Ex Parte De Paoli

Board of Patent Appeals and Interferences

Jul 25, 2008

11192933 (B.P.A.I. Jul. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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7
Ex parte THOMAS DE PAOLI 8
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10
Appeal 2008-1364 11
Application 11/192,933 12
Technology Center 3700 13
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Decided: July 25, 2008 16
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Before WILLIAM F. PATE, III, ANTON W. FETTING and 19
BIBHU R. MOHANTY, Administrative Patent Judges. 20
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PATE, III, Administrative Patent Judge.22
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24
DECISION ON APPEAL 25
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STATEMENT OF CASE 27
The Appellant appeals under 35 U.S.C. § 134 (2002) from a Final 28
Rejection of claims 22-34. Claims 1-21 have been previously canceled. We 29
have jurisdiction under 35 U.S.C. § 6(b) (2002). 30
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The Appellant claims a stud for a shoe sole that requires application of 1
a magnetic force in order to release the stud from the shoe sole. 2
Independent claims 22 and 27 read as follows: 3
22. A releasable stud for a shoe sole, the stud comprising: 4
a stud body adapted for improving traction; and 5
a first fastening mechanism coupled to the stud body and 6
adapted to mechanically engage a second fastening mechanism 7
of the shoe sole, 8
wherein the stud body is adapted to be released at least in 9
part by application of a magnetic force. 10
11
27. A releasable stud for a shoe sole, the stud comprising: 12
a stud body adapted for improving traction; 13
an anchoring element disposed on the stud body and 14
adapted to releasably secure the stud body to the sole; and 15
a separate locking mechanism for locking the stud body 16
to the sole to prevent inadvertent disengagement of the stud 17
from the sole, wherein a magnetic force is required to unlock 18
the locking mechanism. 19
20
Independent claim 31 recites a similar sole including a plurality of 21
studs and locking mechanisms where a magnetic force is required to unlock 22
the locking mechanisms. 23
The prior art relied upon by the Examiner in rejecting the claims is: 24
Sarkissian 4,416,072 Nov. 22, 1983 25
Swedick 6,260,292 B1 Jul. 17, 2001 26
27
The Examiner rejected claims 22-34 under 35 U.S.C. § 112, second 28
paragraph, as indefinite.1 29

1 The status of this rejection is not entirely clear because the Examiner’s
Answer states that the Appellant’s statement of the Grounds of Rejection to
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Application 11/192,933

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The Examiner rejected claims 22-34 under 35 U.S.C. § 103(a) as 1
unpatentable over Swedick in view of Sarkissian. 2
The Examiner also rejected claims 22-34 on the ground of 3
nonstatutory double patenting over claims 1-15 of U.S. Patent No. 4
6,957,503. The Appellant does not argue this rejection, but requests that this 5
rejection be held in abeyance until a determination of allowable subject 6
matter is made (App. Br. 5, FN 4). Thus, we summarily affirm this 7
nonstatutory double patenting rejection. 8
We REVERSE the Examiner’s rejections based on 35 U.S.C. §§ 112 9
and 103. 10
We summarily AFFIRM the Examiner’s nonstatutory double 11
patenting rejection. 12
13

be Reviewed (which includes the § 112 rejection) is correct, but the
Examiner’s Answer does not set forth this rejection which was made in the
Final Office Action (Ans. 2; Final Office Action 2). The Examiner’s
Answer also does not provide any response to the arguments set forth by the
Appellant in the Appeal Brief regarding this rejection. There does not
appear to be any record of this rejection having been withdrawn by the
Examiner. While we can deem this rejection to be withdrawn because it is
not set forth and commented upon by the Examiner in the Answer, we
choose to address this rejection in view of the apparent contradiction in the
Answer. See Paperless Accounting, Inc. v. Bay Area Rapid Transit System,
804 F.2d 659, 663 (Fed. Cir. 1986); see also MPEP § 1207.02 (8th ed., Rev.
6, Sep. 2007) (Grounds of rejection not specifically withdrawn by the
examiner and not set forth in the examiner’s answer are usually treated by
the Board as having been dropped, but may be considered by the Board if it
desires to do so).

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ISSUES 1
The following issues have been raised in the present appeal. 2
1. Whether the Appellant has shown that the Examiner erred in 3
rejecting claims 22-34 as indefinite under 35 U.S.C. § 112, second 4
paragraph. 5
2. Whether the Appellant has shown that the Examiner erred in 6
rejecting claims 22-34 as unpatentable over Swedick in view of Sarkissian. 7
8
PRINCIPLES OF LAW 9
35 U.S.C. § 112, second paragraph, recites that “[t]he specification 10
shall conclude with one or more claims particularly pointing out and 11
distinctly claiming the subject matter which the applicant regards as his 12
invention.” Claims are in compliance with 35 U.S.C. § 112, second 13
paragraph, if “the claims, read in light of the specification, reasonably 14
apprise those skilled in the art both of the utilization and scope of the 15
invention, and if the language is as precise as the subject matter permits.” 16
Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385 (Fed. 17
Cir. 1986). 18
“Section 103 forbids issuance of a patent when ‘the differences 19
between the subject matter sought to be patented and the prior art are such 20
that the subject matter as a whole would have been obvious at the time the 21
invention was made to a person having ordinary skill in the art to which said 22
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 23
1734 (2007). The Court further explained, “[o]ften, it will be necessary for a 24
court to look to interrelated teachings of multiple patents; the effects of 25
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demands known to the design community or present in the marketplace; and 1
the background knowledge possessed by a person having ordinary skill in 2
the art, all in order to determine whether there was an apparent reason to 3
combine the known elements in the fashion claimed by the patent at issue.” 4
Id. at 1740-41. The Court noted that “[t]o facilitate review, this analysis 5
should be made explicit.” Id. at 1741, citing In re Kahn, 441 F.3d 977, 988 6
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained 7
by mere conclusory statements; instead, there must be some articulated 8
reasoning with some rational underpinning to support the legal conclusion of 9
obviousness”). However, the analysis need not seek out precise teachings 10
directed to the specific subject matter of the challenged claim. Id. at 1741. 11
12
ANALYSIS 13
Rejection under 35 U.S.C. § 112 14
The Examiner rejected all of the pending claims under 35 U.S.C. 15
§ 112, second paragraph, as indefinite for failing to particularly point out 16
and distinctly claim the invention (Final Office Action 2). The Examiner 17
states that the limitations of independent claims 22, 27 and 31 reciting a 18
magnetic force are functional, indefinite, and incomplete because they are 19
not supported by structure (Final Office Action 2). 20
The Appellant argues that functional language does not render a claim 21
improper and must be considered for what it fairly conveys to a person of 22
ordinary skill in the art (App. Br. 6). The Appellant contends that 23
independent claim 22 “clearly defines a particular capability and structural 24
feature of the releasable stud, i.e., the stud body is releasable in part by the 25
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application of a magnetic force, and sets a definite boundary on the patent 1
protection sought, e.g., no magnetic force, no release of the stud body” 2
(App. Br. 6). The Appellant further argues that “a magnetic force is required 3
to release the stud body or unlock the locking mechanism,” and with respect 4
to 27 and 31, notes that “no magnetic force results in the locking mechanism 5
remaining locked” (App. Br. 6 and 7). 6
We agree with the Appellant. While the Examiner is correct in noting 7
that the limitations of independent claims 22, 27 and 31 reciting the 8
magnetic force are functional, such functional limitations must be 9
considered as argued by the Appellant. See In re Swinehart, 439 F.2d 210, 10
212 (CCPA 1971). In our view, these claims reasonably apprise one of 11
ordinary skill in the art, the utilization and scope of the invention, when read 12
in light of the specification. Hybritech, 802 F.2d 1385. In this regard, the 13
numerous paragraphs in the Specification identified by the Appellant 14
provide specific examples of the utilization and scope of the Appellant’s 15
invention (App. Br. 7). Thus, we find that the Appellant has shown that the 16
Examiner erred in rejecting claims 22-34 as indefinite. 17
18
Rejection under 35 U.S.C. § 103 19
The Examiner rejected all of the pending claims as unpatentable over 20
Swedick and Sarkissian (Ans. 3). The Examiner contends that the claims 21
merely require an element that is capable of being operated by a magnetic 22
force, and do not require a magnet or magnetic force (Ans. 5). The 23
Examiner states that it would have been obvious to make the lock member of 24
Swedick from a metal such as stainless steel like the sliding pin of Sarkissian 25
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“to provide a durable, rust resistant locking member” (Ans. 4). Thus, the 1
Examiner asserts that the claims are satisfied by the combination of Swedick 2
and Sarkissian, many stainless steels being magnetic (Ans. 5). We disagree. 3
The Examiner’s contention that the claims do not require a magnet or 4
magnetic force is well taken, the limitations regarding the magnetic force 5
being functionally recited as noted supra. However, claim 22 does require a 6
stud body that is implemented to be responsive to a magnetic force so that 7
upon application of the magnetic force, the stud body is at least partially 8
released. Claims 27 and 31 similarly require a locking mechanism that is 9
implemented to be responsive to a magnetic force so that the magnetic force 10
is required in order to unlock the locking mechanism. 11
As the Appellant notes, Swedick and Sarkissian fail to disclose or 12
suggest using any magnetic force to release or unlock a stud body (App. Br. 13
9). Swedick discloses inserting a release tool 6 into a release hole 10 so as 14
to displace the ball 4 and release the spike (Swedick: Figs. 7 and 8; Col. 2, ll. 15
61-67). Sarkissian merely discloses that the pin 34 is pressed in order to 16
change the heel height (Sarkissian: Fig. 2; Col. 3, ll. 25-26). 17
Thus, even when Swedick and Sarkissian are combined in the manner 18
suggested by the Examiner, they do not result in a stud body or a locking 19
mechanism that is implemented to have the recited function of being at least 20
partially released or unlocked via a magnetic force. While the reason 21
articulated by the Examiner for combining Swedick and Sarkissian is 22
sufficient to establish obviousness of using stainless steel for the ball 4 of 23
Swedick, the articulated reason is insufficient for establishing why it would 24
have been obvious to one of ordinary skill in the art to implement the stud 25
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body so that it is at least partially released upon application of a magnetic 1
force, or to implement a locking mechanism so that a magnetic force is 2
required in order to unlock the locking mechanism. In this regard, we agree 3
with the Appellant’s that merely exposing a pin made of a metal to a 4
magnetic force would not be determinative of whether the stud body can be 5
released by the magnetic force, or the locking mechanism be unlocked by 6
the magnetic force (App. Br. 9). 7
Therefore, in view of the above, the Appellant has shown that the 8
Examiner erred in rejecting independent claims 22, 27 and 31, as well as 9
claims 23-26, 28-30 and 32-34 depending therefrom, as unpatentable over 10
Swedick and Sarkissian. 11
12
CONCLUSIONS 13
1. The Appellant has shown that the Examiner erred in rejecting 14
claims 22-34 as indefinite. 15
2. The Appellant has shown that the Examiner erred in rejecting 16
claims 22-34 as unpatentable over Swedick and Sarkissian. 17
18
ORDERS 19
1. The Examiner’s rejection of claims 22-34 based on 35 U.S.C. 20
§ 112 is REVERSED. 21
2. The Examiner’s rejection of claims 22-34 as unpatentable over 22
Swedick and Sarkissian is REVERSED. 23
3. The Examiner’s nonstatutory double patenting rejection of 24
claims 22-34 is summarily AFFIRMED. 25
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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a)(1)(iv) (2007). 3
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AFFIRMED-IN-PART 5
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PATENT ADMINISTRATOR 14
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