Ex Parte Narajowski et al

Patent Trial and Appeal Board

Nov 13, 2017

11744325 (P.T.A.B. Nov. 13, 2017)

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.
11/744,325 05/04/2007 David Narajowski 12832.35 8575
56273 7590 11/15/2017
BAKER & ASSOCIATES PLLC
358 S 700 EB154
SALT LAKE CITY, UT 84102
EXAMINER
PRANGE, SHARON M
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
11/15/2017 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):
trent@bakeriplaw.com
admin@bakeriplaw.com
trentbaker @ Comcast, net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID NARAJOWSKI, JACOB HALL, JEREMY SAXTON,
DAVID MELLON, CHAD WHITTAKER, PAUL TERRY,
and THOMAS LAAKSO
Appeal 2015-007076
Application 11/744,3251
Technology Center 3700
Before LINDA E. HORNER, MICHELLE R. OSINSKI, and
LISA M. GUIJT, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David Narajowski et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Examiner’s decision rejecting claims 1-20. Final Office
Action (May 23, 2014) [hereinafter “Final Act.”]. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Black Diamond Equipment, Ltd. as the real party in
interest. Appeal Brief 1 (November 7, 2014) [hereinafter “Br.”].
Appeal 2015-007076
Application 11/744,325
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to ski boots. Specification
12 (filed May 4, 2007) [hereinafter “Spec.”]. Claims 1,15, and 16 are
independent. Claim 1 is illustrative of the subject matter on appeal and is
reproduced below.
1. A ski boot support system with an elongated hollow
region comprising:
a shell configured to encase a foot and a portion of a lower
leg, wherein the shell includes an upper portion and a lower
portion rotatably coupled to one another at a lateral location so
as to form a primary support structure, wherein the shell includes
a base, toe portion, and heel portion, and wherein the shell further
includes an independent secondary support structure that is
coupled to both the upper and lower portions at the lateral
location; and
the elongated hollow region is disposed within the base of
the shell, wherein the elongated hollow region extends
substantially sagitally [sic] between the toe portion and heel
portion, and wherein the secondary support structure is coupled
via physically separated couplings to the distal and proximal
ends of the elongated hollow region so as to form a lateral rigid
triangular coupling between the elongated hollow region and the
lateral location.
Br. 21 (Claims Appendix).
EVIDENCE
The Examiner’s decision relies upon the following evidence:
US 3,239,952 Mar. 15, 1966Lange et al.
[hereinafter “Lange”]
Perrissoud et al. US 5,595,006
[hereinafter “Perrissoud”]
Dodge US 6,354,610 B1 Mar. 12, 2002
Jan. 21, 1997
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Application 11/744,325
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 1-3, 5-8, 10, and 13-20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Lange.
2. Claims 4 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lange.
3. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Lange and Dodge.
4. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Lange and Perrissoud.
ANALYSIS
First Ground of Rejection: Anticipation by Lange
The Examiner finds that Lange discloses a ski boot system comprising
a shell (boot 10) and an independent secondary support structure (counter
48) coupled to the shell, and an elongated hollow region (recess 68) disposed
within the base of the shell. Final Act. 2. Appellants contend that the first
ground of rejection should not be sustained because the Examiner erred in
finding that Lange discloses a “hollow elongated region,” as recited in
independent claims 1, 15, and 16. Br. 16-19.
Appellants’ Specification defines “elongated hollow region” as:
A substantially enclosed hollow region integrated within the base
of a shell or shell component. A cross-section of the elongated
hollow region includes two sides or layers separated by at least
one hollow region. The two sides or layers are integrally formed
or coupled to one another to form the at least one internal hollow
region. The elongated hollow region may include various
curvatures, tapers, slopes, and shapes to provide specific weight
and support characteristics.
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Appeal 2015-007076
Application 11/744,325
Spec. 135.
The Specification further describes that “[t]he elongated hollow
region 170 is disposed within the base 158 of the illustrated secondary
support structure 100” and that “[a]n enclosed hollow region inherently has
more torsional support than a filled, gapped, or solid region of similar
dimensions.” Id. 138. The Specification explains that “torsional rotational
forces must deform both sides of the hollow region, therein making it
torsionally more rigid and significantly lighter than a solid or gapped object
of substantially the same material.” Id. The Specification provides several
different methods that can be used to form the elongated hollow region,
including by encircling a hollow region with pre-molded material and by
capping a U-shaped region with a rigid member. Id. H 41, 45, 46, Figs. 2A,
2B, 5A, 5B. The Specification further describes at least one embodiment, in
which a rigid member 610 is enclosed by a lower shell portion 615 of a shell
605. Id. 147, Fig. 5C. The Specification discloses that “as long as the shell
605 does not chemically bond to the rigid member 610, a small air gap 620
is disposed around the rigid member 610, therein forming an elongated
hollow region within the lower portion of the shell 615 consistent with the
definition discussed above.” Id. As such, we understand elongated hollow
region to require at least a gap within the base or between components
within the base.
Lange discloses a boot system comprising an outer slipper 12, an
inner slipper or counter 48, and a rigid inner sole 74. Lange, Figs. 4-6.
When assembled, these components provide a longitudinal recess 68, which
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Appeal 2015-007076
Application 11/744,325
is filled with epoxy to bind these components together. Id. at col. 3,11. 60-
74, Fig. 6. In particular, Lange discloses:
A plurality of openings 84 are formed along the
longitudinal length of the depending legs 86 and 87 of the inner
sole [74] for purposes hereinafter described. When outer slipper
12 and the inner slipper 52 [sic, 48] are assembled, the openings
38 and 40 are respectively aligned with the openings 62 and 64.
The inner sole is snapped into the recess 68 and holes are drilled
through the bottoms of soles 14 and 50 and a thermosetting
epoxy resin 69 is forced under pressure into the chamber 88
formed by the recess 68 and the inner sole 74. Portions of the
resin enter the apertures 84 and seep between the side walls of
sole 50 [of inner slipper 48] and the legs 86 and 87 [of rigid inner
sole 74], After hardening, the epoxy binds together these
elements (outer slipper, inner slipper, and sole 74) and provides
a filling to which screws or other devices may be inserted.
Id. Based on this disclosure, resin completely fills chamber 88, which is
formed by recess 68 in inner slipper 48 and inner sole 74, and the resin
further seeps between the sidewalls of inner slipper 48 and the legs 86 and
87 of inner sole 74, such that no gap appears to exist between inner slipper
48 and inner sole 74 or between inner slipper 48 and outer slipper 12. As
such, Lange does not disclose an “elongated hollow region,” as recited in
independent claims 1,15, and 16.
The Examiner explains that “[t]here are no limitations in the claims
indicating that the region must be hollow in the final assembly of the boot.”
Examiner’s Answer 3 (May 5, 2015) [hereinafter “Ans.”]. The Examiner
finds that Figures 2 and 8 of Lange show that recess 68 is hollow prior to
insertion of the epoxy resin. Id. We disagree with the Examiner’s
determination.
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Appeal 2015-007076
Application 11/744,325
Claims 1 and 15 are directed to a ski boot support system with an
elongated hollow region, and claim 16 is directed to a method of
manufacturing and assembling a ski boot with an elongated hollow region
that increases the torsional rigidity. Br. 21, 23, 24. As noted supra, the
Specification describes that the elongated hollow region “has more torsional
support than a filled, gapped, or solid region of similar dimensions.” Spec.
138. Further, the claim calls for the secondary support structure to be
coupled to the ends of the elongated hollow region so as to form a lateral
rigid triangular opening.
In Lange, the asserted elongated hollow region is formed by the
combination of recess 68 in inner slipper 48 and rigid inner sole 74. The
ends of chamber 88 are coupled to the remainder of secondary support
structure (inner slipper 48) only once the resin is inserted therein to join
outer slipper, inner slipper, and rigid inner sole. Thus, Lange’s inner slipper
48 is not coupled to the ends of an elongated hollow region. Instead,
Lange’s inner slipper 48 is coupled to the ends of a filled chamber 88. As
such, the Examiner improperly relied on the components, as assembled as
shown in Figure 2 of Lange, and prior to injection of the resin, to meet the
limitations of the claimed support structure.
For these reasons, we do not sustain the rejection of independent
claims 1,15, and 16, and their dependent claims 2, 3, 5-8, 10, 13, 14, and
17-20 as anticipated by Lange.
Remaining Grounds of Rejection: Obviousness of claims 4, 9, 11, and 12
The remaining grounds of rejection of dependent claims 4, 9, 11, and
12 are based on the same deficient findings as to Lange’s anticipation of
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Appeal 2015-007076
Application 11/744,325
claim 1 as discussed above. Final Act. 5-6. For the same reasons that we
reverse the rejection of claim 1, we likewise do not sustain the rejections
under 35 U.S.C. § 103(a) of dependent claims 4, 9, 11, and 12 over Lange
alone or in combination with Dodge or Perrissoud.
DECISION
The decision of the Examiner rejecting claims 1-20 is reversed.
REVERSED
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