Ex parte Krull

Board of Patent Appeals and Interferences

Sep 25, 2001

09287838 (B.P.A.I. Sep. 25, 2001)

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not written for publication and is not binding precedent of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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MARK A. KRULL
__________
Appeal No. 2001-1402
Application 09/287,838
___________
ON BRIEF
___________
Before CALVERT, COHEN, and BAHR, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
19, 21, 22 and 24 to 27. The other claims in the application,
20 and 23, have been withdrawn and indicated as allowable,
respectively.
The claims on appeal, which are reproduced in the
appendix of appellant’s brief, are drawn to the combination of
Appeal No. 2001-1402
Application 09/287,838
2
an accessory and a shoe.
The prior art applied in the final rejection is:
Meier 3,473,198 Oct. 21,
1969
Williams 5,042,119 Aug. 27,
1991
Handzlik 5,246,749 Sep. 21,
1993
Gourley 5,671,517 Sep. 30,
1997
(filed Sep. 9,
1996)
The appealed claims stand finally rejected on the
following grounds:
(1) Claims 1, 3, 5 to 7 and 25, anticipated by Meier, under
35 U.S.C. § 102(b);
(2) Claims 14 and 15, anticipated by Gourley, under 35 U.S.C.
§ 102(e);
(3) Claims 14 to 16 and 19, anticipated by Williams, under
35 U.S.C. § 102(b);
(4) Claims 1 to 6, 8 to 10, 12, 13 and 17 to 19, unpatentable
over Gourley in view of Meier, under 35 U.S.C. § 103(a);
(5) Claims 1 to 3, 5 to 8, 11 to 13, 21, 22, 24, 26 and 27,
Appeal No. 2001-1402
Application 09/287,838
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unpatentable over Handzlik, under 35 U.S.C. § 103(a).
Rejection (1)
Claim 1 reads:
1. An accessory in combination with a shoe of the type
having a toe portion, a heel portion, and a transversely
extending closure disposed therebetween, comprising:
a figurine configured to stand erect on a floor
surface; and
a means for releasably securing the figurine to the
closure on the shoe.
Meier discloses a shoe having a toe, heel, and closure
(laces) therebetween. Attached to the laces by holes 16
through which the laces extend is an enclosure 1 having hinged
top and bottom portions 4, 3. A molded figure 2, shown as a
clown’s head in Fig. 1 but disclosed as possibly being a
Disney animated character or other popular children’s figure
(col. 2, lines 56 to 61) is provided on top portion 4. The
examiner takes the position that claim 1 is anticipated
because Meier’s figure 2 is a figurine which will stand erect
on a floor surface when removed from the shoe. Appellant
argues that Meier’s clown’s head 2 is not a figurine, since it
does not include a representation of a body; that it is not
Appeal No. 2001-1402
Application 09/287,838
Citing In re Donaldson Co., 16 F.3d 1189, 29 USPQ2d 18451
(Fed. Cir. 1994).
4
configured to stand erect on a floor surface; and that Meier’s
“means for releasably securing” is not the same as, or
equivalent to, the corresponding structure disclosed by
appellant (brief, pages 4 and 5).1
It is well settled that “[t]o anticipate a claim, a prior
art reference must disclose every limitation of the claimed
invention, either explicitly or inherently.” In re Schreiber,
128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Also, words in a claim are to be given their ordinary and
accustomed meaning, unless clearly defined differently by the
inventor, In re Paulsen, 30 F.3d 1475, 1480 31 USPQ2d 1671,
1674 (Fed. Cir. 1994), and limitations are not to be read into
the claims from the specification. In re Van Geuns, 988 F.2d
1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993). In the
present case, appellant does not define “figurine” in the
specification, so it will be given its ordinary and accustomed
meaning which, according to the dictionary definition accepted
by appellant (reply brief, page 2) is “a small molded or
sculpted figure; a statuette.” Appellant argues that Meier’s
Appeal No. 2001-1402
Application 09/287,838
5
clown’s head is not a “figure” because it does not include a
bodily shape or form, but we consider this to be too narrow a
reading of the term. Prior art references may be indicative
of what a claim term would mean to one of ordinary skill in
the art, In re Cortright, 165 F.3d 1353, 1358, 49 USPQ2d 1464,
1467 (Fed. Cir. 1999), and here the Meier reference itself
refers to the clown’s head 2 as a “molded figure” (col. 2,
line 21). We therefore conclude that the clown’s head 2 of
Meier, being a small molded figure, constitutes a “figurine”
as recited in claim 1.
As for whether Meier’s figurine is “configured to stand
erect on a floor surface,” as claim 1 requires, the top and
bottom portions 3, 4 of the Meier accessory 1 would form a
base or pedestal of the figurine when accessory 1 was removed
from the shoe, thereby allowing the figurine to stand erect on
the floor. Appellant’s argument that hinge members 11 would
prevent this (brief, page 3) is not understood, but in any
event, the modification shown in Meier’s Fig. 4 clearly would
meet the claim requirement in question.
Appeal No. 2001-1402
Application 09/287,838
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We also consider the “means for releasably securing”
recited in claim 1, construed in accordance with 35 U.S.C. §
112, sixth paragraph, to be met by Meier.
In the elected species of appellant’s invention, Figs. 27
and 28, the structure which corresponds to this means is slots
479 in base member 470, which slots may be provided to
accommodate shoelaces for attaching the device to a shoe (page
21, lines 21 to 26). Since Meier discloses the same
structure, namely, holes 16 in bottom member 3 to receive
shoelaces (col. 2, lines 42 to 47), it meets the claimed
means.
Claim 5 recites:
5. The accessory of claim 1, wherein the means supports
the figurine in an upright stance on the shoe.
Since Meier’s clown’s head 2 is “upright,” i.e., is
essentially vertical on the shoe as shown in Fig. 1, this
claim’s limitations are met.
Claim 6 recites:
6. The accessory of claim 1, wherein the means includes
an elongate strip extending lengthwise beneath the closure on
the shoe.
Appellant asserts that Meier’s bottom portion 3 is not “an
Appeal No. 2001-1402
Application 09/287,838
7
elongate strip” as claimed, because, as appellant defines
“elongate” on page 6 of the specification, the length must be
at least one and one-half times greater than the width.
However, according to appellant’s own measurements (brief,
page 7), Meier’s base member (bottom portion) is 1d (1.375)
inches wide by 2¼ (2.25) inches long. Since this calculates
as a length which is 1.636 times greater than the width,
Meier’s bottom portion 3 meets appellant’s definition of
“elongate.” Also, bottom portion 3 extends lengthwise beneath
the shoe closure in that it is under the portion 18 of the
laces.
Claim 7 depends from claim 6, and recites that the
figurine is releasably secured to the strip. This limitation
is not readable on the Meier apparatus, since figurine 2 is
shown as
being integrally molded with top portion 4 (see Fig. 4), and
top portion 4 is permanently attached to bottom portion 3 by
hinges 11.
Appeal No. 2001-1402
Application 09/287,838
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In view of the foregoing, rejection (1) will be sustained
as to claims 1, 5 and 6, as well as to claims 3 and 25 which
appellant has not argued separately from claim 1, but not
sustained as to claim 7.
Rejection (2)
Claim 14 recites:
14. An accessory in combination with a shoe selected
from the group consisting of a first type of shoe, having a
lace-type closure, and a second type of shoe, having a hook-
and-loop-type closure, comprising:
a base;
a first means, on the base, for selectively anchoring the
base to the lace-type closure on the first type of shoe
without interfering with operation of the lace-type closure;
a second means, on the base, for selectively anchoring
the base to the hook-and-loop-type closure on the second type
of shoe without interfering with operation of the hook-and-
loop type closure; and
an amusing object connected to the base and visible from
above in each said combination.
Gourley discloses a shoe in combination with a safety
guard 1 for the shoe laces. The guard has inner and outer
hinged members 2, 4 with interengaging hook and loop material
9 on their facing surfaces. A tab 5 on the inner member is
snapped around a lace 7, and the ends of the laces are tied in
Appeal No. 2001-1402
Application 09/287,838
9
a bow 10 which is held between the inner and outer members.
Hook and loop material is provided on the outer surface 11 of
the outer member 4 for attachment of “an emblem, safety device
or other object,” such as reflector 12 (col. 2, lines 35 to
40).
Appellant argues that the Gourley device does not
anticipate claim 14 because it does not include a second means
for selectively anchoring the base to a hook-and-loop type
shoe closure “without interfering with operation of the hook-
and-loop type closure,” as claimed. The examiner states in
the final rejection (page 3) that Gourley has “a second
equivalent means (Velcro on the inner surface or tab/snap
(5,6)),” and that the claim does not require a shoe with a
hook and loop closure. However, while the latter statement is
correct, claim 14 still requires the second means, and the
examiner does not explain how the identified Velcro or
tab/snap perform the recited function of that means.
Nevertheless, we consider that the Gourley device
contains a second means, as recited. If the shoe 8 of Gourley
were the conventional shoe 890 with a hook and loop type
Appeal No. 2001-1402
Application 09/287,838
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closure as
described by appellant at page 30, lines 8 to 22 of the
specification and shown in Figs. 49 and 50, the straps 895
would pass across inner member 2 of Gourley, through a loop or
opening on opposite flap 894, and back, the overlapping
portions of the straps interconnecting by means of the hook
and loop fasteners thereon (page 30, lines 18 to 22). Thus
the straps would be anchored to base 2 of Gourley’s device in
essentially the same manner as laces 7, in that outer member 4
would fold down over the interengaged straps. The second
means would not interfere with operation of the hook and loop
closure in that the straps and the openings through which they
pass would still be accessible, just as the eyelets in the
shoe for Gourley’s laces 7 are. Thus, since Gourley discloses
structure capable of performing the functional limitations of
the second means, it meets that means. RCA Corp. v. Applied
Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir. 1984).
No other distinctions between claims 14 and 15 and
Appeal No. 2001-1402
Application 09/287,838
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Gourley being argued by appellant, rejection (2) will be
sustained.
Rejection (3)
In making this rejection the examiner asserts that the
pocket 70 disclosed by Williams (Fig. 5 and col. 7, lines 38
to 58) corresponds to the “amusing object” recited in claim
14. However, even assuming this to be correct, we will not
sustain the rejection because we agree with appellant’s
argument (brief, page 11) that the pocket is not “visible from
above in each said combination” as the claim requires. As
indicated by the arrows 40, 42 in Williams Fig. 5, the pocket
would not be visible from above when in use because member 20
is closed by folding it and the pocket 70 medially so that it
is held in an “encapsulatory position” (similar to that shown
in Fig. 4). See col. 7, lines 50 to 58.
Rejection (4)
With regard to independent claims 1 and 8, the basis of
this rejection, as stated on page 5 of the final rejection,
is:
[i]t would be an obvious [sic: have been obvious] for the
object of the shoe as taught by Gourley to be an
Appeal No. 2001-1402
Application 09/287,838
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enclosure having the clown head (figurine), as taught by
Meier, in order to store small object[s] and to be used
as a toy when unattached to the shoe. Obviously the
device would be attached by Velcro, as the object 12 of
Gourley is attached.
Appellant argues that it would not have been obvious to attach
the item 1 of Meier as the object 12 of Gourley, because the
Meier item would present a hazard of snagging shoelaces,
whereas Gourley’s device is designed to reduce the possibility
of snagging. The examiner points out at page 6 of the answer,
however, that the shoelaces would not snag on the
Gourley/Meier device because they would be disposed between
elements 2 and 4. Thus, we agree with the examiner that one
of ordinary skill would have found it obvious to modify the
Gourley device in view of Meier, for the reason stated by the
examiner, supra.
Appellant further argues that Meier’s enclosure is not a
figurine as claimed, but we disagree for the reasons discussed
above in connection with rejection (1).
As for claims 2 and 4, we consider that Gourley discloses
the means recited therein; see the discussion of rejection
(2), supra.
Appeal No. 2001-1402
Application 09/287,838
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For claim 6, appellant presents the same argument
concerning Gourley as he did for Meier, namely that Gourley’s
strip (inner member) 2 is not “elongate” because it does not
have a length at least one and one-half times greater than the
width. This argument is not borne out by appellant’s own
measurements (brief, page 14), however, because a length of
1 / (1.6875) inches is exactly 1½ times the width of 1c11 16
(1.125) inches.
Appellant further argues as to claims 12 and 18 that the
figurine of Meier, when attached to outer member 4 of Gourley,
would not “extend[] perpendicular to the strip when mounted on
the base” (claim 12), and would not “stand[] erect on top of
the base” (claim 18). This argument is not persuasive. The
clown’s head 2 of Meier extends essentially perpendicular to
portions 3, 4, of the enclosure, as shown in Fig. 1 of Meier,
and stands erect relative to them. With the device 1 of Meier
attached to the top of outer member 4 of Gourley, the clown’s
head would extend perpendicular to the elongate strip, i.e.,
Gourley’s inner member 2, since members 2 and 4 are
essentially parallel in use (see Gourley Fig. 5), and would
Appeal No. 2001-1402
Application 09/287,838
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stand erect on top of Gourley’s outer member 4.
The remaining arguments concerning claims 12, 17 and 18
are repetitive of those addressed above.
In view of the foregoing, rejection (4) will be
sustained.
Rejection (5)
Handzlik discloses an attachment for a shoe, including a
base member 8 with a clip 18 for attachment to, inter alia,
laces 17 (col. 3, lines 47 to 52). Removably attached to a
post 7 on the base member is an antenna 3, to which may be
secured “an amusement or ornamental device such as a ball 9,
flower, pompon or the like” (col. 3, lines 12 to 15). Each of
the rejected claims requires, inter alia, a figurine.
Although Handzlik does not disclose a figurine, the examiner’s
position is that (final rejection, page 6):
It would appear to be an obvious design choice for the
object [of Handzlik] to be a figurine inasmuch as a
number of different object[s] appear to be suitable in
carrying out of the basic concept of the invention. This
view is buttressed by applicant’s disclosure which does
not reveal that the use of the specific figurine solves
any particular problem and/or yields any unexpected
results. Moreover, it
Appeal No. 2001-1402
Application 09/287,838
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would have been obvious to construct the object/emblem
with any appropriate change in appearance such as [a]
figurine or any other desired aesthetic design, In re
Seid [,61 F.2d 229,] 73 USPQ 431 [(CCPA 1947)].
We will not sustain this rejection. “A rejection based
on section 103 clearly must rest on a factual basis, and these
facts must be interpreted without hindsight reconstruction of
the invention from the prior art.” In re GPAC, Inc., 57 F.3d
1573, 1582, 35 USPQ2d 1116, 1123 (Fed. Cir. 1995). In this
rejection, the examiner has not cited any evidence as to why
it would have been obvious to use a figurine as the amusement
or ornamental device of Handzlik, so that the rejection would
appear to be based on impermissible hindsight derived from
appellant’s own disclosure. The In re Seid case (decided
prior to the 1952 Patent Act) does not aid the examiner, in
that it concerns the patentability of the particular shape and
arrangement of a figure, and not whether it would have been
obvious to use a figure instead of a non-figure.
Conclusion
Rejection (1) is affirmed as to claims 1, 3, 5, 6 and 25,
Appeal No. 2001-1402
Application 09/287,838
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and reversed as to claim 7. Rejections (2) and (4) are
affirmed. Rejections (3) and (5) are reversed.
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
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
IAC:pgg
Mark A. Krull
Appeal No. 2001-1402
Application 09/287,838
17
Post Office Box 57
Greencastle, IN 46135