Ex Parte Fauver

Board of Patent Appeals and Interferences

Feb 11, 2008

10429324 (B.P.A.I. Feb. 11, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM BENJAMIN FAUVER
____________

Appeal 2007-4068
Application 10/429,324
Technology Center 3700
____________

Decided: February 11, 2008
____________

Before JENNIFER D. BAHR, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the Final
Rejection of claims 1-5, 7-15, and 17-20. Claims 6 and 16 have been
Appeal 2007-4068
Application 10/429,324

2
allowed. We have jurisdiction under 35 U.S.C. § 6(b) (2002). We
AFFIRM1.
THE INVENTION
The Appellant’s claimed invention is directed to a sport boot that
allows for a reduced resistance to plantar2 extension coupled with a
controlled, resistive plantar flexion motion. One or more piston assemblies
are attached to the boot on both sides of a cut away portion. The pistons
provide resistance during flexion of the boot, but offer no resistance during
extension (Spec. 2-3). Claim 1, reproduced below, is representative of the
subject matter of appeal.

1. A sport boot comprising:

a boot body adapted to cover the ankle of a wearer;

an aperture through both sides of said boot body
proximate to the ankle; and

one or more pistons connected to said boot body such
that said one or more pistons that [sic], without manual
adjustment, restrict plantar flexion but do not restrict plantar
extension.

1 Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2007).

2 relating to the sole of the foot - American Heritage Dictionary of the
English Language (4th ed. 2000).
Appeal 2007-4068
Application 10/429,324

3
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

Caporicci US 3,633,291 January 11, 1972
Hornung US 3,686,778 August 29, 1972
Fritsch US 4,455,769 June 26, 1984
MacPhail US 5,459,949 October 24, 1995

The following rejections are before us for review:
1. Claims 1-5, 8-9, 10-14, and 17-20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hornung in view of Fritsch or Caporicci.
2. Claims 7 and 15 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hornung in view of Fritsch or Caporicci,
further in view of MacPhail.

THE ISSUE
The issue is whether the Appellant has shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a).
This issue first turns on the scope of independent claims 1, 8, and 17
and whether the limitations “not restricting plantar extension” and “without
impeding plantar extension” require that absolutely no plantar extension
resistance takes place.
Appeal 2007-4068
Application 10/429,324

4
This issue second turns on whether there is a proper rationale for
modifying the Hornung reference in view of Fritsch or Caporicci under 35
U.S.C. § 103(a).

FINDINGS OF FACT
We find the following enumerated findings of fact are supported at
least by a preponderance of the evidence3:

1. Webster’s New World Dictionary, Third College Edition (1988), lists
the definition of “restrict” as: to keep within certain limits; put certain
limitations on; confine. The relevant definition of “impede” is given as: to
bar or hinder the progress of; obstruct or delay.
2. Hornung shows a ski boot with a piston (11) mounted on the rear.
The piston (11) is moved by overcoming frictional resistance to an interior
plug (13). (Hornung, Figs. 1-2).
3. Fritsch discloses a ski boot with a piston (6) mounted on the rear
(Fritsch, Fig. 1) and a rubber ring (35) which will provide a spring force
(Fritsch, Fig. 3-4). When moving from the (maximum forward lean)
immediate position of Fig. 4 (plantar flexion) to the (maximum back lean)
position of Fig. 3 (plantar extension) there will initially be no resistance
other than frictional resistance.
4. Caporicci discloses a ski boot in which there are ranges which provide
no resistance in plantar extension other than frictional resistance (see
Caporicci Fig. 6).

3 See Ethicon, Inc. v. Quigg, F.2d 1422, 1427 (Fed. Cir. 1988) explaining the
general evidentiary standard for proceedings before the Patent Office.
Appeal 2007-4068
Application 10/429,324

5
5. The pistons (Application Figs. 4A and 4B) described in the
Appellant’s Specification will inherently have some degree of frictional
resistance in both directions of opening and closing the piston.

PRINCIPLES OF LAW
Principles of Law Relating to Obviousness
“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 (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
(1966). See also KSR, 127 S.Ct. at 1734 (“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 emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 127 S.Ct. at 1739 (citing Graham, 383 U.S.
Appeal 2007-4068
Application 10/429,324

6
at 12 (emphasis added)), and reaffirmed principles based on its precedent
that “[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
The Court also stated “[i]f a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 1740. The
operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 1741 (citing In re Kahn, 441 F.3d 977, 988, (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory 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
We begin by determining the scope of the claims. We determine the
scope of the claims in patent applications not solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, (Fed. Cir.
2004).
Appeal 2007-4068
Application 10/429,324

7
Claim 1 requires that the one or more pistons “restrict plantar flexion
but do not restrict plantar extension”. Giving this term its broadest
reasonable interpretation in view of the specification, which describes
embodiments in terms of amount of resistance (Specification ¶ 0009), we do
not find it requires that there is absolutely no resistance to plantar extension.
Accordingly, we construe this limitation to mean providing controlled
resistance to plantar flexion, and reduced resistance to plantar extension,
which conforms to the embodiment described at Specification ¶ 0009. We
find no definition in the Specification inconsistent with our interpretation
and we decline to read one from a specific embodiment into the claims.
Further, the doctrine of claim differentiation “is based on the common
sense notion that different words or phrases used in separate claims are
presumed to indicate that the claims have different meanings and scope.”
Karlin Tech. Inc. v. Surgical Dynamics, Inc. 177 F.3d 968, 971-972 (Fed.
Cir. 1999). “[W]here the limitation that is sought to be ‘read into’ an
independent claim already appears in a dependent claim, the doctrine of
claim differentiation is at its strongest” Leiebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 910 (Fed. Cir. 2004). In this case, claim 5 depends from
claim 1 and further limits the claimed subject matter to have the “one or
more pistons provide no resistance to tension loads”. Independent claims 8
and 17 are each further defined by similar language in dependent claims 14
and 19.4 We use this claim differentiation as further basis for determining
that the scope of claim 1 does not require that there is absolutely “no”

4 Appellant does not separately argue claims 5, 14, and 19 apart from
independent claims 1, 8, and 17 from which they depend.
Appeal 2007-4068
Application 10/429,324

8
resistance to plantar extension, but rather only that plantar extension is only
“not restricted” in some manner.
The Appellant argues that in Horning’s boot the “relative position
may be fixed until the force…exceeds a value set by said force applying
means” and that Hornung therefore restricts plantar extension (Br. 11). We
disagree. While Hornung’s boot must overcome some resistance to move
(FF 2) the rejected claims do not prohibit some resistance. Not “restricting”
or “impeding” plantar extension does not exclude some degree of resistance
given the scope of the claims (see claim scope section above). The rejected
independent claims do not require that there is absolutely “no resistance” to
plantar extension. Note that we have determined that the Appellant’s own
specification shows pistons which will have some degree of frictional
resistance in plantar extension (FF 5).
The Appellant makes similar arguments with regard to the Fritsch
reference. The Appellant argues that in Fritsch the piston (6) is a damping
element subject to both tension and compression stress and that this shows
“restriction of plantar extension” (Br. 12). As discussed above, the rejected
independent claims do not require that compression or tension stress be
totally absent in the pistons, but only reduced for plantar extension (see
claim scope section above).
The Appellants also argue that in Caporicci plantar extension is
restricted (Br. 12-13). We disagree. Again, the claims do not require that
there is absolutely no resistance to plantar extension (see claim scope section
above). Regardless, Caporicci shows a piston position (Fig. 6) that has no
resistance to plantar extension (FF 4) other than frictional forces.
Appeal 2007-4068
Application 10/429,324

9
The Appellant further argues that there is no motivation to modify the
boot of Hornung to include the piston of Fritsch or Caporicci (Br. 13-14).
We disagree. Horning’s piston assembly does not use a return spring.
Fritsch and Caporicci both disclose a ski boot with a piston which has a
return spring to allow for easier return of the ski boot to the proper position.
The combination of Horning’s ski boot with the familiar element of a return
spring from Fritsch or Caporicci does no more than yield the predictable
result and benefit of assisting the ski boot return to it’s proper position and is
considered obvious.
For the above reasons, the Appellant’s arguments do not persuade us
that the Examiner erred in rejecting claim 1. The rejection of claim 1, and
claims 2-5, which the Appellant has not argued separately from claim 1, is
sustained.
The Appellant’s arguments for independent claims 8 and 17 are the
same as those addressed above. The rejection of these claims, as well as
claims 9-14, and 18-20, which the Appellant has not separately argued apart
from claims 8 and 17, is also sustained for the reasons above.
Appellant relies solely on the arguments discussed above with respect
to claims 1 and 8 in contesting the rejections of claims 7 and 15 as
unpatentable over Hornung in view of Fritsch or Caporicci, and further in
view of MacPhail. These arguments are unpersuasive for the reasons
discussed above. Therefore, the rejection of claims 7 and 15 is also
sustained.

Appeal 2007-4068
Application 10/429,324

10
CONCLUSIONS OF LAW
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claims 1-5, 7-15, and 17-20 under 35 U.S.C. § 103(a).

DECISON
The decision of the Examiner to reject claims 1-5, 7-15, and 17-20 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)(1)(iv)(2007).

AFFIRMED

/vsh

CONLEY ROSE, P.C.
DAVID A. ROSE
P. O. BOX 3267
HOUSTON TX 77253-3267