Ex parte Sanchez

Board of Patent Appeals and Interferences

Apr 28, 1998

08368857 (B.P.A.I. Apr. 28, 1998)

Application for patent filed January 5, 1995.1
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(2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PABLO L. SANCHEZ
__________
Appeal No. 96-3616
Application 08/368,8571
__________
ON BRIEF
__________
Before ABRAMS, FRANKFORT and NASE, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 4, all of the claims pending in
this application.
Appellant's invention relates to an athletic shoe or sneaker
Appeal No. 96-3616
Application 08/368,857
A translation of each of these foreign language documents has been2
prepared for the U.S. Patent and Trademark Office, and a copy of each
translation is attached to this decision.
2
for use by a bodybuilder during exercises that are intended to
strengthen the thigh and calf muscles. A copy of claims 1
through 4 on appeal appears in the Appendix to appellant's brief
(Paper No. 7).
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Lawlor 4,494,321 Jan. 22, 1985
Agnew 5,224,279 Jul. 06, 1993
Anderie et al. (Anderie) WO 90/04933 May 17, 1990
(International Patent Publication)2

Neugebauer DE 4,100,156 Jul. 09, 1992
(German Patent)2
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Anderie.
Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Anderie in view of Neugebauer.
Claim 3 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Anderie in view of Neugebauer as applied to
Appeal No. 96-3616
Application 08/368,857
3
claims 1 and 2 above, and further in view of Agnew.
Claim 4 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Anderie, Neugebauer and Agnew as applied to claim
3 above, and further in view of Lawlor.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding the rejections, we make reference to the examiner's
answer (Paper No. 8, mailed March 28, 1996) for the examiner's
reasoning in support of the rejections, and to appellant's brief
(Paper No. 7, filed March 4, 1996) and reply brief (Paper No. 9,
filed April 24, 1996) for appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determination that none of the
Appeal No. 96-3616
Application 08/368,857
4
examiner's rejections will be sustained. Our reasoning in
support of this determination follows.

Looking first at the examiner's rejection of claim 1 under
§ 102(b), we are in agreement with the examiner that the groove
(21) of Anderie is readable as the "first cavity" set forth in
appellant's claim 1 on appeal. Note also that the translation
(page 7, lines 11-20) indicates that the support strap (3)
therein may also "extend through the sole of the shoe." We also
agree with the examiner that the stationary support strap (3) of
Anderie includes hook and loop fastener (e.g., Velcro) closure or
securement parts on the strap (see Figure 3, parts 31, 32 and
translation, page 9). Where we part company with the examiner's
position is in the requirement of claim 1 that the stationary
strap be "built into said upper shoe." As pointed out by
appellant (brief, page 10), the strap (3) of Anderie is secured
to the outside of the shoe at the edge or upper side of the sole
(2). See Figure 1 of Anderie. In contrast, Figures 2, 4 and 7 of
appellant's drawings clearly show the strap (24) as being built
into the upper shoe (14) in the area of the heel and ankle
Appeal No. 96-3616
Application 08/368,857
5
portions of the shoe therein. As an additional item, we observe
that claim 1 requires the strap to extend "about an ankle of the
bodybuilder." When this limitation is viewed in light of
appellant's disclosure, it is clear that the strap (24) of
appellant's shoe extends entirely about the ankle portion of the
shoe and can be snugly secured about the ankle of a bodybuilder
so as to provide support for the ankle during exercises to
strengthen the thigh and calf muscles (see, e.g., Fig. 7). The
strap (3) of Anderie does not extend "about" the ankle of either
the shoe or the user in this manner. Thus, in the present case,
all the limitations of appellant's claim 1 are not found in
Anderie, either expressly or under principles of inherency, and
the examiner's rejection of claim 1 under 35 U.S.C. § 102(b) will
not be sustained.
Turning to the examiner's rejection of claims 1 and 2 under
35 U.S.C. § 103 as being unpatentable over Anderie in view of
Neugebauer, we must agree with appellant that there is no
reasonable teaching, suggestion, or incentive in the applied
references which would have led one of ordinary skill in the art
to attempt to provide the shoe of Anderie with both the strap (3)
Appeal No. 96-3616
Application 08/368,857
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therein and the strap or belt (16) of Neugebauer. The shoe of
Neugebauer, with its inserts or underlays (11-13) and strap or
belt (16), is clearly a distinct system from that of Anderie for
coping with the same or similar problem of ankle injury due to
bending the ankle outwards. Since we have determined that the
examiner's conclusion of obviousness is based on a hindsight
reconstruction using appellant's own disclosure as a blueprint to
arrive at the claimed subject matter, it follows that we will not
sustain the examiner's rejection of claims 1 and 2 under 35
U.S.C. § 103 based on Anderie and Neugebauer.
Having reviewed the patents to Agnew and Lawlor also applied
by the examiner, we find nothing therein which overcomes or
supplies the deficiencies of the basic combination of Anderie and
Neugebauer as discussed above. Accordingly, it follows that the
examiner's respective rejections of claims 3 and 4 under 35
U.S.C. § 103 will likewise not be sustained.
Based on the foregoing , the decision of the examiner
rejecting claims 1 through 4 under 35 U.S.C. § 103 is reversed.
Appeal No. 96-3616
Application 08/368,857
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REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Richard L. Miller
12 Parkside Drive
Dix Hills, NY 11746-4879