Ex Parte Girard

Board of Patent Appeals and Interferences

Sep 21, 2004

09908938 (B.P.A.I. Sep. 21, 2004)

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for publication and is not binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FRANCOIS GIRARD
____________
Appeal No. 2004-1202
Application No. 09/908,938
____________
HEARD: AUGUST 19, 2004
____________
Before COHEN, STAAB, and McQUADE, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is taken from the final rejection of claims 1
through 12, 14 through 24, 26 through 30, and 32 through 40. In
the answer (pages 4 and 5), the examiner withdrew the rejection
of claims 2, 18, and 34; however, these otherwise allowable
claims now stand objected to by the examiner as being based upon
their dependency from rejected base claims. Claims 13, 25 and
31, the only other claims in the application, stand allowed. It
follows that rejected claims 1, 3 through 12, 14 through 17, 19
Appeal No. 2004-1202
Application No. 09/908,938
1 Our understanding of this French document is derived from
a reading of an English translation thereof provided by appellant
(appended to the main brief).
2
through 24, 26 through 30, 32, 33, and 35 through 40 are before
us for review.
Appellant’s invention pertains to a tightening device,
adapted to equip an article of footwear including a sole, and to
an article of footwear. A basic understanding of the invention
can be derived from a reading of exemplary claims 1, 17, 29, and
30, respective copies of which appear in the APPENDIX to the main
brief (Paper No. 17).
As evidence of anticipation, the examiner has applied the
documents listed below:
Frykberg 5,483,757 Jan. 16, 1996
King et al 2,626,447 Aug. 4, 1989
(King) (France)1
Appeal No. 2004-1202
Application No. 09/908,938
3
The following two anticipation rejections are before us for
review.
1. Claims 1, 3, 5 through 12, 14 through 17, 19, 21 through 24,
26 through 30, 32, 33, 35, and 37 through 40 stand rejected under
35 U.S.C. § 102(b) as being anticipated by King.
2. Claims 1, 4 through 6, 9 through 11, 14 through 17, 20, 21,
27 through 30, 36, 37, and 40 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Frykberg.
The full text of the examiner’s rejections and response to
the argument presented by appellant appears in the answer (Paper
No. 18), while the complete statement of appellant’s argument can
be found in the main and reply briefs (Paper Nos. 17 and 21).
Appeal No. 2004-1202
Application No. 09/908,938
2 Anticipation under 35 U.S.C. § 102(b) is established only
when a single prior art reference discloses, either expressly or
under principles of inherency, each and every element of a
claimed invention. See In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431 (Fed. Cir. 1997); In re Paulsen, 30 F.3d 1475,
1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994); In re Spada, 911
F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990); and RCA
Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984). However, the law of
anticipation does not require that the reference teach
specifically what an appellant has disclosed and is claiming but
only that the claims on appeal "read on" something disclosed in
the reference, i.e., all limitations of the claim are found in
the reference. See Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S.
1026 (1984).
3 As acknowledged by appellant in the specification (page
2), prior to the present invention, a known mountain hiking boot
(DE 42 29 036) evidenced the feature of overlapping quarters
having “substantially identical flexibility.” As to the latter
configuration, however, it is not clear to us as to whether the
upper quarter (overlapping) is more flexible than the lower
quarter in the noted foreign language disclosure, considering the
content of appellant’s independent claims in the present
application.
4
OPINION
In reaching our conclusion on the anticipation issues2
raised in this appeal, this panel of the board has carefully
considered appellant’s specification3 and claims, the applied
teachings, and the respective viewpoints of appellant and the
Appeal No. 2004-1202
Application No. 09/908,938
4 In our view, and contrary to the position taken by the
(continued...)
5
examiner. As a consequence of our review, we make the
determinations which follow.
The first rejection
We cannot sustain the rejection of claims 1, 3, 5 through
12, 14 through 17, 19, 21 through 24, 26 through 30, 32, 33, 35,
and 37 through 40 under 35 U.S.C. § 102(b) as being anticipated
by King.
Each of appellant’s independent claims 1, 17, 29, and 30
requires, inter alia, the feature of an upper (overlapping) flap
being more flexible than a lower flap.
In support of the view that the independent claims are
anticipated by, i.e., read on, the teaching of King, the examiner
offers three alternative perspectives (answer, page 3) of the
boot configuration of King (reflected in the color-coded drawing
appended to the answer) that are indicated to respond to the
upper flap recitation of independent claims 1, 17, 29, and 30.4
Appeal No. 2004-1202
Application No. 09/908,938
4(...continued)
examiner, one skilled in this art would not understand a layer of
material by itself in the King teaching, e.g., either layer 18 or
and 19, to connote an upper flap, as claimed. Instead, as we see
it, the upper flap of King would be understood to be the
composite of inner and outer layers 18, 19, strap 12, and element
23 (Fig. 4).
6
The difficulty we have with the examiner’s rejection is that the
selected King reference is silent as to any difference in
flexibility between an upper and lower flap. Further, and of
particular importance, we readily discern that one versed in the
art would appreciate that it would be sheer speculation as to
whether the upper flap (the earlier indicated composite of the
inner and outer layers 18, 19, the strap 12, and the element 23)
of King is more flexible than the lower flap (portrayed on the
left side of the lower portion of Fig.4). Since the examiner has
not proffered a sound reference that independent claims 1, 17,
29, and 30 read on, we are constrained to reverse this
anticipation rejection.
The second rejection
Appeal No. 2004-1202
Application No. 09/908,938
7
We cannot sustain the rejection of claims 1, 4 through 6, 9
through 11, 14 through 17, 20, 21, 27 through 30, 36, 37, and 40
under 35 U.S.C. § 102(b) as being anticipated by Frykberg.
Akin to the circumstance with the first rejection, supra,
the examiner considers independent claims 1, 17, 29, and 30 to be
readable on the healing sandal disclosed by Frykberg (Figs. 1 and
2). However, as was the case above, the examiner has chosen as
evidence of anticipation a patent which does not mention any
difference in flexibility between an upper flap and a lower flap.
In fact, as pointed out by appellant (reply brief, page 8), and
contrary to the examiner’s finding (answer, page 7), the Frykberg
reference does not even indicate the material of the strap 14
(upper flap). Thus, it is without question but that it would be
pure speculation as to whether the strap 14 of Frykberg is more
flexible than the side panel 40 (lower flap). Since, as
indicated, the examiner has not applied a sound reference that
appellant’s independent claims read on, we are constrained to
reverse this anticipation rejection.
In summary, this panel of the board has not sustained the
two rejections on appeal.
Appeal No. 2004-1202
Application No. 09/908,938
8
The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
ICC:pgc
Appeal No. 2004-1202
Application No. 09/908,938
9
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191