
the “configured to” language in the claims, the Examiner makes no findings
regarding any disclosure of the references disclosing dimensions of the
respective structure, such that the structure is capable of performing the
recited functionality.
The rejection based on Solheim is illustrative of the problem with the
rejections. The Examiner provides two annotated versions of Solheim’s
Figure 2. Final Act. 5, 6. Those figures are reproduced below.

The figures reproduced above are a section view of the mounting device of
Solheim’s Figure 2 with the additional of the Examiner’s annotation labeling
the components corresponding to the claim elements, as well as a schematic
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illustration of how the Examiner envisages a ski supported by the mounting
device.
For context, we also reproduce Solheim’s Figure 1 below.

Figure 1 of Solheim “is a perspective view showing a number of the
mounting devices . . . being used to display items on a slatwall.” 3:39–41.
The Examiner concludes that
the hanging apparatus of Solheim et al. meets the functional
requirements of the claimed hanging apparatus because it is
capable of performing the function of hanging a ski in a vertical
orientation with the first engaging portion engaging a
substantially flat surface of a ski and the second engaging
portion inserted into a binder toe piece to position the rear
surface against a boot retention flange of the binder toe piece
and to leave a binder heel piece free from engagement with the
support member while enabling engagement of a ski braking
element with that of another ski.
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Final Act. 6. The Examiner, however, makes no findings supporting that
conclusion, let alone findings that would support a determination that
Solheim’s mounting device is specifically “designed to” or “made to”
perform in the recited manner. The Examiner’s determination as to
Solheim’s device’s capability to support skis is speculative.
Accordingly, we do not sustain the Examiner’s decision to reject
claims 1, 7, 12, 14, 21, and 22 as anticipated by Solheim.
The other rejections fail for similar reasons. For simplicity, we
reproduce the annotated figures provided by the Examiner, which illustrate
the deficiencies in the remaining rejections of the independent claims.
The rejection based on de Keratry cites to Figure 5B, reproduced
below.

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The figure reproduced above is de Keratry’s Figure 5B, which depicts “a
side view of a plastic hanger device” (de Keratry ¶ 18) with the additional of
the Examiner’s annotation labeling the components corresponding to the
claim elements, as well as a schematic illustration of how the Examiner
envisages a ski supported by the mounting device. Again, the Examiner
makes no findings that would support de Keratry’s hanger device being
capable of performing in the recited manner. In fact, de Keratry provides
dimensions that seem insufficient to perform in the manner recited by the
claims. See id. ¶ 30 (“[t]he knurl knob 134 has a diameter of about 3/4 inch
and has a 1/8-inch recess between the knob and the knob base”). Thus, the
Examiner’s determination as to de Keratry is speculative.
Short and McCain are each design patents for knobs. The Examiner’s
annotated versions of Short’s Figure 4 and McCain’s Figure 4 are each
reproduced side-by-side below.

The annotated version of Short’s Figure 4 (left) is a side view of a knob with
the addition of the Examiner’s annotation labeling the components
corresponding to the claim elements, as well as a schematic illustration of
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how the Examiner envisages a ski supported by the mounting device. The
annotated version of McCain’s Figure 4 (right) is a section view of a knob
with the additional of the Examiner’s annotation labeling the components
corresponding to the claim elements, as well as a schematic illustration of
how the Examiner envisages a ski supported by the mounting device.
Again, the Examiner makes no findings that would support the knob of Short
or McCain being capable of performing in the recited manner. Further, as
noted above, Short and McCain are design patents and do not include any
written description providing dimensions of those knobs. Thus, the
Examiner’s determinations are speculative.
The rejections of the dependent claims do not cure these deficiencies.
For at least the reasons set forth above, we do not sustain any of the
rejections directed to claims 1, 2, 6–10, 12–14, and 16–23.
DECISION
We REVERSE the Examiner’s decision to reject claims 1–23.

REVERSED