Ex Parte Henkel

Patent Trial and Appeal Board

Jun 15, 2016

13880555 (P.T.A.B. Jun. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/880,555 04/19/2013
24222 7590 06/17/2016
Maine Cernota & Rardin
547 Amherst Street
3rd Floor
Nashua, NH 03063
FIRST NAMED INVENTOR
Heidi Henkel
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
HENKOOl-US 2457
EXAMINER
MOHANDESI, JILA M
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
06/17/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@mcr-ip.com
dcolby@mcr-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEIDI HENKEL
Appeal2016-004635
Application 13/880,555
Technology Center 3700
Before: CHARLES N. GREENHUT, ERIC C. JESCHKE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's Non-
Final rejection of claims 1, 2, 6-12, 17, 18, 20, 22, 23, 27, 33-36, 41, 43, 44,
and 50-54. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND of REJECTION.
Appeal2016-004635
Application 13/880,555
CLAIMED SUBJECT MATTER
The claims are directed to a cross-country ski boot and sole therefor.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
Claim 1:
A cross country ski boot comprising:
a cross country ski boot having a sole, the cross country
ski boot being configured for attachment at its toe to a cross
country ski by a cross country ski binding, the cross country ski
boot being sufficiently flexible to accommodate cross country
skiing leg and foot movements by allowing a user to raise a heel
of the cross country ski boot off of the cross country ski when
the toe is attached to the cross country ski binding;
a customizable ball attachment mechanism incorporated
into the cross country ski boot, the customizable ball attachment
mechanism including at least one of a first band extending over
the ball region of the boot from left and right attachments to the
sole, an inflatable pocket, a moldable interior material, and a stiff
region in the area of the boot that is in front of the ball of the foot,
said ball attachment mechanism being capable of maintaining
firm and customizable contact between the ball of a user's foot
and a ball region of the sole; and
a customizable heel attachment mechanism incorporated
into the cross country ski boot, the customizable heel attachment
mechanism including at least one of a second band extending
over an arch region of the boot from left and right attachments to
the sole, an inflatable pocket, a moldable interior material, and a
stiff region in at least one of a cuff, at least one side of the heel
area, and the bottom of the heel, said heel attachment mechanism
being capable of maintaining firm and customizable contact of a
user's heel with a heel region of the sole.
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Application 13/880,555
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Holstine
Hauglin
Parisotto '252
Parisotto '425
us 5,692,321
US 6,202,326 B 1
US 6,247,252 Bl
US 6, 708,425 B2
REJECTIONS
Dec. 2, 1997
Mar. 20, 2001
June, 19,2001
Mar. 23, 2004
Claims 1, 2, 6-12, 17, 18, 20, 22, 23, 33-36, 41, and 50-53 are
rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Non-
Final Act. 3. 1
Claims 1, 2, 7, 10-12, 17, 18, 20, 33-35, 41, 50, 52, and 53 are
rejected under 35 U.S.C. § 102(b) as being anticipated by Parisotto '425.
Non-Final Act. 9.
Claims 50 and 51 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Hauglin. Non-Final Act. 11.
Claims 27, 43, 44, 50, and 54 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Parisotto '252. Non-Final Act. 12.
Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Parisotto and Holstine. Non-Final Act. 13.
1 The Examiner indicated that the amendment proposed on August 12, 2015
would be entered for purposes of appeal. That amendment adopted the
Examiner's suggestions to overcome the issue under 35 U.S.C. § 112,
second paragraph, which appears to be the only basis set forth for the
rejection of claim 43 and its dependents. Although the Examiner reproduces
the rejection statement from the appealed Office Action, there no longer
appears to be any basis for rejecting claims 27, 43, 44, and 54 under 35
U.S.C. § 112, second paragraph. App. Br. 21.
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Application 13/880,555
Claims 22 and 51 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over either one of Parisotto '425 and/or Parisotto '252 in view
of Hauglin. Non-Final Act. 14.
Claims 2 and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Parisotto' 425 and Parisotto '252. Ans. 15.
OPINION
35 u.s.c. § 112
Appellant correctly explains the shortcomings in each basis for the
Examiner's conclusion of indefiniteness. App. Br. 10-19. We adopt
Appellant's analysis in this regard as our own. Notably, concerning the
terms "Nordic" and "cross country," only Appellant introduces evidence to
demonstrate the meaning of these terms. App. Br. 11-14; see also Griffin
Deel. If the term "Nordic" were a trade name, or there was uncertainty
concerning the meaning of the phrase "cross country ski boot," the Examiner
should be able to produce facts to support these conclusions. As this has not
been done, on the record before us, we are not apprised of indefiniteness for
the stated reasons related to this language. Non-Final Act. 3--4; see also
Ans. 4-7.
We are also not apprised of any lack of clarity associated with using
functional language describing unclaimed subject matter, such as the ski and
binding, to define the claimed subject matter, the "cross country ski boot."
See Non-Final Act. 4. Throughout the claim, Appellant's usage is consistent
in that it is the boot and not the combination of boot and ski and/or binding
that is claimed. App. Br. 14-15.
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Application 13/880,555
We are also not apprised of any lack of clarity associated with using
the term "cross country ski boot" in both the preamble and the body of the
claim. See Non-Final Act. 5. Not all cross country ski boots are the same.
The boot of the preamble must include all the recited elements whereas the
one in the body of the claim is not so limited. App. Br. 18.
The Examiner does not provide any evidence or reasoning to support
the assertion that "a moldable interior material" recited in claim 1 and "a
custom moldable material" recited in claim 7 are "vague and indefinite. It is
not clear what structure is encompassed by such language." Non-Final Act.
5. These limitations refer to a structure inside the boot that can be molded to
provide a customized ball or heel attachment mechanism. The Examiner
does not apprise us of any reason why this language, in either claim 1 or
claim 7 (Non-Final Act. 5; see also Ans. 9-10), renders the scope of either
claim unclear.
Regarding claim 6, the Examiner does not provide sufficient
explanation to support the conclusion of indefiniteness. See Non-Final Act.
5; see also Ans. 9. It appears that the Examiner is requiring either identical
language to be used to refer to antecedent claim elements or express
recitation of inherent characteristics. Although it must be clear what is being
referred to by claim language that refers back to something previously
recited, the requirement of clarity does not impose a requirement to use
identical language or expressly recited inherent characteristics of claim
elements. See MPEP § 2173.05(e). The Examiner does not identify any
reason why one skilled in the art would fail to understand the "locations of
attachment" in claim 6 to refer to the locations of the "left and right
attachments" in claim 1.
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Regarding claims 20 and 41, the Examiner does not provide sutlicient
explanation to support the conclusion of indefiniteness. Non-Final Act. 5. It
is true that the limitations identified by the Examiner are functional and that
"'[fJunctional' terminology may render a claim quite broad. By its own
literal terms a claim employing such language covers any and all
embodiments which perform the recited function." In re Swinehart, 439
F.2d 210, 213 (CCPA 1971). This, without more, however, does not
demonstrate a claim is indefinite. Id.
Despite our disagreement with the Examiner's stated reasons for
holding the claims discussed above indefinite, we nevertheless conclude that
claim 1 fails to comply with both the first and second paragraphs of 35
U.S.C. § 112. The customizable ball or heel attachment mechanism are
defined using Markush format: "attachment mechanism including at least
one of." See MPEP § 2173.05(h). In light of the Specification, we are not
apprised of any way the final element of the Markush groupings-" a stiff
region"---contributes to the "customizab[ility ]" associated with each group
in its entirety. This inconsistency with the Specification renders the claim
indefinite because we are unable to determine how the recited relationship is
met by the claim, and therefore by any prior art or potentially infringing
device. See In re Cohn, 438 F.2d 989, 993 (CCPA 1971) (sustaining
rejection of claims under 35 U.S.C. § 112, second paragraph, as being
indefinite, where the claims were inherently inconsistent with the
description, definitions, and examples appearing in applicant's
specification). The ability to customize the ball or heel attachments by using
a stiff region also lacks descriptive support in the Specification. The
paragraphs Appellant relies upon for support (App. Br. 5 (citing paras. 35
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and 114)) do not attribute customizability to the recited stiff regions. Thus,
Appellant has not demonstrated possession of subject matter having the
recited characteristics. For these reasons, pursuant to our authority under 37
C.F .R. § 41.50(b ), we enter new rejections against claim 1 and those claims
depending therefrom as failing to comply with 35 U.S.C. § 112, first and
second paragraphs.
Prior-art rejections
In rejecting claim 1under35 U.S.C. § 102(b) based on Parisotto '425,
the Examiner states that "there are no specific features defined in the claims
that could allow a skilled person to differentiate the 'cross country ski boot'
according to the claims from any other ski boot such as telemark boot or ski
mountaineering skiing boot of the prior art." Non-Final Act. 9. The
Examiner then proceeded to examine the claim as if the term "cross country"
did not appear in the claim. This constitutes reversible error. "All words in a
claim must be considered in judging the patentability of that claim against
the prior art." In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); see also
MPEP §§ 2143.03, 2173.06. Appellant's identification of certain exemplary
structures that would cause a particular boot to fall within the scope of what
one skilled in the art would reasonably consider to be a "cross country ski
boot" (App. Br. 22-23) is not correctly characterized by the Examiner as an
attempt to incorporate unrecited limitations into the claim. See Ans. 10. As
the Examiner has not set forth sufficient reasons why one skilled in the art
would consider the boot of Parisotto '425 as a "cross country ski boot" or
why it would have been obvious to modify that boot to be a cross country ski
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boot, the Examiner's rejections based entirely, or in part, on Parisotto '425
cannot be sustained.
As a premise to rejecting claim 43 based on Parisotto '252, the
Examiner stated:
[the] claim limitation "an adjustable means for limiting an
eversion and inversion angel [sic angle]" has not been
interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
sixth paragraph, because it recites sufficient structure "by
limiting the variation of the distance between the cuff and the
rigid outer shell during eversion and inversion to a defined
range["] to achieve the function (allowing full plantar flexion
of the ski boot).
Non-Final Act. 7. However, the quoted portion, and indeed the entire
portion, of the claim 43 limitation describing the "adjustable means"
describes function rather than structure. The recitation of structure rather
than function is what might overcome the presumption that 35 U.S.C. § 112,
sixth paragraph is invoked when the term "means" is employed. In claim
43, the "adjustable means" is defined only by what it does as opposed to
what it is. We therefore cannot agree with the Examiner that this limitation
should not be read in accordance with 35 U.S.C. § 112, sixth paragraph.
Accordingly, the Examiner's rejection cannot be sustained because the
Examiner has not found the same structure disclosed in Appellant's
Specification, or a §-112-paragraph-six equivalent. Non-Final Act. 12-13
(relying on the clearly distinguishable control device 14 as satisfying this
limitation); see also App. Br. 30-31; In re Donaldson Co., 16 F.3d 1189,
1195 (Fed. Cir. 1994) (en bane).
Neither of the Examiner's prior-art rejections of claim 50 identifies
any concrete evidence to demonstrate in the prior art a "sole being twistable
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Application 13/880,555
and vertically flexible, while preventing side-to-side lateral bending
thereof." See Non-Final Act. 11-13; see also App. Br. 29-32. While the
recited limitations may amount to latent characteristics, it is the Examiner's
burden to establish with evidence or technical reasoning a sound basis for
believing the prior art necessarily contains those characteristics. In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The Examiner does not apprise
us of any evidence supporting the determination that flexible portion 11 on
the boot shell of Parisotto '252 provides twistability and vertical flexibility
of the sole, or that elements 17 and 18 of Parisotto '252 prevent side-to-side
lateral bending of the sole. See Non-Final Act. 13. The sole depicted in
Figure 7 of Hauglin may demonstrate vertical flexibility but the Examiner
does not provide any evidence or reasoning to show Hauglin's sole
possesses the remaining characteristics recited. Determinations of
unpatentability cannot be premised on speculation or conjecture. A
preponderance of the evidence must show nonpatentability before the PTO
may reject the claims of a patent application. In re Caveney, 761 F.2d 671,
674 (Fed.Cir.1985). Accordingly, the rejections of claim 50, and dependent
claim 51, cannot be sustained.
DECISION
The Examiner's rejections are reversed.
We enter new grounds of rejection against claims 1, 2, 6-12, 17, 18,
20, 22, 23, 33-36, 41, 52, and 53 under 35 U.S.C. § 112, paragraphs one
and two.
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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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 ....
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)(l )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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