Ex Parte Gebhard

Board of Patent Appeals and Interferences

Oct 18, 2010

09328749 (B.P.A.I. Oct. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY E. GEBHARD
____________

Appeal 2009-002216
Application 09/328,749
Technology Center 3700
____________

Before LINDA E. HORNER, WILLIAM F. PATE III, and
JENNIFER D. BAHR, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Jeffrey E. Gebhard (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-4, 7-21, and 23-26,
which are all of the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART and, pursuant to our authority under
37 C.F.R. § 41.50(b), enter a NEW GROUND OF REJECTION for claims
1-4 and 7-20.
THE INVENTION
Appellant’s claimed invention is a torsion system for a cycling shoe.
Spec. 1:5-6. Claim 1, reproduced below, is representative of the subject
matter on appeal.
1. A torsion system for a cycling shoe including a sole with
a forefoot area and a rearfoot area, the torsion system including
a longitudinal axis and comprising:
a forefoot portion of the torsion system spanning
substantially the entire forefoot area of the sole from a midtarsal
area to a toe area and from a lateral side to a medial side, the
forefoot portion having a generally smooth concave contour
along the longitudinal axis;
a rearfoot portion of the torsion system spanning
substantially the entire rearfoot area of the sole from the
midtarsal area to a heel area and from the lateral side to the
medial side; and
an intermediate portion of the torsion system coupling
the forefoot portion and the rearfoot portion, and constructed of
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a material and configured to allow, in a pre-selected manner,
rotation of the forefoot portion relative to the rearfoot portion
about the longitudinal axis, wherein the intermediate portion
includes a rib that projects beyond a bottom most surface of the
torsion system.
THE EVIDENCE
The Examiner relies upon the following evidence:
Eisenbach US 4,815,222 Mar. 28, 1989
Anderié US 4,922,631 May 8, 1990
Nagano US 5,446,977 Sep. 5, 1995
THE REJECTIONS
Appellant seeks review of the following rejections:
1. The Examiner rejected claims 1, 8-13, 15, 17, 20, 21, 24, and 26 under
35 U.S.C. § 102(b) as being anticipated by Anderié.
2. The Examiner rejected claims 23 and 25 under 35 U.S.C. § 103(a) as
being unpatentable over Anderié and Nagano.
3. The Examiner rejected claims 2-4, 11-14, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Anderié.
4. The Examiner rejected claims 2-4, 11-14, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Anderié and Eisenbach.
5. The Examiner rejected claims 16 and 19 under 35 U.S.C. § 103(a) as
being unpatentable over Anderié.
ISSUES
The issues presented by this appeal are:
Does Anderié disclose a rib that projects beyond a bottom most
surface of the torsion system, as called for in claim 1?
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Does the preambular recitation of “a cycling shoe”, as called for in
claim 21, limit the claim or merely state an intended use of the claimed
torsion system?
Is Anderié’s sports shoe capable of use as a cycling shoe?
Does Anderié disclose a rib that tunes torsionability of a cycling shoe,
as called for in claim 26?
ANALYSIS
Procedural propriety of the Examiner’s rejection of claims 2-4, 7, 8, 10-14,
16-19, 21, and 23-25
The Board issued a prior decision in the present application. Ex Parte
Gebhard, Appeal No. 2005-2544 (BPAI Oct. 31, 2005) (“Prior Decision”).
In the Prior Decision, the Board reversed the Examiner’s rejection of then-
pending claims 1-4, 8-21, and 24-26 under 35 U.S.C. § 103(a) as being
unpatentable over Anderié in view of Dubner and Kraeuter; claims 23 and
25 under 35 U.S.C. § 103(a) as being unpatentable over Anderié in view of
Dubner, Kraeuter, and Nagano; and claim 7 under 35 U.S.C. § 103(a) as
being unpatentable over Anderié in view of Dubner, Kraeuter, and
Eisenbach. Prior Decision 8-9. The Board also entered a new ground of
rejection of then-pending claims 1, 9, 15, 20, and 26 under 35 U.S.C.
§ 102(b) as being anticipated by Anderié. Prior Decision 9-11.
Subsequent to the Board’s Prior Decision, Appellant amended claims
1 and 26 in response to the Board’s new ground of rejection. Amendment
and Response Under 37 C.F.R. 41.50(b)(1), dated December 23, 2005. The
Examiner then issued an office action maintaining the Board’s rejection of
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claims 1, 9, 15, 20, and 26 and additionally rejecting claims 2-4, 6-8, 10-14,
16-19, 21, and 23-25 based, in part, on the findings of fact made by the
Board in the Prior Decision as to the scope and content of Anderié.1
Appellant argues that the Examiner’s rejection of claims 2-4, 7, 8, 10-
14, 16-19, 21, and 23-25 is procedurally improper because the Examiner
“was not entitled to make other grounds of rejection on references already
considered on appeal.” Br. 9 (citing Manual of Patent Examining Procedure
(MPEP) § 1214.04). Appellant interprets the MPEP to require that:
in the face of the Board’s complete reversal of the Examiner
and issuance of a new ground of rejection, the Examiner may
raise additional grounds of rejection only “if the examiner has
specific knowledge of a particular reference or references
which indicate nonpatentability of any of the appealed claims as
to which the examiner was reversed.”
Br. 9-10 (quoting, in part, MPEP § 1214.04).
On appeal, the Board reviews adverse decisions of examiners.
35 U.S.C. § 6(b). In the Prior Decision, the Board reversed the Examiner’s
rejections based on the combined teachings of Anderié, Dubner, and
Kraeuter because the Board found no reasonable basis in the collective
teachings of the applied prior art for modifying the shoe of Anderié in the
manner suggested by the Examiner with the teachings of Dubner and
Kraeuter. Prior Decision 7-9. However, the Board also made new findings
of fact as to how Anderié alone anticipated several of the claims on appeal.
Prior Decision 9-11.

1 Claim 6 was subsequently canceled by Examiner’s Amendment.
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The Board’s authority to enter a new ground of rejection under
37 C.F.R. § 41.50(b) is discretionary. The MPEP states that “[s]ince the
exercise of authority under 37 C.F.R. § 41.50(b) is discretionary, no
inference should be drawn from a failure to exercise that discretion.” See
MPEP, 8th ed., rev. July 2010, § 1213.02. The Examiner’s rejection of
additional pending claims, which relied on the Board’s new findings of fact
as to the scope and content of Anderié, were not improper under the MPEP.
See In re Borkowski, 505 F.2d 713, 718 (CCPA 1974) (finding unpersuasive
appellants’ contention that a prior board decision reversing a rejection under
35 U.S.C. § 103 over a prior art reference to Borkowski in a parent
application should have been “res judicata” to the examiner in the child
case).
Rejection of claims 1, 8-13, 15, 17, 20, 21, 24, and 26 under 35 U.S.C.
§ 102(b) as being anticipated by Anderié
Claims 1, 8-13, 15, 17, and 20
Appellant argues the Examiner erred in rejecting claim 1 because
Anderié does not teach or describe “a rib that projects beyond a bottom most
surface of the torsion system” as called for in independent claim 1. Br. 7.
We find this limitation of claim 1 nonsensical. Claim 1 calls for a
torsion system comprising a forefoot portion, a rearfoot portion, and an
intermediate portion. The intermediate portion of the torsion system
“includes a rib.” Because the rib is part of the claimed torsion system rather
than an element separate from the torsion system (see Ans. 4), we fail to see
how it is possible that the rib projects beyond a bottom most surface of the
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torsion system. For example, if the rib projects downwardly from the
intermediate portion, then the bottom most surface of the rib is also the
bottom most surface of the torsion system. Since the rib cannot project
beyond its own bottom most surface, we find that those skilled in the art
would not understand what is claimed when the claim is read in light of the
specification. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986). As such, we enter a NEW GROUND OF
REJECTION of claim 1 and its dependent claims 2-4 and 7-20 under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which Appellant
regards as the invention.
A prior art rejection of a claim, which is so indefinite that
“considerable speculation as to meaning of the terms employed and
assumptions as to the scope of such claims” is needed, is likely imprudent.
In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the examiner and
the board were wrong in relying on what were at best speculative
assumptions as to the meaning of the claims and basing a rejection under 35
U.S.C. § 103 thereon.) As such, we reverse the rejection of claims 1, 8-13,
15, 17, and 20 under 35 U.S.C. § 102(b) as being anticipated by Anderié.
Our reversal of this rejection is not based on a review of the merits of the
rejection. Rather, this is a reversal of the rejection based on the
indefiniteness of the claim language in the rejected claims.
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Claims 21 and 24
Appellant argues claims 21 and 24 as a group. Br. 10-11. We select
claim 21 as representative, and claim 24 stands or falls with claim 21. See
37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues that the Examiner improperly issued a new rejection
of claim 21 as anticipated by Anderié, because the Prior Decision recognized
the “special characteristics” of a cycling shoe and rejected the Examiner’s
position that any shoe used to pedal a bicycle can be a “cycling shoe” (see
Prior Decision 8). Br. 10.
The question presented by Appellant’s argument is whether the
preambular recitation of “a cycling shoe” limits claim 21.
“In general, a preamble limits the invention if it recites essential
structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to
the claim. Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,
808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co.,
182 F.3d 1298, 1305 (Fed. Cir. 1999)). “Conversely, a preamble is not
limiting ‘where a patentee defines a structurally complete invention in the
claim body and uses the preamble only to state a purpose or intended use for
the invention.’” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir.
1997)).
The body of claim 21 recites a structurally complete invention such
that deletion of the phrase “cycling shoe” would not affect the structure of
the claimed invention. The body of claim 21 defines a torsion system
comprising a sole plate. While the body of claim 21 refers back to the
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forefoot and rearfoot areas of the sole as introduced in the preamble to
describe the location of corresponding portions of the sole plate, the body of
claim 21 does not depend on the “cycling shoe” phrase for antecedent basis.
As such, we conclude that the preambular phrase “cycling shoe” describes
the use of the invention, but does not otherwise limit claim 21.
“It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).
Appellant’s Specification describes a conventional cycling shoe as follows:
Conventional shoes manufactured for cycling typically
include an upper, a rigid plate, and an optional rubber outsole.
The rigid plate of the cycling shoe is typically made of nylon or
composite materials. The rigid plate is provided to enhance
pressure distribution between foot and pedal. Conventional
cycling shoes are designed to be torsionally rigid for maximum
pressure distribution over the pedal. Most cycling plates are
rigid to the point of being substantially inflexible. Others
incorporate a flexible toe region to facilitate better walking.
Spec. 1, ll. 10-15. In light of this description, any shoe including a rigid
plate or portion that would enhance pressure distribution between foot and
pedal is capable of being used for cycling, and thus would satisfy the
preambular limitation of a “cycling shoe.”
Anderié discloses a sports shoe having an upper (not shown), a rigid
plate (intermediate sole member 101 with stiffening element 109), and an
outsole 102, where the stiffening element 109 stiffens the bottom of the shoe
formed by intermediate sole 101 and outsole 102 so that the foot of the
person wearing the shoe is firmly supported and guided in the rolling motion
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of the foot and the stiffening element resists bending about bending axes B1
and B2. Anderié, fig. 10, col. 6, ll. 50-59. We see no reason why Anderié’s
sports shoe, including stiffening element 109, would not be capable of
providing enhanced pressure distribution between the foot and the pedal
such that it is capable of being used as a cycling shoe.
We acknowledge that the Prior Decision of this Board disagreed with
the examiner’s position that “any shoe can be used to pedal a bicycle” in
light of the “recognized special characteristics of a ‘cycling shoe’”. Prior
Decision 8. However, the prior panel’s rejection of the Examiner’s bald
assertion that “any shoe can be used to pedal a bicycle” is not in conflict
with our finding, above, that the particular shoe of Anderié is capable of
such use. As such, we will sustain the Examiner’s rejection of claim 21
under 35 U.S.C. § 102(b) as being anticipated by Anderié. Claim 24 falls
with claim 21.
Claim 26
Appellant argues that the Examiner’s rejection fails to set forth
adequate findings as to how Anderié discloses a “rib [that] tunes
torsionability of [a] cycling shoe” as called for in claim 26. Br. 8-9.
Appellant’s Specification describes that “[t]he rotation of the shoe, also
known as torsional flex or torsionability, may be tuned by using I-beams or
ribs with different torsional resistance.” Spec. 3:12-13; see also Spec. 6,
ll. 1-4 (describing that the rib “stiffens the shoe 1 against vertical flex
without prohibiting rotation of the forefoot relative to the rearfoot” and that
“[t]he torsional strength of the I-beam element or rib 20 along its
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longitudinal axis may be used to tune the torsionability of the shoe 1 about
the longitudinal axis 15.”). The Examiner found that Anderié discloses a
“rib [that] tunes the torsionability of the article of footwear.” Ans. 5 (citing
to Anderié, col. 5, ll. 62-66).
The cited portion of Anderié describes how the stiffening element 109
is produced by injection molding and can be stiffened in the limb portions
114 and 115 by glass or carbon fibers. Anderié, col. 5, ll. 62-66. The
Examiner has failed to explain how this disclosure in Anderié anticipates a
rib that tunes torsionability of a cycling shoe. There is no explicit disclosure
in Anderié that these limb portions 114 and 115 are stiffened such that they
are capable of tuning torsionability in a cycling shoe. Further, while
Anderié discloses stiffened limb portions 114 and 115, it is not necessarily
the case that the ribs are stiffened to a degree so as to inherently be capable
of tuning torsionability in a cycling shoe. As such, the Examiner has failed
to set forth an adequate prima facie case of anticipation of claim 26.
Rejection of claims 23 and 25 under 35 U.S.C. § 103(a) as being
unpatentable in view of Anderié and Nagano
Claims 23 and 25 depend from claim 21. The Examiner relies on
Anderié for the teachings as applied to claim 21, and relies on Nagano to
teach that it is desirable to have a cycling shoe with a cleat attachment and
an upper. Ans. 5-6. Appellant argues that the Examiner erred by combining
the teachings of Nagano and Anderié because the Board determined that
there was nothing in Nagano to cure the deficiencies of the combined
teachings of Anderié, Dubner, and Kraeuter. Br. 11. We fail to see how the
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Prior Decision’s holding that there was no reasonable basis in the combined
teachings of Anderié, Dubner, and Kraeuter for modifying Anderié’s
stiffening member 109 to span substantially the entire forefoot and rearfoot
areas of the shoe sole and to have a generally smooth concave contour along
the longitudinal axis, dictates a reversal of the Examiner’s new rejection
based on Anderié and Nagano. In particular, the rejection before us does not
propose the same modifications to the stiffening member 109 of Anderié as
were reviewed and rejected by the Prior Decision. As such, we will sustain
the rejection of claims 23 and 25 under § 103.
Rejection of claims 2-4, 7, 11-14, 16, 18, and 19 under 35 U.S.C. § 103(a)
as being unpatentable in view of either Anderié or Anderié and Eisenbach
Claims 2-4, 7, 11-14, 16, 18, and 19 depend either directly or
indirectly from claim 1. As such, these claims suffer the same indefiniteness
as claim 1 by virtue of their dependence therefrom. Hence, we reverse the
rejections of claims 2-4, 7, 11-14, 16, 18, and 19 under 35 U.S.C. § 103 as a
procedural matter based on the indefiniteness of these claims and not based
on a review of the merits of the rejection. As stated supra, we enter a new
ground of rejection against these claims under 35 U.S.C. § 112, second
paragraph, for the same reasons discussed supra with respect to claim 1.
CONCLUSIONS
We cannot determine whether Anderié discloses a rib that projects
beyond a bottom most surface of the torsion system, as called for in claim 1,
without resort to speculative assumptions as to the meaning of the claim.
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The preambular recitation of “a cycling shoe”, as called for in claim
21, merely states an intended use of the claimed torsion system.
Anderié’s sports shoe is capable of use as a cycling shoe.
Anderié does not disclose a rib that tunes torsionability of a cycling
shoe, as called for in claim 26.
DECISION
The decision of the Examiner to reject claims 21 and 23-25 is
affirmed. The decision of the Examiner to reject claim 26 is reversed.
The decision of the Examiner to reject claims 1-4 and 7-20 is reversed
as a procedural matter, and we enter a NEW GROUND OF REJECTION of
claims 1-4 and 7-20 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter Appellant considers to be the invention.
FINALITY OF DECISION
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
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37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.

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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).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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