Ex Parte Bussiere

Board of Patent Appeals and Interferences

Jul 20, 2007

10162098 (B.P.A.I. Jul. 20, 2007)

The opinion in support of the decision being entered today is not binding precedent
of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHANE BUSSIERE
____________

Appeal 2007-1313
Application 10/162,098
Technology Center 3600
____________

Decided: July 20, 2007
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Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and LINDA E.
HORNER, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 6-91. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellant’s claimed invention is to a tongue structure for use in a boot.
Claim 6, reproduced below, is representative of the subject matter on appeal.
6. A tongue structure for use in boot, said tongue
structure comprising an upper layer formed of a rigid
protective material, a lower layer formed of a resilient
stretchable material, said upper layer being secured to
said lower layer along marginal side edges thereof, said
upper layer being spaced from said lower layer
intermediate said side marginal edges to thereby provide
an air space between said upper and lower layers, the
arrangement being such that when said tongue is used in
a boot, the foot of a user will contact said lower layer
with said upper layer being spaced therefrom in a central
region.

1 Claims 1-17 are pending in the application. Claims 10-16 are allowed and
Appellant dropped claims 1-5 and 17 from this appeal (Br. 2).
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THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Hoshizaki US 4,835,885 Jun. 6, 1989
Gabrielli EP 0 629 358 A1 Dec. 21, 1994
Claims 6-9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Gabrielli and Hoshizaki.

ISSUE
The issue before us is whether the combination of Gabrielli and Hoshizaki
would have led one having ordinary skill in the art at the time of the invention to
the subject matter of claim 6. In particular, the issue focuses on whether Gabrielli
discloses an air space between upper and lower layers of a tongue structure and
whether there would have been a reason to make the lower layer of Gabrielli’s
tongue structure from a resilient stretchable material in view of Hoshizaki.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427,
7 USPQ2d 1152, 1156 (Fed. Cir. 1988) (explaining the general evidentiary
standard for proceedings before the Office).
1. Gabrielli discloses a “tongue 16 with an internal lining 64 welded to a
waterproof layer 66 to form the tongue pocket 36 to be filled by
silicone 68” (Gabrielli, col. 4, ll. 6-9).
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2. Gabrielli describes that once the tongue pocket 36 has been formed,
an injection gun 80 is used to fill the pocket with silicone (Gabrielli,
col. 4, ll. 11-21).
3. As such, prior to injection of the silicone, Gabrielli’s tongue structure
has an inner liner and an outer layer separated by an air space.
4. Gabrielli discloses that once the pocket has been completely filled
with silicone, then the silicone is left to vulcanize for about twenty
minutes (Gabrielli, col. 5, ll. 13-15).
5. As such, during use of Gabrielli’s shoe, the tongue structure has an
inner liner and an outer layer separated by silicone.
6. Gabrielli does not disclose that the inner lining is made of a resilient
stretchable material or that the outer layer is made of a rigid protective
material.
7. Hoshizaki discloses a tongue structure for a skate having “[a]
conventional inner liner 84 and leather or the like cover 86 stitched at
88 about the periphery thereof (Hoshizaki, col. 5, ll. 50-53).
8. Hoshizaki discloses that two layers are inserted within the sandwich
created by the inner liner 84 and cover 86: a base layer 90 of semi-
rigid material, such as molded closed cell polyurethane foam, and a
stiff layer 92 made of a rigid thermoplastic material (Hoshizaki, col. 5,
ll. 53-63).

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PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level of
skill in the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See
also KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors continue
to define the inquiry that controls.”)
In KSR, the Supreme Court explained, “[o]ften, it will be necessary for a
court to look to interrelated teachings of multiple patents; the effects of demands
known to the design community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all in order to
determine whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” Id. at 1740-41, 82 USPQ2d at 1396.
The Court noted that “[t]o facilitate review, this analysis should be made explicit.”
Id., citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere conclusory
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statements; instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”). However, “the
analysis need not seek out precise teachings directed to the specific subject matter
of the challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id.

ANALYSIS
Appellant argues claims 6-9 as a group. We select claim 6 as a
representative claim, and claims 7-9 will stand or fall with claim 6. 37 C.F.R.
§ 41.37(c)(1)(vii)(2006).
The Examiner found Gabrielli teaches all of the elements of claim 6 except
that Gabrielli does not specifically disclose the upper layer to be a rigid material
and the lower layer to be a resilient stretchable material (Answer 3). Appellant
contends that Gabrielli fails to disclose a tongue structure having an air space
between upper and lower layers when used in a boot, because Gabrielli teaches to
fill its air space with a liquid material which becomes vulcanized elastomer (Br. 4).
Claim 6 recites “A tongue structure for use in boot, said tongue structure
comprising … said upper layer being spaced from said lower layer intermediate
said side marginal edges to thereby provide an air space between said upper and
lower layers.” Gabrielli’s tongue structure includes an air space between the upper
and lower layers during manufacture, prior to injection of the silicone between the
layers (FF 3). Claim 6 further recites that “when said tongue is used in a boot, the
foot of a user will contact said lower layer with said upper layer being spaced
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therefrom in a central region.” Gabrielli’s tongue structure has this arrangement
when the user’s foot is inserted in the boot, i.e., during use, because its upper and
lower layers are spaced from each other in a central region by silicone during use
(FF 5). The Examiner, however, cannot have it both ways. Either the “tongue
structure” of Gabrielli that meets the claim is the tongue structure during
manufacture, or the tongue structure during use, not both. As such, Gabrielli’s
tongue structure fails to meet the limitations of claim 6 of having an air space
between the upper and lower layers and of the layers being separated from one
another during use.
The Examiner found that Hoshizaki discloses a tongue structure for use in
footwear that has a resilient lower layer and a rigid upper layer as claimed (Id.).
The Examiner concluded that it would have been obvious to modify Gabrielli’s
tongue structure to include the specific material characteristics of the tongue
structure of Hoshizaki since it is within the general skill of a worker to select a
known material on the basis of its suitability for the intended use (Answer 4) and
because comfort is an important factor in a shoe or boot (Answer 5). Appellant
contends that there is no reason why one would want to use a resilient stretchable
material for the lower layer of Gabrielli’s tongue structure, because when the liquid
is placed in the air space, the lower layer would stretch, which would be
undesirable (Br. 5). We agree with Appellant.
We see no reason why one having ordinary skill in the art would have
replaced the internal lining 64 of Gabrielli’s tongue structure with the materials of
Hoshizaki. By using a stretchable inner liner, Gabrielli’s pocket 36 would be
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subject to distortion and enlargement as the pocket 36 is being filled with silicone.
We do not agree with the Examiner that the use of a resilient stretchable material
would have been an obvious design choice or a material suitable for Gabrielli’s
intended purpose. As such, we hold that the combination of Gabrielli and
Hoshizaki would not have led one having ordinary skill in the art to the subject
matter of claim 6.

CONCLUSIONS OF LAW
We conclude that Appellant has shown the Examiner erred in rejecting
claims 6-9 under 35 U.S.C. § 103(a) as unpatentable over Gabrielli and Hoshizaki.

DECISION
The decision of the Examiner to reject claims 6-9 is reversed.
REVERSED

jlb

Eric Fincham
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