Ex Parte Zanco

Board of Patent Appeals and Interferences

Jun 18, 2003

09172830 (B.P.A.I. Jun. 18, 2003)

The opinion in support of the decision being entered today was
not written for publication and not binding precedent of the
Board.
Paper No. 44
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ALAIN ZANCO
__________
Appeal No. 2003-0598
Application 09/172,830
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HEARD: June 11, 2003
___________
Before COHEN, MCQUADE, and NASE, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Alain Zanco appeals from the final rejection (Paper No. 29)
of claims 1 through 3, 5, 8 and 9. Claims 7, 10 and 11, the only
other claims pending in the application, stand withdrawn from
consideration.
THE INVENTION
The invention relates to “a boot for a ski or in-line roller
skate” (specification, page 1). Representative claim 1 reads as
follows:
1. A boot for a ski or in-line roller skate, the boot having
a sole with a heel portion and a front portion, the sole being
connected to a flexible upper, wherein the sole has a first rigid
part which extends forward from said heel portion over about one
half of the length of the sole,
Appeal No. 2003-0598
Application 09/172,830
2
wherein the sole has a flexible portion which extends from
the front portion rearward to the first rigid part so as to allow
the foot to flex during walking, and
wherein the first rigid part includes an interlocking
surface means which interlocks with a binding of an alpine ski or
in-line roller skate thus firmly fixing the first rigid part
against flexing with respect to the flexible portion.
THE PRIOR ART
The references relied on by the examiner to support the
prior art rejections on appeal are:
Salzman 4,186,500 Feb. 5, 1980
Gladek 4,246,708 Jan. 27, 1981
Bourque 4,674,202 Jun. 23, 1987
Donnadieu 5,884,420 Mar. 23, 1999
THE REJECTIONS
Claims 1 through 3, 5, 8 and 9 stand rejected under 35
U.S.C. § 112, second paragraph, as failing to particularly point
out and distinctly claim the subject matter the appellant regards
as the invention.
Claims 1, 2 and 8 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Bourque.
Claims 1 through 3 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Gladek.
Claims 1 through 3 and 9 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Donnadieu.
Appeal No. 2003-0598
Application 09/172,830
1 The final rejection (Paper No. 29) contained additional rejections
which have since been withdrawn by the examiner.
3
Claims 5 and 8 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over either Donnadieu or Gladek in view of
Bourque and Salzman.
Attention is directed to the appellant’s main and reply
briefs (Paper Nos. 32 and 36) and to the examiner’s answer (Paper
No. 35) for the respective positions of the appellant and
examiner regarding the merits of these rejections.1
DISCUSSION
I. Petitionable matter
On pages 5 and 6 in the main brief, the appellant raises as
an issue in the appeal the 37 CFR § 1.75(d)(1) objection to the
specification set forth in the final rejection. As this matter
is not directly connected with the merits of a claim rejection,
it is reviewable by petition to the Director rather than by
appeal to this Board (see In re Hengehold, 440 F.2d 1395, 1403-
1404, 169 USPQ 473, 479 (CCPA 1971), and hence will not be
further addressed in this decision.
II. The 35 U.S.C. § 112, second paragraph, rejection
The examiner considers independent claim 1 and dependent
claims 2, 3, 5, 8 and 9 to be indefinite due to confusion as to
Appeal No. 2003-0598
Application 09/172,830
2 35 U.S.C. § 112, sixth paragraph, states that
[a]n element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and
such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and
equivalents thereof.
3 See the remarks in Paper No. 27 accompanying the insertion of the word
“means” into the limitation.
4
whether the “interlocking surface means” language in claim 1
constitutes a means plus function limitation invoking § 112,
¶ 6.2 The examiner further submits that even if the limitation
is interpreted to be in means plus function format as appears to
have been intended by the appellant,3 it would still be
indefinite because the underlying specification is not clear as
to what structure this limitation encompasses.
The question of whether the “interlocking surface means”
limitation in claim 1 is to be construed under § 112, ¶ 6,
arguably affects the scope of the limitation. In this case,
however, it does not bear on the definiteness of the claim.
Although the limitation lacks literal support in the underlying
specification as pointed out by the examiner, it clearly reads on
any of the binding structures shown in Figures 3 through 14, all
of which embody rigid part surface means adapted to interlock
with a binding of an alpine ski or in-line roller skate. Thus,
Appeal No. 2003-0598
Application 09/172,830
5
in either case, whether construed under § 112, ¶ 6, or not, the
“interlocking surface means” recitation in claim 1, read as it is
required to be in light of the underlying specification, sets out
and circumscribes a particular area with a reasonable degree of
precision and particularity.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 112, second paragraph, rejection of claims 1 through 3, 5, 8
and 9.
III. The prior art rejections
Each of the prior art rejections on appeal rests on a
finding by the examiner that the respective references applied in
support of the rejections disclose boots meeting the
“interlocking surface means” limitation in claim 1. Implicitly
acknowledging that none of the references expressly describes
such an interlocking surface means, the examiner predicates these
findings on principles of inherency, i.e, on a determination that
each reference discloses structure which is inherently capable of
functioning as an interlocking surface means which interlocks
with a binding of an alpine ski or in-line roller skate thus
firmly fixing the first rigid part of the sole against flexing
with respect to the flexible portion of the sole. Simply put,
none of the applied references provides a reasonable factual
Appeal No. 2003-0598
Application 09/172,830
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basis for these findings. That is, none of the cross country ski
boots disclosed by the applied references appears to have
surfaces capable of interlocking with a binding on an alpine ski
or an in-line roller skate.
Therefore, we shall not sustain the standing 35 U.S.C.
§ 102(b) rejection of claims 1, 2 and 8 as being anticipated by
Bourque, the standing 35 U.S.C. § 102(b) rejection of claims 1
through 3 as being anticipated by Gladek, the standing 35 U.S.C.
§ 102(e) rejection of claims 1 through 3 and 9 as being
anticipated by Donnadieu, or the standing 35 U.S.C. § 103(a)
rejection of claims 5 and 8 as being unpatentable over either
Donnadieu or Gladek in view of Bourque and Salzman.
SUMMARY
The decision of the examiner to reject claims 1 through 3,
5, 8 and 9 is reversed.
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Application 09/172,830
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REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JPM/kis
Appeal No. 2003-0598
Application 09/172,830
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RONALD R. SANTUCCI
FROMMER, LAWRENCE & HAUG, LLP
745 FIFTH AVENUE
NEW YORK, NY 10151