Ex parte Artus

Board of Patent Appeals and Interferences

Apr 24, 2002

09195999 (B.P.A.I. Apr. 24, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JEAN-PIERRE ARTUS
____________
Appeal No. 2001-0181
Application No. 09/195,999
____________
ON BRIEF
____________
Before COHEN, STAAB, and McQUADE, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
and 10 through 19. Claims 3 through 9 stand withdrawn from
consideration by the examiner; 37 CFR § 1.142(b). These
claims constitute all of the claims remaining in the
application.
Appellant's invention pertains to an alpine ski boot. A
basic understanding of the invention can be derived from a
Appeal No. 2001-0181
Application No. 09/195,999
2
reading of exemplary claim 1, a copy of which appears in the
APPENDIX to the brief (Paper No. 15).
As evidence of obviousness, the examiner has applied the
documents listed below:
Spier 3,807,062 Apr. 30,
1974
Wittmann et al. 4,907,353 Mar. 13,
1990 (Wittmann)
The following rejections are before us for review.
Claims 1 and 10 through 19 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
Claims 1, 12 through 16, 18, and 19 stand rejected under
35 U.S.C. § 103 as being unpatentable over Wittmann.
Claims 10, 11, and 17 stand rejected under 35 U.S.C. §
103 as being unpatentable over Wittmann, as applied above,
further in view of Spier.
Appeal No. 2001-0181
Application No. 09/195,999
In our evaluation of the applied prior art, we have1
considered all of the disclosure of each document for what it
would have fairly taught one of ordinary skill in the art.
See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966). Additionally, this panel of the board has taken into
account not only the specific teachings, but also the
inferences which one skilled in the art would reasonably have
been expected to draw from the disclosure. See In re Preda,
401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
3
The full text of the examiner's rejections and response
to the argument presented by appellant appears in the answer
(Paper No. 18), while the complete statement of appellant's
argument can be found in the brief (Paper No. 15).

OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
appellant's specification and claims, the applied teachings,1
and the respective viewpoints of appellant and the examiner.
As a consequence of our review, we make the determinations
which follow.
Appeal No. 2001-0181
Application No. 09/195,999
The examiner acknowledges that the phrase "intermediate2
flexible zone" was a typographical error in the final
rejection. Notwithstanding this error, we can fairly assess
the indefiniteness rejection, taking into account the argument
advanced in the brief (pages 4 and 5) relative to the language
of claim 1 concerning the intermediate zone.
4
The indefiniteness rejection
We do not sustain the rejection of claims 1 and 10
through 19 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
As set forth in the answer (page 3), the examiner is of
the view that the phrase "semi-rigid intermediate zone" in
claim 1 is vague and indefinite.2
When we assess the language "semi-rigid intermediate
zone" in the context used in claim 1, and in light of the
underlying specification, it does not appear to us that the
recitation at issue is vague and indefinite, as now explained.
As claimed, the "semi-rigid intermediate zone" is understood
to be a portion of the intermediate sole that is intermediate
the rigid extremities. This is consistent with the
Appeal No. 2001-0181
Application No. 09/195,999
5
specification (pages 3 and 6) which describes the first
embodiment (elected species of Figs. 1 through 3; Paper No. 5)
as including an intermediate sole having a flexible
intermediate zone, with the intermediate sole being made of a
semi-rigid plastic and comprising the intermediate flexible
portion 6. In light of the above, we conclude that the
recitation of a "semi-rigid intermediate zone" in claim 1 is
definite in meaning, and would be understood by those versed
in the art.
The obviousness rejections
We do not sustain the rejection of claims 1, 12 through
16, 18, and 19 under 35 U.S.C. § 103 as being unpatentable
over Wittmann as well as the rejection of claims 10, 11, and
17 under 35 U.S.C. § 103 as being unpatentable over Wittmann
and Spier.
Claim 1 is explicitly addressed to an alpine ski boot
with the feature, inter alia, of "an intermediate sole (2)
comprising a semi-rigid intermediate zone (6) to which are
Appeal No. 2001-0181
Application No. 09/195,999
6
attached rigid extremities (7,8) extending beyond the upper at
the front and rear, against which holding elements of a
standard alpine ski binding interface."
As evidence of obviousness, the examiner applies the
patent to Wittmann which is exclusively focused upon a cross-
country ski boot, not an alpine ski boot as now claimed.
Other than by reliance upon impermissible hindsight and
appellant's own disclosure, it is quite clear to this panel of
the Board that the Wittmann teaching, in an of itself, would
not have been suggestive of converting a cross-country ski
boot to an alpine ski boot by the inclusion of an intermediate
sole comprising a semi-rigid intermediate zone to which are
attached rigid extremities extending beyond its upper at the
front and rear, against which holding elements of a standard
alpine ski binding would interface, as set forth in
appellant's claim 1. Since the evidence applied by the
examiner does not support a conclusion of obviousness as to
independent claim 1, the rejection of appellant's claims
cannot be sustained. As to the Spier reference, it likewise
Appeal No. 2001-0181
Application No. 09/195,999
7
addresses a boot other than an alpine ski boot and clearly
does not overcome the deficiency of the Wittmann document.
In summary, this panel of the board has not sustained any
of the rejections on appeal.
The decision of the examiner is reversed.
Appeal No. 2001-0181
Application No. 09/195,999
8
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
ICC/lbg
Appeal No. 2001-0181
Application No. 09/195,999
9
JOHN MOETTELI, BUGNION S.A.
10, ROUTE DE FLORISSANT
CASE 375
1211 GENEVA
SWITZERLAND
RETURN TO LESLEY
APPEAL NO. 2001--0181 - JUDGE
COHEN
APPLICATION NO. 09/195,999
APJ COHEN
APJ STAAB
APJ McQUADE
DECISION: REVERSED
Prepared By:
DRAFT TYPED: 19 Nov 02
FINAL TYPED: