Ex Parte Carroll

Board of Patent Appeals and Interferences

Apr 16, 2001

09027867 (B.P.A.I. Apr. 16, 2001)

1 Claim 9 was amended subsequent to the final rejection.
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for publication and is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FRANCIS C. CARROLL
____________
Appeal No. 2000-2040
Application No. 09/027,867
____________
ON BRIEF
____________
Before McQUADE, NASE, and LAZARUS, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 2, 5, 6, 9, 10, 15, 16 and 21, which are
all of the claims pending in this application.1
We REVERSE and REMAND.
Appeal No. 2000-2040
Application No. 09/027,867
Page 2
BACKGROUND
The appellant's invention relates to a golf shoe cleat. A
copy of the claims under appeal is set forth in the appendix to
the appellant's brief.
The applied prior art references of record relied upon by
the examiner in rejecting the appealed claims are:
Jordan et al. (Jordan) 4,014,114 Mar. 29, 1977
Johnson 4,327,503 May 4, 1982
Dassler 4,375,728 Mar. 8, 1983
Kelly 5,321,901 June 21, 1994
Kataoka et al. (Kataoka) 5,581,913 Dec. 10, 1996
Softspikes advertisement, "A Unique Holiday Offer," Golf Digest,
page 149, December 1996 (Softspikes)
Claims 1, 15 and 21 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Softspikes in view of Dassler.
Claims 2, 5 and 9 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Softspikes in view of Dassler and Kelly
or Jordan.
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Application No. 09/027,867
Page 3
Claims 6 and 10 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Softspikes in view of Dassler and Kelly
or Jordan and either Johnson or Kataoka.
Claim 16 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Softspikes in view of Dassler and Johnson or
Kataoka.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 17, mailed
January 27, 2000) for the examiner's complete reasoning in
support of the rejections, and to the brief (Paper No. 16, filed
December 29, 1999) and reply brief (Paper No. 18, filed March 24,
2000) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art, and to the respective positions
articulated by the appellant and the examiner. Upon evaluation
of all the evidence before us, it is our conclusion that the
Appeal No. 2000-2040
Application No. 09/027,867
Page 4
evidence adduced by the examiner is insufficient to establish a
prima facie case of obviousness with respect to the claims under
appeal. Accordingly, we will not sustain the examiner's
rejection of claims 1, 2, 5, 6, 9, 10, 15, 16 and 21 under 35
U.S.C. § 103. Our reasoning for this determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness
is established by presenting evidence that would have led one of
ordinary skill in the art to combine the relevant teachings of
the references to arrive at the claimed invention. See In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988)
and In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA
1972).
The appellant argues in the briefs that the applied prior
art does not suggest the claimed subject matter. We agree.
All the claims under appeal require the claimed golf shoe
cleat to include a plurality of teeth having a surface with an
Appeal No. 2000-2040
Application No. 09/027,867
Page 5
2 The use of such hindsight knowledge to support an
obviousness rejection under 35 U.S.C. § 103 is, of course,
impermissible. See, for example, W. L. Gore and Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984).
outward angulation to provide lateral stability and enhanced
traction. While Dassler does teach a cleat having arms disposed
at an outward angulation to provide a high degree of slip
resistance, sole elasticity, and lateral stability, we fail to
find any motivation in any of the applied prior art, to have
modified the Softspikes' golf shoe cleat to have included such a
feature absent the use of impermissible hindsight.2 It follows
that we cannot sustain the examiner's rejections of claims 1, 2,
5, 6, 9, 10, 15, 16 and 21.
REMAND
We remand this application to the examiner for consideration
of the following issues of patentability:
1. Are any of the pending claims anticipated under 35 U.S.C.
§ 102(b) by French Publication No. 2,679,421 (of record) to
Bouyer? As shown in Figures 1-4 of Bouyer, the spike/cleat (for
a sports shoe, especially a golf shoe) does include a plurality
of points/teeth having a surface with an outward angulation.
Appeal No. 2000-2040
Application No. 09/027,867
Page 6
2. Are any of the pending claims anticipated under 35 U.S.C.
§ 102(b) by U.S. Patent No. 3,656,245 (of record) to Wilson? As
shown in Figures 3 and 4 of Wilson, the athletic shoe cleat does
include webs 18 having a surface with an outward angulation.
3. Are any of the pending claims obvious under 35 U.S.C. § 103 by
the combined teachings of Dassler (cited above) and U.S. Patent
No. 3,859,739 (of record)? That is, from the teachings of U.S.
Patent No. 3,859,739 would it have been obvious at the time the
invention was made to a person having ordinary skill in the art
to modify Dassler's cleat shown in Figures 1-2 to be able to be
screwed into a threaded insert on the outsole of a sports shoe,
by means of a threaded extension and if so, does this result in
the subject matter of any of the pending claims?
CONCLUSION
To summarize, the decision of the examiner to reject claims
1, 2, 5, 6, 9, 10, 15, 16 and 21 under 35 U.S.C. § 103 is
reversed. In addition, the application has been remanded to the
examiner for further consideration.
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Application No. 09/027,867
Page 7
This application, by virtue of its "special" status,
requires immediate action, see MPEP § 708.01 (Seventh Edition,
Rev. 1, Feb. 2000).
REVERSED and REMANDED
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD B. LAZARUS )
Administrative Patent Judge )
Appeal No. 2000-2040
Application No. 09/027,867
Page 8
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