Ex parte Seidel

Board of Patent Appeals and Interferences

Aug 27, 1999

08293681 (B.P.A.I. Aug. 27, 1999)

Application for patent filed August 19, 1994. 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for publication in a law journal and (2) is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SIGURD SEIDEL
____________
Appeal No. 97-2615
Application No. 08/293,6811
____________
ON BRIEF
____________
Before McQUADE, CRAWFORD, and GONZALES, Administrative Patent
Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 5, 10 and 17 through 21. Claims
6 through 9 and 11 through 16 have been allowed.
Appeal No. 97-2615
Application No. 08/293,681

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Application No. 08/293,681
The appellant's invention relates to a ski boot. An
understanding of the invention can be derived from a reading
of exemplary claim 1, which appears in the appendix to the
appellant's brief.
The references
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Marega 4,920,666 May 1,
1990
Walkhoff 4,937,953 July 3,
1990
Kaufman et al. (Kaufman) 5,142,798
Sept. 1, 1992
Bonnaventure 5,152,084 Oct. 6,
1992
The rejections
Claims 1 through 5, 10 and 19 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Walkhoff.
Claims 20 and 21 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Walkhoff in view of Bonnaventure.
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Application No. 08/293,681
Claim 17 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Walkhoff in view of Kaufman.
Appeal No. 97-2615 Page 5
Application No. 08/293,681
Claim 18 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Walkhoff in view of Marega.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 10, mailed December 19, 1996) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
brief (Paper No. 9, filed November 25, 1996) for the
appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
We turn first to the examiner’s rejection of claims 1
through 5, 10 and 19 under 35 U.S.C. § 102(b) as being
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Application No. 08/293,681
anticipated by Walkhoff. A claim is anticipated only if each
and every element as set forth in the claim is found, either
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Application No. 08/293,681
We note that claim 1 recites "said first tensioning2
system being released when said shank part is in the relaxed
position." However, the cable 34 of the first tensioning
system is not released when said shank part is in the relaxed
position. Rather, cable 34 is tightened and loosened by
tension disk 36 independent of the position of the shank part.
The examiner should consider whether the language of claim 1
regarding the first tensioning system is indefinite under 35
U.S.C. § 112, second paragraph.
expressly or inherently described, in a single prior art
reference. Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d
628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir.), cert. denied, 484
U.S. 827 (1987).
Appellant admits that Walkhoff teaches each element of
claim 1 except a first tensioning system being released when
the shank part is in the relaxed position and a second
tensioning system disposed in said outer shell for pulling
said inner boot downwardly towards a sole of said outer shell
when said shank part is pivoted from the relaxed position and
locked in the latching downhill position.2
The examiner has stated that Walkhoff discloses a second
tensioning system which includes elements 22, 24, 50 and 50'
and that these elements are capable of pulling the inner boot
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Application No. 08/293,681
downwardly towards a sole of the outer shell when the shank
part
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Application No. 08/293,681
is pivoted from the relaxed position and locked in the
latching downhill position. The examiner reasons:
The elements 22,24 extend over the inner
shoe 20 (column 3, lines 3-5 of Walkhoff)
and pulling elements 50, 50' are fastened
on each support element 22, 24 (column 3,
lines 43-44) and when the actuating lever
is rotated it provide[s] a tensile force to
pull elements 50, 50' causing a
displacement of support elements 22,24 in
the direction transverse to the
longitudinal direction A of the boot
(column 4, lines 50-56). The pulling
elements 50, 50' with the support elements
22, 24 will naturally pull said inner boot
20 back to the rear of the boot and
downwardly towards a sole of said outer
shell. [Examiner answer at pages 4 and 5].
We do not agree. Walkhoff does not disclose that the elements
22, 24, 50 and 50' form a tensioning system that pulls the
boot downwardly. Rather, Walkhoff discloses that elements 22,
24 are pulled transverse to the longitudinal direction A of
the boot
(Col. 4, lines 51-56). The examiner's finding that a second
tensioning system i.e. elements 33, 24, 50 and 50' of Walkhoff
pulls the outer shall downwardly toward the sole is mere
speculation.
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Application No. 08/293,681
In addition, claim 1 recites that the second tensioning
system pulls the inner boot downwardly towards the sole of the
outer shell “when said shank part is pivoted from the relaxed
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Application No. 08/293,681
position and locked in the latching downhill position.”
Walkhoff discloses that the pulling elements 50 and 50' are
subjected to tensile forces after the shaft part 18 is clamped
in the downhill position (Col. 4, lines 51-56). As such,
there is no disclosure of any relationship between the
position of the shaft part and the pulling elements 50 and 50'
that would result in the outer shell being pulled towards the
sole when the shaft is in the downhill position.
As we find that Walkhoff does not disclose a second
tensioning system that pulls the outer shell toward the sole
when the boot is in the downhill position, we will not sustain
the examiner’s rejection under 35 U.S.C. § 102(b) of claim 1
and claims 2 through 5, 10 and 19 dependant therefrom as
anticipated by Walkhoff.
In addition, we will not sustain the remaining rejections
i.e. the rejection of claims 20 and 21 under 35 U.S.C. § 103
as being unpatentable over Walkhoff in view of Bonnaventure;
the rejection of claim 17 under 35 U.S.C. § 103 as being
unpatentable over Walkhoff in view of Kaufman; and the
rejection of claim 18 under 35 U.S.C. § 103 as being
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Application No. 08/293,681
unpatentable over Walkhoff in view of Marega. In each of
these rejections, the examiner has relied
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on Walkhoff for disclosing a second tensioning system as
recited in claim 1 from which claims 17, 18, 20 and 21 depend.
We have reviewed the disclosures of Bonnaventure, Kaufman and
Marega and these references do not cure the deficiencies noted
above for Walkhoff.
The decision of the examiner is reversed.
REVERSED
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
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Application No. 08/293,681
MEC/dal
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Application No. 08/293,681
Lerner and Greenberg
Post Office Box 2480
Hollywood, FL 33022-2480