Ex parte Pallera

Board of Patent Appeals and Interferences

Mar 24, 1998

08343201 (B.P.A.I. Mar. 24, 1998)

Application for patent filed November 22, 1994. According1
to appellant, the application is a continuation of Application
08/116,358, filed September 2, 1993, abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 39
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JANE PALLERA

_____________
Appeal No. 96-2724
Application 08/343,2011
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge, and
FRANKFORT and STAAB, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 96-2724
Application 08/343,201
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 4 through 10, which are all of the claims
remaining in the application. Claims 1 through 3 and 11
through 17 have been canceled. In a paper filed April 25, 1996
(Paper No. 31) appellant withdraws the appeal as to claims 8
and 9. Accordingly, the appeal as to those claims is dismissed
and only claims 4 through 7 and 10 remain for our consideration
in this appeal.
Appellant's invention is directed to a shoe having a
display assembly attached to an outer surface of the shoe upper.
Claim 10, the only independent claim on appeal, is illustrative
of the subject matter on appeal and a copy of claim 10, as it
appears in the Appendix to appellant's brief, is attached to this
decision.
The prior art references of record relied upon by the
examiner as evidence of obviousness under 35 U.S.C. § 103 are:
Adams et al. (Adams) 2,801,477 Aug. 6, 1957
Webb 4,677,008 June 30, 1987
Appeal No. 96-2724
Application 08/343,201
The rejections of claims 8 and 9 under 35 U.S.C. § 112,2
second paragraph, and of claims 8 and 9 under 35 U.S.C. § 103, as
found in the examiner's answer, are moot in view of appellant's
withdrawal of the appeal as to those claims in Paper No. 31.
3
Sigoloff 4,712,314 Dec. 15, 1987
Swartz 5,379,533 Jan. 10, 1995
(filed Dec. 6, 1991)
Claims 4, 5 and 10 stand rejected under 35 U.S.C. § 103
as being unpatentable over Swartz.
Claim 6 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Swartz in view of Webb.
Claim 7 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Swartz in view of Sigoloff or Adams.2
The full text of the examiner's rejections with regard
to claims 4 through 7 and 10 and rebuttal to the arguments
presented by appellant appears in the answer (Paper No. 30,
mailed February 21, 1996). Rather that reiterate appellant's
position on the issues raised in this appeal, we make reference
to the main and reply briefs (Paper Nos. 29 and 32) for the
complete statement of appellant's arguments.
Appeal No. 96-2724
Application 08/343,201
4
OPINION
Having carefully considered appellant's specification
and claims, the applied references, and the respective viewpoints
of appellant and the examiner, it is our determination that the
examiner has failed to establish a prima facie case of
obviousness with regard to claims 4 through 7 and 10 on appeal.
Our reasoning for this determination follows. In addition,
pursuant to our authority under 37 CFR § 1.196(b), we have also
decided to enter a new ground of rejection of appealed claims 4
through 7 and 10 under 35 U.S.C. § 112, second paragraph.
Turning first to the examiner's rejection of claims 4,
5 and 10 under 35 U.S.C. § 103, we do not share the examiner's
view that it would have been obvious, absent any suggestion or
incentive recognized in the applied prior art, to merely
eliminate the fluid from the chambers (e.g., 14, 16) of the
display assembly associated with the shoe of Swartz. While it is
true that in In re Karlson, 311 F.2d 581, 584, 136 USPQ 184, 186
(CCPA 1963) the Court stated that
Appeal No. 96-2724
Application 08/343,201
5
omission of an element and its function in a
combination is an obvious expedient if the
remaining elements perform the same functions
as before,
we observe, as appellant has on page 7 of the brief, that the
Court has also recognized that this is not a mechanical rule, and
that such language in Karlson was not intended to short circuit
the determination of obviousness mandated by 35 U.S.C. § 103.
See In re Wright, 343 F.2d 761, 769-770, 145 USPQ 182, 190 (CCPA
1965). Thus, as in reviewing any obviousness determination, we
must first look to the prior art and ascertain whether the prior
art teachings would appear to be sufficient to one of ordinary
skill in the art to suggest making the claimed substitution or
other modification proposed by the examiner. See, e.g., In re
Lalu, 747 F.2d 703, 705, 223 USPQ 1257, 1258 (Fed. Cir. 1984).
In this particular case, we share appellant's view as
expressed on pages 4-8 of the brief and in the reply brief that
the elimination of the fluid from the chambers of the display
apparatus of Swartz would not have been obvious to a person of
ordinary skill in the art based on any teaching, suggestion or
Appeal No. 96-2724
Application 08/343,201
6
motivation found in the applied reference. Like appellant, we
believe that the examiner's modification of Swartz in the
specific manner posited in the final rejection and answer is
based on the hindsight benefit of appellant's own teachings and
not on anything fairly suggested by the reference itself.
Moreover, as
appellant has urged, the critical nature of the fluid filled
chambers to the invention in Swartz clearly dictates against any
such removal, and if the fluid were removed from the chambers,
the very nature of the display apparatus therein would be altered
to the extent that such display apparatus would not be capable
of performing the same functions as before. Thus, we will not
sustain the examiner's rejection of claims 4, 5 and 10 under
35 U.S.C. § 103 based on Swartz.
Turning to the examiner's rejections of claims 6 and 7
under 35 U.S.C. § 103, we share appellant's view concerning the
obviousness of using radioactive spheres (as in Webb) in the
footwear of Swartz, and appellant's view concerning the
examiner's proposed downsizing of the picture in either Sigoloff
or Adams, given the express disclosure in each of these
Appeal No. 96-2724
Application 08/343,201
7
references that the picture or insert therein is sized to fill
the recess or pocket of the respective display assemblies
disclosed in the references. Accordingly, the examiner's
rejections of claims 6 and 7 under 35 U.S.C. § 103 will likewise
not be sustained.
In accordance with our authority under 37 CFR
§ 1.196(b), we enter the following new rejection of claims 4
through 7 and 10 under 35 U.S.C. § 112, second paragraph.
Claims 4 through 7 and 10 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to par-
ticularly point out and distinctly claim that which appellant
regards as her invention.

The purpose of the requirement stated in the second
paragraph of 35 U.S.C. § 112 is to provide those who would
endeavor, in future enterprise, to approach the area
circumscribed by the claims of a patent, with the adequate notice
demanded by due process of law, so that they may more readily and
accurately determine the boundaries of protection involved and
evaluate the possibility of infringement and dominance. In re
Appeal No. 96-2724
Application 08/343,201
8
Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970).
This is not to say that a lack of precision in claim language
automatically renders a claim indefinite. However, definiteness
problems often arise when words of degree are used in a claim. In
such a case, it must be decided whether one of ordinary skill in
the art would understand what is claimed when the claim is read
in light of the specification. See Seattle Box Co., Inc. v.
Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ
568, 574 (Fed. Cir. 1984).
In the present case, independent claim 10 was amended
in Paper No. 23, filed July 7, 1995, to include a limitation
regarding the sealed compartment of the display assembly therein
being "substantially free of liquid." Appellant's specification
does not provide any guidance as to what might constitute a
sealed compartment that is "substantially free of liquid," and
it does not appear to us that this claim language has any clear
meaning when read in light of the originally filed specification.
Page 3 of the specification describes the embodiment of Figure 1
as including a sealed pouch (12) provided with a large number of
discrete, luminescent glow pieces (22). The specification is
silent as to any fluid in the pouch (12). The embodiment of
Appeal No. 96-2724
Application 08/343,201
9
Figure 4 is described as having a star-shaped pouch (30) which
carries a mixture of sand (32) and oil (34). There is no
indication in the specification as to how much of the pouch is
filled with oil, although it appears from Figure 4 that only
about half of the pouch is filled with the mixture. Thus, the
originally filed specification leaves us in the dark as to what
the new claim language "substantially free of liquid" is intended
to mean. Appellant's attempt in Paper No. 23 to be a post-hoc
lexicographer and thereby explain the meaning of this language
added to claim 10, is unavailing, since it is the original
disclosure itself which must provide support and antecedent basis
for this language. Finding no clear understanding of exactly
what the limitation of claim 10 regarding the sealed compartment
being "substantially free of liquid" means, we find this claim
and the claims which depend therefrom to be indefinite.
To summarize, the decision of the examiner rejecting
claims 4 through 7 and 10 under 35 U.S.C. § 103 is reversed.
However, as provided for in 37 CFR § 1.196(b), a new rejection of
the appealed claims under 35 U.S.C. § 112, second paragraph, has
been entered by this panel of the Board.
Appeal No. 96-2724
Application 08/343,201
10
This decision contains a new ground of rejection pur-
suant to 37 CFR § 1.196(b) (amended effective Dec. 1, 1997, by
final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997),
1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that “[a] new ground of rejection
shall not be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exer-
cise one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37 CFR
§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of facts
relating to the claims so rejected, or both,
and have the matter reconsidered by the
examiner, in which event the application
will be remanded to the examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record. . . .
No time period for taking any subsequent action in con-
nection with this appeal may be extended under 37 CFR § 1.136(a).
Appeal No. 96-2724
Application 08/343,201
11
REVERSED, 37 CFR § 1.196(b)
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 96-2724
Application 08/343,201
12
Timothy A. French
Fish and Richardson
225 Franklin Street
Boston, MA 02110-2804
Appeal No. 96-2724
Application 08/343,201
13
APPENDIX
10. A shoe comprising a sole, a shoe upper mounted on
the sole, and a display assembly attached upon an outer surface
of said shoe upper,
said display assembly comprising:
an outer member comprising a translucent wall
at least partially defining a sealed compartment having an
arbitrary shape that is defined by dimensions of width, thickness
and length, said translucent wall comprising a central portion
and generally upstanding sidewalls extending about the periphery
of said central portion, said sealed compartment being
substantially free of liquid, and
at least one solid decorative device disposed
within said sealed compartment,
said translucent wall permitting viewing of said at
least one decorative device disposed within said sealed
compartment, and
said at least one solid decorative device having
dimensions of width, thickness and length, the width of said at
least one decorative device being significantly less than the
width of the sealed compartment, the thickness of said at least
one decorative device being significantly less than the thickness
of said sealed compartment, and the length of said at least one
solid decorative device being significantly less than the length
of said sealed compartment, in a combined dimensional
relationship selected to permit free movement of said solid
decorative device within said sealed compartment.