Ex Parte Swift

Board of Patent Appeals and Interferences

Sep 29, 2004

09975417 (B.P.A.I. Sep. 29, 2004)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PAUL SWIFT
__________

Appeal No. 2004-2239
Application No. 09/975,417
___________

ON BRIEF
___________

Before KRATZ, DELMENDO, and PAWLIKOWSKI, Administrative Patent
Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2003) from the examiner’s final rejection of claims 5 through 8
(final Office action mailed Aug. 5, 2003), which are all of the
claims pending in the above-identified application.1

1 In the appeal brief filed Dec. 24, 2003 (p. 3), the
appellant states:

No amendment has been filed after the Examiner’s
final Office Action...[T]he appellant is proposing
some very minor wording changes to Claims 5, 6, and 7
Appeal No. 2004-2239
Application No. 09/975,417

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The subject matter on appeal relates to a “flip-flop
bicycle pedal.” Further details of this appealed subject matter
are recited in representative claim 5 reproduced below:
5. A flip-flop bicycle pedal, comprising:
a. a main body pivotable about a transverse
axis and having a spindle bolt for
connecting to a bicycle, a top side and a
bottom side;
b. said top side having a first top toe cleat
clamp which conforms to a bottom of a road
type bicycle shoe cleat, the first top toe
cleat clamp having a front recess for
receiving a front tongue of the road type
bicycle shoe cleat, said top side also
having a first top rear spring-loaded
retaining plate pivotable on said main body,
the first top rear spring-loaded retaining
plate having a recess for receiving a rear
tongue of the road type bicycle shoe cleat
and when a force is applied to the first top
rear spring-loaded retaining plate, the
first top rear spring-loaded retaining plate
moves away from said main body such that the
rear tongue engages the recess of the first
top rear spring-loaded retaining plate,
where the first top rear spring-loaded

which if the Patent Office Board of Appeals will
accept them based on the Applicant’s arguments, should
certainly bring the present invention into condition
for allowance...

Regarding the appellant’s proposed amendment, the examiner held
that the proposed changes to the claims raise new issues
requiring further consideration and/or search and thus would not
be entered for purposes of this appeal. (Examiner’s answer
mailed Apr. 5, 2004, p. 2.) The appellant did not file a timely
petition to challenge the examiner’s decision regarding this
proposed amendment.

Appeal No. 2004-2239
Application No. 09/975,417

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retaining plate springs back into a locking
position, and thereby locks the rear tongue
of the road type bicycle shoe cleat thereto;
and
c. said bottom side having a second bottom toe
cleat clamp which is smaller than said first
top toe cleat clamp of said top side and
conforms to a bottom of a mountain bicycle
type shoe cleat, the second bottom toe cleat
clamp of said bottom side having a front
locking member located adjacent to said
front top rear spring-loaded retaining plate
of said top side for receiving a front
tongue of the mountain bicycle type shoe
cleat, said bottom side also having a second
bottom rear spring-loaded retaining member
pivotable on said main body such that a rear
tongue of the mountain bicycle type shoe
cleat engages inside a recess of the second
bottom rear spring-loaded retaining plate of
said bottom side, where the second bottom
rear spring-loaded plate of said bottom side
springs back into a locking position, and
thereby locks the rear tongue of the
mountain bicycle type shoe cleat thereto.

The examiner relies on the following prior art references
as evidence of unpatentability:
Gapinski et al. 6,035,743 Mar. 14, 2000
(Gapinski) (filed Mar. 18, 1998)

Claims 5 through 8 on appeal stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Gapinksi. (Answer at 3-6; final
Office action at 2-13.)
Because the examiner has not provided an adequate basis for
denying the appellant’s claim for benefit of an earlier filing
Appeal No. 2004-2239
Application No. 09/975,417

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date under 35 U.S.C. § 120 as to the appealed claims, we
reverse.
A principal question in this appeal is whether the examiner
has adequately established that the subject matter of the
appealed claims is not entitled to benefit of an earlier filing
date under 35 U.S.C. § 120 such that Gapinski is available as
prior art under 35 U.S.C. § 102(e). We do not think that the
examiner’s position is supported by substantial evidence.
The present application is a continuation-in-part (CIP)
application of prior application 09/360,561 (’561 application)
filed on May 26, 1999, now abandoned, which in turn is a CIP of
prior application 08/923,022 (’022 application) filed on Sep. 3,
1997, now abandoned. (Present specification at 1; “Combined
Declaration and Power of Attorney” filed on Oct. 10, 2001.)
Gapinski’s application, on the other hand, was filed more than
six months after the filing date of the ’022 application, i.e.,
on Mar. 18, 1998.
35 U.S.C. § 120 reads as follows:
An application for patent for an invention
disclosed in the manner provided by the first
paragraph of section 112 of this title in an
application previously filed in the United States, or
as provided by section 363 of this title, which is
filed by an inventor or inventors named in the
previously filed application shall have the same
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Application No. 09/975,417

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effect, as to such invention, as though filed on the
date of the prior application, if filed before the
patenting or abandonment of or termination of
proceedings on the first application or on an
application similarly entitled to the benefit of the
filing date of the first application and if it
contains or is amended to contain a specific reference
to the earlier filed application. No application
shall be entitled to the benefit of an earlier filed
application under this section unless an amendment
containing the specific reference to the earlier filed
application is submitted at such time during the
pendency of the application as required by the
Director. The Director may consider the failure to
submit such an amendment within that time period as a
waiver of any benefit under this section. The
Director may establish procedures, including the
payment of a surcharge, to accept an unintentionally
delayed submission of an amendment under this section.

For a claim in a later filed application to be entitled to
the benefit of an earlier filing date of a previously filed
application under 35 U.S.C. § 120, the previously filed
application must comply with the written description requirement
of 35 U.S.C. § 112, ¶1. In re Curtis, 354 F.3d 1347, 1351-52,
69 USPQ2d 1274, 1278 (Fed. Cir. 2004); In re Huston, 308 F.3d
1267, 1276, 64 USPQ2d 1801, 1806-07 (Fed. Cir. 2002); Lockwood
v. American Airlines, Inc., 107 F.3d 1565, 1571, 41 USPQ2d 1961,
1965-66 (Fed. Cir. 1997). “This requires the disclosure in the
earlier application to reasonably convey to one of ordinary
skill in the art that the inventors possessed the later-claimed
subject matter when they filed the earlier application.” In re
Appeal No. 2004-2239
Application No. 09/975,417

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Curtis, 354 F.3d at 1351, 69 USPQ2d at 1278. Where there is a
chain of applications, each application in the chain leading
back to the earlier application must comply with the written
description requirement of 35 U.S.C. § 112, ¶1. Lockwood, 107
F.3d at 1571, 41 USPQ2d at 1965-66.
The examiner’s position is that the appealed claims recite,
e.g., “a first top rear spring-loaded retaining plate,” which is
not “shown and adequately disclosed in SN’022.” (Final Office
action at 2.) According to the examiner, “the claims in this
application are drawn to new Figs. 18-22 of this application as
described on page 30...” (Id.) The examiner further contends
(answer at 3-4):
In the instant case, “a rear spring-loaded
retaining plate” was not adequately disclosed in ‘022
application. In fact, Figs. 5a-5c of SN‘022 fail to
show the biased spring that makes the plate 204 to be
pivotable. More important, the plate 204 shown in
Figs. 5a-5c of SN’022 appears to be fixedly or not
pivotably attached to the pedal body 206. Appellant’s
description of Figs. 5a-5c on page 9 of SN’022 was
inadequate because it was unclear as to how Appellant
made/use the un-illustrated spring such that the
spring biases the plate 204.

We cannot agree. Nothing substantiates the examiner’s
allegation that the appealed claims “are drawn to new Figs. 18-
22” of the present application. Thus, contrary to the
examiner’s viewpoint (final Office action at 2), the question is
Appeal No. 2004-2239
Application No. 09/975,417

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not whether Figures 18-22 are described in the earlier
applications. Rather, the issue is whether each of the earlier
applications complies with the written description requirement
of 35 U.S.C. § 112, ¶1, as to the subject matter of the appealed
claims.
As pointed out by the appellant (appeal brief at 17-18),
the disclosure of the ’022 application including Figures 5a, 5b
and 5c and the description at page 9 reasonably conveys to one
of ordinary skill in the art that the inventor possessed the
subject matter of the appealed claims at the time the ’022
application was filed. (Appeal brief at 17-21; reply brief
filed on May 28, 2004, pages 3-4.) In this regard, the ’022
application at page 9 describes a spring plate 204 that “moves
back when the [LOOK compatible] cleat is inserted and snaps
forward to lock the cleat on the pedal” as well as a spring
loaded heel clamp 208 that “is pushed back under the downward
movement of the cleat and finally springs forward to lock the
SPD compatible cleat onto the pedal (213).”2
The examiner also argues (answer at 4-5):

2 The examiner does not allege that the ’561 application
lacks adequate written description for the now claimed subject
matter.
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Application No. 09/975,417

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Appellant’s failure to contest the rejection under 35
USC 112, first paragraph, in SN’561 is considered to
be a de facto acquiescence to the validity of the
Examiner’s rejection under 35 USC 112, first
paragraph, regarding the inadequate disclosure of the
spring-loaded retaining plate/member in the parent
application SN’561 and grand parent application
SN’022.

We note, however, that the examiner provides no legal
authority for this perceived “de facto acquiescence” on the part
of the appellant to the rejection.
For these reasons, we reverse the examiner’s rejection
under 35 U.S.C. § 102(e) of appealed claims 5 through 8 as
anticipated by Gapinski.

Appeal No. 2004-2239
Application No. 09/975,417

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The decision of the examiner is reversed.
REVERSED

Peter F. Kratz )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Romulo H. Delmendo )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Beverly A. Pawlikowski )
Administrative Patent Judge )

RHD/kis
Appeal No. 2004-2239
Application No. 09/975,417

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