Ex parte STANFIELD

Board of Patent Appeals and Interferences

Jul 28, 1998

08349426 (B.P.A.I. Jul. 28, 1998)

Application for patent filed December 5, 1994. According1
to appellant, this application is a continuation-in-part of
Application 08/058,450, filed May 7, 1993, now Patent No.
5,372,510.
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(2) is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES S. STANFIELD
__________
Appeal No. 97-3298
Application 08/349,4261
__________
ON BRIEF
__________
Before COHEN, MEISTER, and ABRAMS, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
Appeal No. 97-3298
Application No. 08/349,426
2
finally rejecting claims 1, 3, 6-9, 11, 13 and 14, which
constitute all of the claims remaining of record in the
application.
The appellant's invention is directed to a shoelace tying
helper. The subject matter before us on appeal is illustrated
by reference to claim 1, which reads as follows:
1. A shoe device and shoelace combination for use by
young children or the handicapped, which includes a shoelace
having first and second opposite end portions that can be tied
in a bow, by first forming said first end portion into a
shoelace loop, characterized by:
said shoe device includes a marking that represents the
shape and general position of said shoelace loop, to help a
child or handicapped person form and position the loop, with
said marking including at least one line extending along a
loop that is elongated rather than circular.
THE REFERENCE
The reference relied upon by the examiner to support the
final rejection is:
Bonfigli 4,017,984 Apr. 19,
1977
THE REJECTION
Claims 1, 3, 6-9, 11, 13 and 14 stand rejected under 35
Appeal No. 97-3298
Application No. 08/349,426
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U.S.C. § 103 as being unpatentable over Bonfigli.
The rejection is explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief and the Reply Brief.
OPINION
In reaching our decision on the issues raised in this
appeal, we have carefully assessed the claims, the prior art
applied against the claims, and the respective views of the
examiner and the appellant as set forth in the Answer and the
Briefs. We also have recognized that the examiner bears the
initial burden of presenting a prima facie case of obviousness
(see In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956
(Fed. Cir. 1993)), which is established when the teachings of
the prior art itself would appear to have suggested the
claimed subject matter to one of ordinary skill in the art
(see In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed.
Cir. 1993)). This is not to say, however, that the claimed
invention must expressly be suggested in any one or all of the
references, rather, the test for obviousness is what the
Appeal No. 97-3298
Application No. 08/349,426
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combined teachings of the references would have suggested to
one of ordinary skill in the art (see Cable Electric Products,
Inc. v. Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ 881, 886-
87 (Fed. Cir. 1985)), considering that a conclusion of
obviousness may be made from common knowledge and common sense
of the person of ordinary skill in the art without any
specific hint or suggestion in a particular reference (see In
re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)),
with skill being presumed on the part of the artisan, rather
than the lack thereof (see In re Sovish, 769 F.2d 738, 742,
226 USPQ 771, 774 (Fed. Cir. 1985)).
The sole reference cited against all of the claims is
Bonfigli which, like the appellant’s invention, is directed to
a shoe tying instructional device. Bonfigli discloses a
rectangular panel (12) upon which the outline of a shoe has
been depicted, and upwards from which extends a pair of flaps
(14, 16) provided with holes (30, 32) for receiving a shoe
lace. Some directional landmarks are provided on the panel,
in the form of three circles with the numerals 1, 2 and 3
inscribed therein. A tab (46) is provided beneath one of the
Appeal No. 97-3298
Application No. 08/349,426
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side flaps to hold down the center of a shoe lace before
lacing is commenced.
The appellant has taken issue with only one of the
aspects of the examiner’s rejection of claim 1, and that is
the shape of the marking on the device that represents the
shoelace loop. The claim requires that the marking be “at
least one line extending along a loop that is elongated rather
than circular.” Bonfigli does not explicitly disclose a
marking which illustrates the claimed elongated loop. What
Bonfigli teaches is that the user places a finger on the
numeral “3,” and then loops one lace around it to form one
loop of a “bow” (column 2, lines 28-31). As illustrated in
Figure 4a, the loop thus formed follows the line defining the
circumference of the circle within which the numeral is
located for a major portion of its length, whereupon it
becomes elongated (Figure 4a).
We agree with the examiner that one of ordinary skill in
the art would have found it obvious to additionally mark the
Bonfigli device with an elongated loop to assist the user in
forming the correct loop configuration. We arrive at this
Appeal No. 97-3298
Application No. 08/349,426
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conclusion in view of the teaching in the reference that the
shoe lace forms the loop of a bow, which in our view
conventionally is considered to be elongated, as well as the
depiction in Figure 4a of an elongated loop. Suggestion for
this is found in the self-evident advantage of providing the
most accurate directions possible to the user, and in the
explicit use of markings by Bonfigli along which the laces are
to be disposed (Fig. 1, markings 36 and 38).
A prima facie case of obviousness therefore is
established with regard to the subject matter of claim 1, and
we shall sustain the rejection of this claim.
Claim 3 adds to claim 1 the requirement that there be a
holdown “lying substantially along said line” which marks the
shoe lace loop. The reference discloses a holdown (46)
located below the side flaps (column 2, lines 51 and 52). It
is adjacent to the midpoint of the shoe lace, and its function
is to hold the center portion of the lace in place under the
side flaps, akin to the function of the holes in the
appellant’s device. It therefore does not meet the terms of
the claim, for it does not lie along the line of the shoe lace
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Application No. 08/349,426
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loop, or anywhere near enough to be considered to be
“substantially along” it.
In view of the above, we are of the opinion that a prima
facie case of obviousness has not been established, and we
will not sustain the rejection of claim 3.
Claim 6 adds to claim 1 the requirement that the first
and second ends of the shoe lace be of different colors, and
the marking be of the same color as the first end. We agree
with the examiner that this would have been obvious,
suggestion being found in the teaching of Bonfigli of using
color matching between the shoe lace and other components of
the device to enhance its teaching function (column 2, lines
1-12). The rejection of this claim is sustained.
Independent claim 7 sets forth a shoe device and shoe
lace combination comprising a plate having a front portion
with a rounded perimeter and largely parallel sides lying
rearwardly thereof to represent the outline of a child’s shoe
as seen in plan view, and which is marked in the front to
represent the front portion of a shoe. The Bonfigli device
comprises a rectangular plate upon which the outline of a shoe
Appeal No. 97-3298
Application No. 08/349,426
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is depicted. Thus, its perimeter is not in conformity with
the language of the claim. The examiner is of the view that
it would have been obvious to cut away non-essential portions
of the plate, leaving the shoe as an outline of the perimeter.
However, we fail to perceive any teaching, suggestion or
incentive which would have led one of ordinary skill in the
art to make such a modification, especially in view of the
fact that the patentee contemplates using the device as an
insert in a rectangular shoe box top (Figure 7).
A prima facie case of obviousness has not been
established with regard to claim 7, and we therefore will not
sustain the rejection. It follows that the rejection of
claims 8 and 9, which depend from claim 7, also cannot be
sustained.
The holdown that we decided above with regard to claim 3
is not taught by Bonfigli also is recited in independent claim
11. We therefore will not sustain the rejection of claim 11
or dependent claims 13 and 14.
Appeal No. 97-3298
Application No. 08/349,426
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SUMMARY
The rejection of claims 1 and 6 is sustained.
The rejection of claims 3, 7-9, 11, 13 and 14 is not
sustained.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under
37 CFR § 1.136(a).
AFFIRMED-IN-PART
Irwin Charles Cohen )
Administrative Patent Judge )
)
)
)
James M. Meister ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Neal E. Abrams )
Administrative Patent Judge )
Appeal No. 97-3298
Application No. 08/349,426
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Leon D. Rosen
Freilich, Hornbaker & Rosen
10960 Wilshire Blvd.
Suite 1434
Los Angeles, CA 90024