Ex Parte Kelly

Board of Patent Appeals and Interferences

May 19, 2004

09909168 (B.P.A.I. May. 19, 2004)

1
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not written for publication and is not binding precedent of the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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PAUL ANDREW KELLY
__________
Appeal No. 2004-1264
Application 09/909,168
___________
ON BRIEF
___________
Before ABRAMS, FRANKFORT, and BAHR, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 18 through 34, all of the claims remaining in
this application. Claims 1 through 17 have been canceled.
Appellant's invention relates to a shoe cleat of the type
generally used, for example, in the soles of golf shoes.
Appeal No. 2004-1264
Application 09/909,168
1 The examiner’s final rejection of claims 18 through 27 and
31 through 33 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over
claims 1-21 of appellant’s prior U.S. Patent No. 6,272,774 has
now been withdrawn by the examiner (supp. answer, page 3).
2
Independent claims 18 through 21, 28, and 31 through 34 are
representative of the subject matter on appeal and a copy of
those claims can be found in the Appendix to appellant's brief
(pages 8-12).
The references of record relied upon by the examiner in
rejecting the appealed claims are:
Ferreira 5,123,184 Jun. 23, 1992
Kelly 6,272,774 Aug. 14, 2001
Claims 18 through 34 stand rejected under 35 U.S.C. §102(b)
as being anticipated by Ferreira.
Claims 28 through 30 and 34 additionally stand rejected
under the judicially created doctrine of obviousness-type double
patenting as being unpatentable over claim 1 of appellant’s prior
U.S. Patent No. 6,272,774.1

Appeal No. 2004-1264
Application 09/909,168
3
The examiner's statement of the above-noted rejections and
response to appellant's arguments appears on pages 3 through 11
of the supplemental examiner's answer (Paper No. 19, mailed
December 19, 2003). Appellant's views concerning the examiner's
rejections before us on appeal are found in the brief (Paper No.
13, filed October 31, 2002) and reply brief (Paper No. 15, filed
January 16, 2003).
0PINION
In arriving at our decision in this appeal, we have given
careful consideration to appellant's specification and claims,
the applied references, and the respective viewpoints of
appellant and the examiner. As a consequence of our review, we
have made the determinations which follow.
Turning first to the examiner's rejection of claims 28
through 30 and 34 under the judicially created doctrine of
obviousness-type double patenting, we understand the examiner's
position to be that 1) application claims 28 through 30 and 34
directed to a “shoe cleat” are merely broader than claim 1 of
Appeal No. 2004-1264
Application 09/909,168
4
appellant's prior U.S. Patent No. 6,272,774 which is directed to
a “shoe cleat and holder combination,” and 2) “it would have been
obvious to leave out the other elements” (supp. answer, page 6).
Thus, the examiner points to the shoe cleat of the application
claims and the requirement therein of “at least a first locking
member” and finds correspondence with the shoe cleat of
combination patent claim 1 and its recitation of “a locking
means.” The examiner further contends that “[t]he remaining
language is all functional and the shoe cleat [of patent claim 1]
is inherently capable of performing the function as claimed
inasmuch as it has all of the structural limitations” (supp.
answer, pages 6-7).
Appellant’s response to the examiner’s double patenting
rejection is to point out that the application claims at issue
are directed to a shoe cleat alone, while claim 1 of the ‘774
patent is directed to a shoe cleat and holder combination, and to
further assert that “[a]pplicant is unable to find any precedent
supporting an obviousness-type double patenting rejection where
the patent claims are directed to a combination and the
application claims are directed to a sub-combination” (brief,
Appeal No. 2004-1264
Application 09/909,168
5
page 7). Thus, appellant urges that the combination claims do
not render the sub-combination claims obvious, and contends that
the examiner has submitted no authority to the contrary.
What is immediately apparent from the foregoing is that
appellant has made no attempt to provide a specific merits-based
argument establishing error in the examiner’s rejection of claims
28 through 30 and 34 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over
claim 1 of appellant’s prior U.S. Patent No. 6,272,774.
Instead, appellant merely indicates that he is unaware of any
precedent supporting an obviousness-type double patenting
rejection where the patent claims are directed to a combination
and the application claims are directed to a sub-combination. It
further appears from comments on page 8 of the brief that if such
an obviousness-type double patenting rejection is a viable
rejection in a combination/sub-combination context, then
appellant intends to file an appropriate terminal disclaimer to
overcome the rejection.
Appeal No. 2004-1264
Application 09/909,168
6
As noted in In re Berg, 140 F.3d 1428, 1432, 46 USPQ2d 1226,
1229 (Fed. Cir. 1998), obviousness-type double patenting is a
judge-made doctrine that prevents an extension of the patent
rights beyond the statutory limit and requires rejection of an
application claim when the claimed subject matter is not
patentably distinct from the subject matter claimed in a commonly
owned patent. Its purpose is to prevent an unjustified extension
of the term of the right to exclude granted by a patent by
allowing a second patent claiming an obvious variant of the same
invention to issue to the same owner later. In the present case,
it is the examiner’s view that the shoe cleat defined in
application claims 28 through 30 and 34 is obvious in view of the
shoe cleat which is an element of combination claim 1 of
appellant’s ‘774 patent.
In the context of a combination/sub-combination as framed by
appellant, we note that as early as 1951 the Court of Customs and
Patent Appeals (CCPA) recognized the possibility of obviousness-
type double patenting being an issue where the patent claims are
directed to a combination and the later filed application
Appeal No. 2004-1264
Application 09/909,168
7
claim(s) are directed to a sub-combination. See, In re Coleman,
189 F.2d 976, 979, 90 USPQ 100, 102 (CCPA, 1951), wherein the
Court notes that
It is settled law that a party might be entitled to a
patent for a combination because of the cooperation of the
elements contained therein, and at the same time be entitled
to a separate patent for one of the elements of the
combination. In re Carlton, 22 C.C.P.A. (Patent) 1223, 77
F.2d 363, 25 USPQ 390; In re Ferenci, 23 C.C.P.A. (Patents)
1023, 83 F.2d 279, 29 USPQ 162. In such a case, the
question to be determined is whether two or more different
inventive concepts are involved. In re Hadsel, 36 C.C.P.A.
(Patents) 1075, 173 F.2d 1010, 81 USPQ 376. If the claims
are so related that the separately claimed element
constitutes the essential distinguishing feature of the
combination as claimed, different concepts are not involved,
the inventions are not distinct, and double patenting will
be found.
In re Coleman, was further cited with approval in another
combination/subcombination double patenting case, i.e., In re
Heinle, 342 F.2d 1001, 1005, 145 USPQ 131, 134 (CCPA 1965).
Although the Court in Heinle determined that double patenting did
not exist in that case because the tubular core “subcombination”
was determined not to be the “essential distinguishing feature”
of the combination claim of the Heinle patent.
Appeal No. 2004-1264
Application 09/909,168
8
In the absence of any substantive argument from appellant
and since it is abundantly clear to us that an obviousness-type
double patenting rejection is a viable rejection where the patent
claims are directed to a combination and the later filed
application claims are directed to a sub-combination, if the
claims of the patent and application are so related that the
later claimed element (sub-combination) is the “essential
distinguishing feature” of the combination, we will sustain the
examiner's rejection of claims 28 through 30 and 34 under the
judicially created doctrine of obviousness-type double patenting.
Next we look to the examiner's rejection of claims 18
through 34 under 35 U.S.C. § 102(b) based on Ferreira. In this
instance, the examiner notes that Ferreira teaches (e.g., in
Figures 3-7) a shoe cleat or spike-carrying unit (26) including a
screw-threaded spigot (34) and a body member having a ring of
free-standing, axially extending posts or lock tongues (33)
projecting therefrom, with the lock tongues each including a base
secured to the body member. The examiner then observes that
“[a]ll of the functional claim language and statements of
intended use do not make an otherwise unpatentable claim
Appeal No. 2004-1264
Application 09/909,168
9
patentable” (supp. answer, page 4). Subsequently, the examiner
contends that “[s]ince the reference device has all of the same
structural elements, as noted above, it would clearly seem to be
inherently capable of performing the functions as claimed” (supp.
answer, pages 5-6).
In both the brief and reply brief, appellant acknowledges
that the posts or locking tongues (33) of the shoe cleat in
Ferreira are resiliently deflectable in the axial and
circumferential directions as they pass over successive cam
surfaces (41a) of socket side projections (41) as seen in Figure
5 of that patent. However, appellant points out that each of the
claims presently on appeal defines posts or locking members that
are resiliently deflectable in a generally radially outward
direction in response to outwardly applied forces applied to the
posts/locking members during rotary insertion thereof into a
socket, and contends that the examiner’s conclusion of inherency
in this regard is not justified by the Ferreira disclosure.
On page 8 of the answer, the examiner indicates agreement
with appellant that the posts (tongues) of Ferreira are not
taught to be deflectable in a radially outward direction,
Appeal No. 2004-1264
Application 09/909,168
10
however, the examiner goes on to urge that inasmuch as the posts
(tongues) of Ferreira will resiliently deflect in the vertical
and axial direction “then they are inherently capable of
deflecting in a generally radially outward direction in response
to an outwardly directed force.”
It is well settled that inherency may not be established by
probabilities or possibilities, but must instead be "the natural
result flowing from the operation as taught." See In re Oelrich,
666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981). In the present
case, the disclosure of Ferreira does not provide an adequate
factual basis to establish that the natural result flowing from
following the teachings of that reference would be a post or
locking member which is deflectable in a generally radially
outward direction in response to outwardly applied forces applied
to the posts/locking members during rotary insertion thereof into
a socket, as required in appellant’s claims on appeal. This is
especially true in Ferreira since we have no idea as to the exact
structure of the lock tongues (33) in the radial direction, even
in the embodiment described in column 2, lines 42-46, of that
patent. Moreover, we also note our agreement with appellant’s
Appeal No. 2004-1264
Application 09/909,168
11
views as set forth on page 3 of the reply brief concerning those
claims on appeal which set forth that the radially inner surface
of the posts have a convex profile. Thus, we can not sustain the
examiner’s rejection of claims 18 through 34 under 35 U.S.C.
§ 102(b) based on Ferreira.
To summarize our decision, we have sustained the examiner's
rejection of claims 28 through 30 and 34 under the judicially
created doctrine of obviousness-type double patenting as being
unpatentable over claim 1 of U.S. Patent No. 6,272,774. However,
we have not sustained the examiner’s rejection of claims 18 through
34 under 35 U.S.C. §102(b) based on Ferreira.
In accordance with the foregoing, the decision of the examiner
is affirmed-in-part.
Appeal No. 2004-1264
Application 09/909,168
12
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
CEF:pgc
Appeal No. 2004-1264
Application 09/909,168
13
Ira C. Edell
Epstein, Edell, Shapiro, Finnan & Lytle, LLC
Suite 400
1901 Research Blvd.
Rockville, MD 20850