10866972 (B.P.A.I. Dec. 27, 2011)

Ex Parte Mills et al

Board of Patent Appeals and InterferencesDec 27, 2011

10866972 (B.P.A.I. Dec. 27, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/866,972 06/14/2004 David Mills BHB-140-CIP 4356 22827 7590 12/27/2011 DORITY & MANNING, P.A. POST OFFICE BOX 1449 GREENVILLE, SC 29602-1449 EXAMINER MOHANDESI, JILA M ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 12/27/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte ELAN-POLO, INC. __________ Appeal 2010-006051 Application 10/866,972 Technology Center 3700 ___________ Before JAMESON LEE, RICHARD TORCZON, and SALLY C. MEDLEY, Administrative Patent Judges. LEE, Administrative Patent Judge. DECISION ON APPEAL Elan-Polo, Inc. (“Elan”), the real party in interest, appeals from a final rejection of claims 21-23, 25-29, and 31. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. App App supp cleat below with the o eal 2010-0 lication 10 Elan dis ort. (Spec s extendin An exem . (Spec. in the shoe utsole for 06051 /866,972 closes an a . 1:19-26) g from tha plary v-cl 5:5-6). Th ’s molded traction. ( ELAN’S thletic sho . The v-cl t plate in a eat is show e v-cleat’ outsole, s Spec. 7:1- - 2 - INVENT e having a eat include v-shaped n by Elan s connecto uch that th 4; Figs. 3- ION “v-cleat” s a conne arrangem ’s Figs. 1 r plate 44 e two clea 4). for better ctor plate a ent. (Spec and 2, rep is secured ts 42 exten foot nd two . 2:8-13). roduced to or d out of Appeal 2010-006051 Application 10/866,972 - 3 - Claim 21 is representative of the above v-cleat and sets forth the invention as follows: 21. A v-cleat for an athletic shoe comprising: a connector plate, said connector plate having a top surface, a bottom surface, a front surface and a rear surface, said front surface and rear surface both having a curved shape with said front surface being at least twice as wide as said rear surface, said connector plate having two side surfaces which each extend from said front surface to said rear surface, said connector plate defining an opening extending from said top surface to said bottom surface; and a pair of cleats, said connector plate and said pair of cleats being integral, each said cleat having an inner surface, an outer surface, a first edge and a second edge, said cleats extending upward from each said side surface generally perpendicular to said connector plate such that said cleats are configured to form a v-shape, the first edge of each said cleat being adjacent to said front surface, the second edge of each said cleat being adjacent to said rear surface, wherein the distance between said first edges of each said cleat is at least twice the distance of that between said second edges of each said cleat. THE PRIOR ART The Examiner relied upon the following prior art references: Buxton US 527,403 Oct. 16, 1894 Richardson US 1,743,285 Jan. 14, 1930 Ihlenburg US 4,914,838 Apr. 10, 1990 REJECTIONS ON APPEAL Claims 21-23 and 26-29 were finally rejected under 35 U.S.C. § 102(b) as anticipated by Ihlenburg. App App obvi § 10 I. § eal 2010-0 lication 10 Claims 2 ous over Ih Claims 2 3(a) as obv 102(b) Re 06051 /866,972 5 and 31 w lenburg a 1-23 and ious over jection of ere finall nd Buxton 26-29 wer Ihlenburg AN Claims 2 - 4 - y rejected . e finally re and Richa ALYSIS 1-23 and C rejected Only cl indepen having cleats. heel of shoe, sh reprodu section that res connec (Ans. 4 E raised o constitu claimed outsole the sho indenta under 35 U jected und rdson. 26-29 over laims 21- as anticip aims 21 an dent. Eac a connecto The Exam Ihlenburg own in Ih ced left, h 40 and co pectively tor plate an :8-19). lan argue utsole por te a “conn . Elan co portion 40 e outsole w tions 38 in .S.C. § 1 er 35 U.S Ihlenbur 23 and 26 ated by Ih d 26 are h recites a r plate an iner found ’s cleated lenburg’s as a raised nnected cl constitute d cleats a s that Ihlen tion 40 do ector plat ntends tha is merely hich defi which rep 03(a) as .C. g -29 stand lenburg. v-cleat d a pair of that the athletic Fig. 1 outsole eats 30, 32 a s claimed. burg’s es not e” as t the raised “a part of nes laceable Appeal 2010-006051 Application 10/866,972 - 5 - spikes can be mounted.” (Brief 6:16-18). Elan further contends that the raised outsole portion 40 does not define an opening extending from said top surface to said bottom surface, as is required for the claimed connector plate. (Brief 5:6-6:23). The arguments are persuasive. The raised outsole portion 40 is not a connector plate that is a part of any cleat. Rather, the raised outsole portion 40 is a thickened portion of the shoe’s outsole 14 that includes indentations 38 to seat and align cleats 30, 32 on the outsole 14. (Ihlenburg 4:15-26). It is not reasonable to regard the raised portion 40 of the outsole not as a part of the shoe’s outsole but as a cleat’s plate portion attached to the outsole. Furthermore, the claims require an opening extending from a top surface of the connector plate to a bottom surface of the connector plate. We interpret that limitation as requiring a through-hole with an opening on both sides of the connector plate. The Examiner has not identified such a through-hole for the raised outsole portion 40. Nor has the Examiner identified a bottom surface of the raised outsole portion 40 to which such a through-hole would extend. The Examiner cited the slots 44 of the cleats 30, 32, which pass entirely through the cleats 30, 32, as teaching the claimed opening or through-hole on the connector plate. (Ans. 4:16-18). Appellant states that “slot 44 is not a part of raised portion 40 so it is not clear why the Final Office Action continues to assert that an element that isn’t even part of the so-called connector plate can somehow define an opening therein.” (Brief 6:26-28). We agree. The slots 44 receive pins 42 that extend out of the raised outsole portion 40 to lock the cleats 30, 32 into proper alignment. Consequently, the slots 44 extend only through the cleats 30, 32. The slots Appeal 2010-006051 Application 10/866,972 - 6 - 44 are not through-holes of the raised outsole portion 40 cited as teaching the claimed connector plate. For the foregoing reasons, the anticipation rejection of claims 21-23 and 26-29 over Ihlenburg cannot be sustained. II. Claims 25 and 31 were finally rejected under 35 U.S.C. § 103(a) as obvious over Ihlenburg and Buxton. Claims 25 and 31 respectively depend from claims 21 and 26. Buxton has not been applied by the Examiner in any way that cures the deficiency discussed above regarding Ihlenburg. Accordingly, the rejection of claims 25 and 31 cannot be sustained. III. § 103(a) Rejection of Claims 21-23 and 26-29 over Ihlenburg and Richardson Claims 21-23 and 26-29 stand rejected as obvious over Ihlenburg and Richardson. This rejection is based on the same rationale as the anticipation rejection of claims 21-23 and 26-29 over Ihlenburg, with one exception – with regard to the connector plate opening limitation, the Examiner adds (Ans. 6:10-15): [I]f there is any doubt that the slot 44 defines an opening that extends from said top surface to said bottom surface of the connector plate of Ihlenburg, Richardson discloses that it is desirable to provide an opening that extends from a top surface to a bottom surface of a connector plate (see Figure 6) to reduce the weight of the v-cleat for an athletic shoe. The Examiner contends that it would have been obvious to implement a through-hole within Ihlenburg’s raised outsole portion 40 so as to decrease the weight of the shoe. As evidence of the requisite skill in the art, the Examiner points to Richardson’s use of a weight-saving through-hole in the connector plate of three cleats. App App respe have 1:48 Rich shoe rejec not r a sho shoe Exam susta antic over eal 2010-0 lication 10 The cite ctively sh As show a through -50 and 68 ardson sug cleats. Howeve tion of cla easonably e. Rather ’s outsole iner’s rea Accordin ined. The reje ipated by The reje Ihlenburg 06051 /866,972 d cleat and own in Ri n, the con -hole for d -70). We gests usin r, as we ex ims 21-23 deemed a , the raised 14, which soning fai gly, the re ction of cl Ihlenburg ction of cl and Buxto its attachm chardson’s nector plat ecreasing therefore a g through plained ab and 26-29 connector outsole p has no def ls to lead t jection of DE aims 21-23 is reversed aims 25 an n is rever - 7 - ent to Ri Figs. 6 an e of the Fi the weigh gree with -holes in th ove with r , Ihlenbur plate of a ortion 40 initive bot o the App claims 21 CISION and 26-2 . d 31 unde sed. chardson’ d 1, repro g. 6 cleat t of the sho the Exam e connect espect to g’s raised cleat attac is a thicken tom surfa ellant’s cla -23 and 26 9 under 35 r 35 U.S.C s shoe are duced belo arrangeme e. (Richa iner insofa or plates o the anticip outsole po hed to the ed portio ce. Thus, imed inve -29 canno U.S.C. § . § 103(a) w. nt does rdson r that f athletic ation rtion 40 is outsole of n of the the ntion. t be 102(b) as as obviou s Appeal 2010-006051 Application 10/866,972 - 8 - The rejection of claims 21-23 and 26-29 under 35 U.S.C. § 103(a) as obvious over Ihlenburg and Richardson is reversed. REVERSED lb