Ex parte Skaja

Board of Patent Appeals and Interferences

Feb 28, 2000

08376298 (B.P.A.I. Feb. 28, 2000)

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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journal and (2) is not binding precedent of the Board.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. 37
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JOSEPH J. SKAJA
________________
Appeal No. 1998-1430
Application No. 08/376,298
________________
HEARD: JANUARY 10, 2000
________________
Before COHEN, STAAB, and BAHR, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
decision twice rejecting claims 121-134, all the claims
currently pending in the application.
Appeal No. 1998-1430
Application No. 08/376,298
In the previous office action, claims 121, 124-127, and1
130-132 were also provisionally rejected under obviousness-
type double patenting. In that appellant has filed a terminal
disclaimer, and in that the examiner’s answer does not contain
a restatement of this provisional rejection, we assume it to
have been withdrawn. See Ex parte Emm, 118 USPQ 180, 181 (Bd.
App. 1957).
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Appellant’s invention pertains to a shoe sole component
comprising flexible thermoplastic top and bottom sheets of
substantially uniform thickness having compressible
indentations molded therein. Each indentation defines a
recess opening to one side of the sheet and a projection
extending from the other side of the sheet. The sheets are
joined at their outer peripheries to define a cavity
therebetween such that a plurality of the projections of the
top and bottom sheets abut one another.
Independent claim 121, a copy of which is found in an
appendix to appellant’s brief, is illustrative of the appealed
subject matter.
The references of record relied upon by the examiner in
support of the appealed rejections are:
Staats-Oels 1,539,283 May 26, 1925
Derderian et al. (Derderian) 4,535,553 Aug. 20, 1985
The following rejections are before us for review:1
Appeal No. 1998-1430
Application No. 08/376,298
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1. Claims 121-132, rejected under 35 U.S.C. § 102(b) as
being anticipated by, or in the alternative, under 35 U.S.C.
§ 103 as obvious over Derderian.
2. Claims 121, 127, 133 and 134, rejected under 35 U.S.C.
§ 103 as being unpatentable over Derderian.
3. Claims 121, 122, 124, 125, 127, 128, 130 and 131,
rejected under 35 U.S.C. § 103 as being unpatentable over
Staats-Oels.
With respect to the rejections based on Derderian (i.e.,
rejections 1 and 2), the essence of the rejections is the
examiner’s determination that the elongated members 26 of
Derderian’s insert member 22 collectively comprise a “sheet”
of substantially uniform thickness, as called for in claims
121 and 127, and that the flexible legs 32 and cap portions 42
of Derderian’s insert member 22 collectively comprise a
plurality of resiliently compressible (or deformable)
“indentations” in the sheet, with each “indentation” defining
a “projection” extending away from one side of the “sheet” and
a “recess” extending into an opposite side of the “sheet,”
also as called for in claims 121 and 127. Appellant argues
(main brief, page 3) that the examiner has misconstrued the
Appeal No. 1998-1430
Application No. 08/376,298
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words “sheet” and “indentations” appearing in the claims.
Appellant also argues (reply brief, pages 1-2) that the
examiner’s construction of these terms is inconsistent with
appellant’s specification and improperly overbroad. In
responding to appellant’s arguments, the examiner contends
(answer, pages 7-9) that the terms “sheet” and “indentations”
appearing in the appealed claims are sufficiently broad to
read on the noted components of the insert member 22 of
Derderian.
While it is true that the claims in a patent application
are to be given their broadest reasonable interpretation
consistent with a specification (In re Zletz, 893 F.2d 319,
321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)), and that
limitations from a pending application’s specification will
not be read into the claims during prosecution of a patent
application (Sjolund v. Musland, 847 F.2d 1573, 1581-82, 6
USPQ2d 2020, 2027 (Fed. Cir. 1988), it is also well settled
that terms in a claim should be construed in a manner
consistent with the specification and construed as those
skilled in the art would construe them (see In re Bond, 910
Appeal No. 1998-1430
Application No. 08/376,298
The word “sheet” may mean “[a] broad, thin, usu.2
rectangular piece of material, as paper, metal, glass, or
wood” or “[a] broad, flat, continuous surface or expanse.”
The word “indentation” may mean “[t]he . . . state of being
indented,” and the word “indent” may mean “[t]o impress
(e.g., a design): stamp.” Webster’s II New Riverside
University Dictionary, Riverside Publishing Company, copyright
© 1984 by Houghton Mifflin Company.
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F.2d 831, 833, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990);
Specialty Composites v. Cabot Corp., 845 F.2d 981, 986, 6
USPQ2d 1601, 1604 (Fed. Cir. 1988); and In re Sneed, 710 F.2d
1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983)).
In the present case, it is clear that appellant’s use of
the terms “sheet” and “indentations” is consistent with the
ordinary and accepted dictionary definition of these words. 2
In contrast, the portions of Derderian’s insert member that
the examiner contends form a “sheet” are actually a plurality
of rod-like base members 26 that collectively form a skeletal
framework of hexagons (see particularly Figure 3), and the
portions of Derderian’s insert member that the examiner
contends form “indentations” in the “sheet” are actually a
plurality of flexible legs 32 joined at their ends by
hexagonal cap members 42. We appreciate that in side
elevation, base members 26 of Derderian appear as a planar
Appeal No. 1998-1430
Application No. 08/376,298
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member of uniform thickness. We also appreciate that the
flexible legs 32 and cap members 42 of Derderian project above
the plane of the base members 26 to set off and in part
circumscribe a hollow space. Nevertheless, we can think of no
circumstances under which an artisan, consistent with
appellant’s specification, would construe such structure as
corresponding to the claimed flexible “sheet” of substantially
uniform thickness having “indentations” therein. From our
perspective, Derderian’s base members 26 do not define a
“sheet” (e.g., a thin piece of material having a broad,
generally flat, continuous surface), and Derderian’s legs 32
and cap members 42 do not define “indentations” (e.g.,
structures that are impressed in or stamped from the base
members 26). The examiner’s position to the contrary is
strained and unreasonable. Furthermore, Derderian contains no
teaching of making the insert member as a “sheet” having
“indentations” therein, as now claimed. Accordingly, we
cannot sustain the examiner’s anticipation and obviousness
rejections based on Derderian.
Turning to the obviousness rejection based on Staats-Oels
(rejection 3), Staats-Oels discloses a shoe sole component
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Application No. 08/376,298
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comprising a slab-like attaching section 1 and a slab-like
tread section 2. Section 1 includes a flange 3 adjacent to
the periphery of the section, and section 2 includes a
peripheral flange 4 for receiving the flange of section 1.
Each section includes cone-shaped bosses 6 extending from one
side of the section. The bosses have recesses 9 and 10
extending partially therethrough, with the bosses of section 2
being recessed at 8 to receive the ends of the bosses of
section 1. As with the rejection based on Derderian, we do
not think an artisan, consistent with appellant’s
specification, would construe such structure as corresponding
to the claimed flexible “sheet” of substantially uniform
thickness having “indentations” therein. In our view, Staats-
Oels’ slab-like sections 1 and 2 do not define "sheets" (e.g.,
thin pieces of material having a broad, generally flat,
continuous surface), and Staats-Oels’ cone-shaped bosses 6 do
not define “indentations” (e.g., structures that are impressed
in or stamped from sections 1 and 2). Here again, the
examiner’s position to the contrary is strained and
unreasonable. Further, Staats-Oels contains no teaching of
making either section as a “sheet” having “indentations”
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Application No. 08/376,298
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therein, as now claimed. In light of the foregoing, we cannot
sustain the examiner’s rejection of claims 121, 122, 124, 125,
127, 128, 130 and 131 as being unpatentable over Staats-Oels.
The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1998-1430
Application No. 08/376,298
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LS/rwk
STEPHEN D. DELLETT
ARNOLD WHITE & DURKEE
P.O. BOX 4433
HOUSTON, TX 77210-4433