11092218 (B.P.A.I. Jun. 21, 2010)

Ex Parte Cagliari

Board of Patent Appeals and InterferencesJun 21, 2010

11092218 (B.P.A.I. Jun. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte PETER CAGLIARI ____________ Appeal 2009-007996 Application 11/092,218 Technology Center 3700 ____________ Decided: June 21, 2010 ____________ Before JENNIFER D. BAHR, III, STEVEN D.A. McCARTHY, and STEFAN STAICOVICI, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-007996 Application 11/092,218 2 STATEMENT OF THE CASE Peter Cagliari (Appellant) appeals under 35 U.S.C. § 134 (2006) from the Examiner’s decision rejecting claims 1-12. Claims 13-18 have been withdrawn by the Examiner. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2006). THE INVENTION Appellant’s invention relates to a sports shoe including a transparent or translucent wall 11 having a decoration on its inner surface 12 that is visible from the outside because of the transparency of wall 11. Spec. 5, ll. 30-35 and fig. 2. Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. A sports shoe (1) comprising a part of shell (3) or cuff (4) comprising a wall (11) with a decoration (8), wherein at least a portion of the wall (11) is transparent or translucent and includes the decoration (8) arranged directly on an innermost face of the shoe (12) so as to leave the decoration visible from the outside and to protect it. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Geller US 3,613,271 Oct. 19, 1971 Chaigne US 2004/0103562 A1 Jun. 3, 2004 Meibock US 2004/0168357 A1 Sep. 2, 2004 The following rejections are before us for review: The Examiner rejected claims 1, 3-6, 8, and 9 under 35 U.S.C. § 102(e) as anticipated by Chaigne. Appeal 2009-007996 Application 11/092,218 3 The Examiner rejected claims 2, 7, and 10-12 under 35 U.S.C. § 103(a) as unpatentable over Chaigne. The Examiner rejected claims 1-12 under 35 U.S.C. § 103(a) as unpatentable over Geller and Meibock. THE ISSUES 1. Whether Chaigne teaches a sports shoe having a decoration “arranged directly on an innermost face of the shoe,” as required by independent claim 1. 2. Whether the combined teachings of Geller and Meibock would have prompted a person of ordinary skill in the art to provide the sports boot of Geller with a decoration on the inner face of the boot, as taught by Meibock. SUMMARY OF DECISION We AFFIRM. OPINION The anticipation rejection based on Chaigne Appellant argues that Chaigne does not teach a sports shoe having a decoration “arranged directly on an innermost face of the shoe,” as required by independent claim 1. App. Br. 10. Specifically, Appellant argues that because the decoration of Chaigne is adhered to the fastening layer 13 and the fastening layer 13 is adhered to the shell, the fastening layer “prevents the decoration of Chaigne from being arranged directly on the innermost face of the shoe.” Id. In response, the Examiner specifies that although at stage V of the manufacturing process of Chaigne the innermost layer is the Appeal 2009-007996 Application 11/092,218 4 fastening layer 13, nonetheless, at stage III, the decoration constitutes the innermost layer, and “the sports boot as taught at stage III satisfies all of the structural limitations as claimed.” Ans. 7. Although we appreciate the Examiner’s position that at stage III the decorative layer 11 is not bonded to the fastening layer 13, we agree with Appellant that, “the product of Chaigne at Stage III is not a sports shoe comprising a shell as recited in claim 1.” Reply Br. 10. Chaigne specifically teaches that a fastening layer 13 is required to bond the decorating layer 11, which has decoration 9 thereon, to a polyurethane material in an injection molding process to form the collar 1, namely, a shell portion of ski boot 15. Chaigne, paras. [0034] and [0042] and figs. 1 and 4. In other words, since the collar 1 cannot be manufactured without the fastening layer 13, and the collar 1 is part of ski boot 15, we do not see how the product at stage III can resemble a boot and as such, satisfy all the claimed limitations of independent claim 1, as the Examiner contends. Hence, Chaigne does not teach a sports shoe having a decoration “arranged directly on an innermost face of the shoe,” as required by independent claim 1. Since Chaigne does not teach all the elements of independent claim 1, the rejection of independent claim 1 and its dependent claims 3-6, 8, and 9 under 35 U.S.C. § 102(e) as anticipated by Chaigne cannot be sustained. The obviousness rejection over Chaigne With respect to claims 2, 7, and 10-12, the Examiner’s proposed modification of the disclosure of Chaigne does not remedy the deficiencies of Chaigne as described above. See Ans. 6. Accordingly, the rejection of Appeal 2009-007996 Application 11/092,218 5 claims 2, 7, and 10-12 under 35 U.S.C. § 103(a) as unpatentable over Chaigne likewise cannot be sustained. The obviousness rejection over Geller and Meibock Appellant argues the rejection under 35 U.S.C. §103(a) of claims 1-12 together as a group. See App. Br. 14. Therefore, in accordance with 37 C.F.R. 41.37(c)(1)(vii), we have selected claim 1 as the representative claim to decide the appeal, with claims 2-12 standing or falling with claim 1. At first, Appellant argues that Geller does not disclose a decoration and Meibeck does not disclose applying the decoration on an innermost face of the shoe. App. Br. 13. Secondly, Appellant argues that because Meibock discloses a boot including a wall having a plurality of layers and Geller discloses a boot having a single layer in the wall, a person of ordinary skill in the art would not have combined the teachings of Geller and Meibeck, “as Meibock teaches against the boot of Geller, i.e., teaches against using a single layer in the wall of a boot.” Reply Br. 14. Appellant’s arguments appear to attack the teachings of Geller and Meibeck individually, rather than the combination of Geller and Meibeck. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co, 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, simply that there are differences between two references is insufficient to establish that such references "teach away" from any combination thereof. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992). Appellant further argues that, “[t]here is no teaching or suggestion in Geller of adding decorations to the boot.” App. Br. 13. This argument is Appeal 2009-007996 Application 11/092,218 6 foreclosed by KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007), where the Court rejected the rigid requirement of a teaching, suggestion or motivation to combine known elements in order to show obviousness. “[A] court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. In this case, Geller discloses a sports boot 15 made from a translucent thermoplastic material. Geller, col. 1, ll. 12-14 and figs 1 and 2. Meibock discloses a boot 300 including a graphic design 1190 formed beneath a transparent outer layer 1192. Meibock further discloses that the transparent layer 1192 protects the graphic design 1190. Meibeck, paras. [0044] and [0067] and fig. 11. A person of ordinary skill in the art would have readily appreciated that positioning a graphic design beneath a transparent layer, as taught by Meibock, would provide the same benefit to the boot of Geller, that is, it would protect the graphic design. As such, Appellant’s claimed sports shoe is nothing more than the boot of Geller where the graphic design of Meibeck is positioned on the inner face of Geller’s upper 17 in order to provide a more decorative appearance. Hence, modifying the boot of Geller to include a graphic design on the inner face of the boot, as taught by Meibeck, would not have been uniquely challenging to a person of ordinary skill in the art, because it is no more than “the mere application of a known technique to a piece of prior art ready for the improvement.” KSR at 417. The modification appears to be the product not of innovation but of ordinary skill and common sense. Moreover, Appellant has not alleged, much less shown, that the modification of Geller to include the graphic design of Meibeck would have been beyond the skill of a person of ordinary skill in the art. In conclusion, Appeal 2009-007996 Application 11/092,218 7 we agree with the Examiner that, “[i]t would have been obvious to provide the sports boot of Geller with a decoration, as taught by Meibock, on the inner face of the shell of Geller, to provide a more decorative appearance.” Ans. 4-5. Accordingly, for the foregoing reasons, the rejection of claim 1, and claims 2-12 standing or falling with claim 1, under 35 U.S.C. § 103(a) as unpatentable over Geller and Meibock is sustained. CONCLUSIONS 1. Chaigne does not teach a sports shoe having a decoration “arranged directly on an innermost face of the shoe,” as required by independent claim 1. 2. The combined teachings of Geller and Meibock would have prompted a person of ordinary skill in the art to provide the sports boot of Geller with a decoration on the inner face of the boot, as taught by Meibock. DECISION The Examiner’s decision to reject claims 1-12 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2007). AFFIRMED Appeal 2009-007996 Application 11/092,218 8 mls FROMMER LAWRENCE & HAUG 745 FIFTH AVENUE- 10TH FL. NEW YORK, NY 10151