Ex Parte Titzmann

Board of Patent Appeals and Interferences

Jul 28, 2004

09880882 (B.P.A.I. Jul. 28, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte CONRAD PETER TITZMANN
___________
Appeal No. 2004-1756
Application No. 09/880,882
__________
ON BRIEF
__________
Before GARRIS, KRATZ, and PAWLIKOWSKI, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from a rejection of claims
1-8 which are all of the claims remaining in the application.
The subject matter on appeal relates to an ice skate blade.
With reference to the appellant’s drawings, the blade comprises
an upper portion 12 having a top surface 16 and two linear left
and right sides 18A and 18B as well as a lower portion 14
comprising two planar lower faces 20A and 20B, each lower face
extending linearly downwardly and outwardly from the bottom of
one of the sides 18A and 18B at a discrete angle of between 4°
and 12°. Further details of this appealed subject matter are set
Appeal No. 2004-1756
Application No. 09/880,882
Page 2
forth in representative independent claim one which reads as
follows:
1. An ice skate blade comprising:
a) an upper portion having a top surface and two linear left
and right sides forming two substantially parallel planar blade
mounting surfaces; and
b) a lower portion comprising two planar lower faces, each
lower face extending linearly downwardly and outwardly from the
bottom of one of said sides at a discrete angle of between 4° and
12°, said lower faces having lower edges bounding between them
the bottom surface of said blade.
The reference cited below is relied upon by the examiner as
evidence of obviousness:
Bryant 524,129 Aug. 7, 1894
Claims 1-8 are rejected under the first paragraph of 35
U.S.C. § 112. Although the examiner refers to the enablement
requirement of this paragraph, it is clear that this rejection is
based on the examiner’s belief that the claim term “linearly”
does not comply with the written description requirement of
§ 112, first paragraph. In this regard, see pages 3 and 5 of the
Answer.
Additionally, claims 1-8 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bryant. According to the
examiner, “it would have been an obvious matter of design choice
to specify the angle that the lower surface [of Bryant’s ice
skate blade] extends from the upper surface to be within the
range of 4 to 12 degrees, preferable 8 degrees" (Answer, page 4).
Appeal No. 2004-1756
Application No. 09/880,882
Page 3
We refer to the Brief and to the Answer for a complete
discussion of the opposing viewpoints expressed by the appellant
and by the examiner concerning the above noted rejections.
OPINION
For the reasons which follow, we cannot sustain either of
these rejections.
In order to satisfy the written description requirement, an
applicant’s original disclosure must convey with reasonable
clarity to those skilled in the art that the applicant, as of the
filing date sought, was in possession of the claimed invention.
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d
1111, 1116-17 (Fed. Cir. 1991). Further, the drawings alone of
an applicant’s original disclosure may, under proper
circumstances, satisfy the written description requirement. Vas-
Cath, Inc. v. Mahurkar, 935 F.2d at 1565, 19 USPQ2d at 1118.
We fully agree with the appellant that figures 2A and 2B of
his drawing provide written description support for the claim 1
term “linearly”. This is because these figures reasonably depict
the two planar lower faces 20A and 20B as extending “linearly”,
that is, in a straight line. In support of his opposing view,
the examiner points out that appellant’s “drawings are not to
scale” (Answer, page 3). However, this point, though relevant to
issues of dimension such as length, is simply irrelevant to
Appeal No. 2004-1756
Application No. 09/880,882
Page 4
whether the blade faces shown in figures 2A and 2B extend in a
linear or straight fashion.
In light of the foregoing, it is our determination that
figures 2A and 2B of the appellant’s drawing would convey with
reasonable clarity to those skilled in the art that the
appellant, as of his application filing date, was in possession
of the now claimed feature wherein the lower faces extend
“linearly”. We cannot sustain, therefore, the examiner’s § 112,
first paragraph, rejection of claims 1-8.
We also cannot sustain the examiner’s § 103 rejection of
claims 1-8 as being unpatentable over Bryant.
In the first place, we agree with the appellant that the
lower faces of Bryant’s blade are not planar and do not extend
linearly as required by appealed claim 1. This is because
patentee expressly teaches that the metal plate, from which his
blades are punched, is formed (via cold-rolling) with concave
sides (e.g., see figure 2, lines 81-84 on page 1 and lines 26-31
on page 2). Necessarily, the resulting blades also would have
sides which are concave or curved rather than sides or faces
which are planar and extend linearly as here claimed.
Secondly, there is no factual support for the examiner’s
conclusion that “it would have been an obvious matter of design
choice to specify the angle that the lower surface extends from
the upper surface to be within the range of 4 to 12 degrees"
Appeal No. 2004-1756
Application No. 09/880,882
Page 5
(Answer, page 4). As correctly observed by the appellant, the
Bryant patent contains no disclosure at all of any particular
angle value or range of values. Thus, the examiner’s afore noted
conclusion is in fact mere speculation. We here remind the
examiner that a § 103 rejection must rest on facts without resort
to speculation, unfounded assumptions or hindsight. In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173,178 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968).
The decision of the examiner is reversed.
REVERSED
)
Bradley R. Garris )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Peter F. Kratz )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Beverly A. Pawlikowski )
Administrative Patent Judge )
ELD
Appeal No. 2004-1756
Application No. 09/880,882
Page 6
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