Nicolas Frey

Patent Trials and Appeals Board

Mar 16, 2022

2021004740 (P.T.A.B. Mar. 16, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/241,526 04/18/2014 Nicolas Frey DAHU-52314 1074 86378 7590 03/16/2022 Pearne & Gordon LLP 1801 East 9th Street Suite 1200 Cleveland, OH 44114-3108 EXAMINER LYNCH, MEGAN E ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 03/16/2022 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patdocket@pearne.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte NICOLAS FREY ____________ Appeal 2021-004740 Application 14/241,526 Technology Center 3700 ____________ Before BRETT C. MARTIN, WILLIAM A. CAPP, and MICHAEL L. WOODS, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the non-final rejection of claims 33-35, 43, 44, 46, and 47. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies NB Newboots SA as the real party in interest. Appeal Br. 3. Appeal 2021-04740 Application 14/241,526 2 THE INVENTION Appellant’s invention is a ski boot. Spec. ¶ 1. Claim 34, reproduced below, is illustrative of the subject matter on appeal. 34. Sports boot comprising: an inner boot; an exogenous shell, whose dimensions allow said inner boot to be inserted into or extracted from it, said exogenous shell strengthening said inner boot and allowing it to be attached to a piece of sports equipment; said exogenous shell comprising a sole and an upper; wherein said upper comprises a forward part and a rear part; wherein said rear part of the upper comprises an interior surface facing into the exogenous shell, wherein said rear part is articulated on a first axis that is fixed and stationary relative to the sole; and said sports boot further including a reinforcement part provided to the interior surface of the rear part of the upper and configured to be located adjacent to an Achilles tendon, wherein said reinforcement part is articulated on a second axis that is fixed and stationary relative to the sole of the exogenous shell and that can be fastened to the rear part of the upper, and wherein said reinforcement part is separately articulated with reference to the rear part of the upper. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Hickman US 3,645,017 Feb. 29, 1972 Annovi US 4,542,599 Sept. 24, 1985 Olivieri US 4,685,226 Aug. 11, 1987 Sartor US 5,526,587 June 18, 1996 Appeal 2021-04740 Application 14/241,526 3 The following rejections are before us for review: 1. Claims 34, 43, 46, and 47 are rejected under 35 U.S.C. § 102(b) as anticipated by Sartor 2. Claim 33 is rejected under 35 U.S.C. § 103 as being unpatentable over Annovi and Hickman. 3. Claims 35 and 44 are rejected under 35 U.S.C. § 103 as being unpatentable over Olivieri, Annovi, and Hickman. OPINION Background As well-known by even recreational skiers, ski-boots are typically comprised of a rigid outer shell and a soft inner liner. Appellant’s invention addresses a challenge that has faced ski-boot manufacturers for many years. The design of ski-boots is critical to transferring force from the body of the skier to the surface and edges where a ski contacts the snow. However, the stiffness and forward lean built into the ski-boot, as much as it enhances skiing, makes the boot somewhat awkward and uncomfortable to walk in, yet skiers routinely walk around in their ski-boots such as to and from the parking lot, or in a ski-lodge. In the past, many ski-boot designers have tried to address this problem by making ski-boots with an inner liner that can be worn by the skier separate and apart from the outer shell. The Hickman reference relied on by the Examiner is but one example. Another example that is not cited by the Examiner but, nevertheless, represents a well-known effort to commercialize a ski-boot with a removable, walk-around liner is the RaichleTM Red Hot that was introduced circa 1968. See Appendix “A” hereto. Appeal 2021-04740 Application 14/241,526 4 As most recreational skiers can attest, just putting on and taking off a traditional ski-boot is somewhat challenging. For the ski-boot designer, creating a rigid shell that can open sufficiently to insert or remove just a foot and yet close around the foot during use presents a challenge. In that regard, ski-boot manufacturers have experimented with “rear entry” boots, exemplified by the Sartor reference. With just inserting and removing a foot being a challenge, creating a rigid ski-boot shell that is capable of opening sufficiently to allow a foot that is also wearing a somewhat thick liner to be inserted and removed is even more challenging. Previous attempts at commercializing such a design, such as the RaichleTM Red Hot, have been relegated to the sports equipment museum. Appendix “A.” We view the Examiner’s various grounds of rejection through the lens of the foregoing historical background. Anticipation of Claims 34, 43, 46, and 47 by Sartor Claim 34 The Examiner finds that Sartor discloses each limitation of the claimed invention. Non-Final Act. 2-4. In particular, the Examiner provides an annotated version of Figure 2 of Sartor with an arrow that identifies the component in Sartor that corresponds to the claimed “reinforcement part.” Id. at 4. Appellant traverses the rejection, among other things, by pointing out that the annotated feature from the Examiner’s rejection does not satisfy the reinforcement part limitation of the claim. Appeal Br. 14-16. Appeal 2021-04740 Application 14/241,526 5 Sartor is directed to a rear entry ski-boot. Sartor, Abstract. As with almost every alpine ski-boot, Sartor has a rigid shell (body 12) and a soft liner (inner shoe 21). Id. col. 2, ll. 46-54. When desired by the wearer, liner 21 can be completely removed from shell 12 thereby allowing the wearer to walk about in just the liner. Id. col. 3, ll. 23-27. Sartor’s liner features shoulder 45 that engages lug 41 on shell 12 so that, if desired by the wearer, the liner (and the wearer’s foot) can be partially lifted from the sole of the shell while otherwise being restrained from complete removal of the liner from the shell. Id. col. 3, ll. 14-21 (“relative play in the vertical direction”). The component that the Examiner identifies as the “reinforcement part” is disposed on the liner, not the shell. This can be readily seen by comparing Figures 1, 2, 3, which depict the liner as first resting on the sole (Fig. 1) and then the heel of the liner being lifted above the sole (Figs. 2, 3). In contrast, claim 34 requires the “reinforcement member” to be “provided to the interior surface of the rear part of the upper” and further specifies that the “upper” is a component of the shell as opposed to the liner. Claims App. Claim 34 further requires that the reinforcement part is “articulated on a second axis that is fixed and stationary relative to the sole” of the shell. Id. Thus, the alleged “reinforcement part” of Sartor identified by the Examiner is part of the liner and is not part of the shell. Furthermore, considering that Sartor’s liner can be completely removed from the shell, there is no factual basis to support a finding that any part of the liner, much less an “axis” thereof, satisfies the reinforcement part limitation of claim 34 directed to a second axis that is “fixed and stationary” relative to the sole of the shell. Appeal 2021-04740 Application 14/241,526 6 For a prior art reference to anticipate a claim, it must disclose all of the limitations of the claim arranged as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008). The Examiner’s factual findings are not supported by the record before us. Consequently, we do not sustain the Examiner’s Section 102 rejection of claim 34 as anticipated by Sartor. Claims 43 and 46 Claims 43 and 46 depend from claim 34. Claims App. As such, the Examiner’s rejection of these claims suffers from the same infirmity that was identified above with respect to claim 34. Therefore, we do not sustain the Section 102 rejection of claims 43 and 46 as anticipated by Sartor. Claim 47 Claim 47 is an independent claim that is substantially similar in scope to claim 34. Claims App. As with claim 34, the Examiner makes an erroneous finding of fact that Sartor satisfies a limitation directed to a reinforcement part that is similar to the erroneous finding detailed above with respect to claim 34. Therefore, for essentially the same reason, we do not sustain the Section 102 rejection of claim 47 as anticipated by Sartor. Unpatentability of Claim 33 over Annovi and Hickman The Examiner finds that Annovi discloses the invention substantially as claimed except for ribs and grooves that extend longitudinally, for which the Examiner relies on Hickman. Non-Final Act. 6-7. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to modify Annovi with the teachings of Hickman to achieve the claimed invention. Id. at 7. According to the Appeal 2021-04740 Application 14/241,526 7 Examiner, a person of ordinary skill in the art would have done this to obtain a secure fit between soles of a ski-boot shell and liner. Id. Appellant argues that Annovi’s lateral extending rib and groove pattern does not extend the entire length of the sole. Appeal Br. 18-20. Appellant further argues that Hickman teaches three spaced, serrated plates where plates at the heel and toe have serrations that run longitudinally and a middle plate has serrations that run laterally. Id. at 22. In response, the Examiner points out that Hickman was relied on to show that it was known in the art to place corresponding rib and groove patterns on the inner sole of a ski-boot shell and the outer sole of a ski-boot liner. Ans. 5. The Examiner also takes the position that Annovi discloses placing a rib and groove pattern along the entire length of the sole. Id. Annovi is directed to a ski-boot with a shell that essentially has two soles. A first sole (detachable sole 6), that is on the bottom of the boot during skiing, is detachable from the rest of shell. Annovi, col. 2, ll. 3-8, Figs. 1-3. When the first sole is detached, a second sole (element 3) is exposed which is referred as a “walking sole.” Id. col. 2, ll. 8-19, Figs. 1-3. The upper surface of detachable sole 6 has ribs and grooves that run from side-to-side (laterally) of the sole and correspond with a similar pattern on the bottom surface of walking sole 3. Id. Where the detachable sole and walking sole meet at the heel, there is a rib (9) and groove (4) arrangement which enables detachable sole 6 to lock into external foot portion 1 of the ski-boot. Id. Hickman is directed to a ski-boot that has a soft, flexible liner and a rigid shell. Hickman, Abstract. The liner is separable from the shell so that it may function as a comfortable aprés-ski boot. Id. col. 1, ll. 51-52. The Appeal 2021-04740 Application 14/241,526 8 top facing surface of the inner sole of Hickman’s shell has a pattern of ribs and grooves that correspond to a similar pattern of ribs and grooves on the bottom of the sole of Hickman’s liner. Id. col. 3, ll. 2-21, Figs. 1 (shell) and 4 (liner). The corresponding patterns of ribs and grooves cooperate to inhibit movement of the liner within the shell. Id. In summary, the prior art teaches ski boots where the inner liner is removed from the shell so that it can be worn as an item of footwear when the user is not actually skiing. The prior art also teaches that it was known to place corresponding rib and groove patterns on the outer sole of the liner and inner sole of the shell to inhibit sliding movement during skiing. Appellant’s sole argument for patentability is thus relegated to asserting that the particular pattern used on the sole is non-obvious and, therefore, deserving of patent protection. In our view, merely modifying the pattern on the soles of the liner and shell is a matter of routine optimization that requires no more than ordinary skill. See In re Applied Materials, Inc., 692 F.3d 1289, 1295-97 (Fed. Cir. 2012) (upholding lower court decision that merely modifying the pattern of grooves on a semiconductor polishing pad entailed no more than ordinary skill). In view of the teachings of Hickman, a person of ordinary skill in the art would understand that the size, length, and orientation of a rib and groove pattern would have an effect on the degree to which the ribs and grooves would inhibit sliding. Appellant presents neither evidence nor persuasive technical reasoning that using a pattern of only longitudinal ribs and grooves and running the pattern continuously along the entire length of the sole requires more than ordinary skill or produces unexpected results. Id. at 1297 (no evidence that claimed groove pattern produced an unexpected result that Appeal 2021-04740 Application 14/241,526 9 was different in kind and merely in degree from the results of the prior art). Alternatively, adopting Appellant’s particular pattern is viewed as little more than an obvious design choice. Uber Technologies, Inc. v. X One, Inc., 957 F.3d 1334 (Fed. Cir. 2020) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007)). A person of ordinary skill in the art familiar with Hickman could readily perceive that any number of geometric patterns could inhibit sliding between the liner and shell such as chevrons, or interlocking triangles, squares, hexagons, or circles. We sustain the rejection of claim 33. Unpatentability of Claims 35 and 44 over Olivieri, Annovi, and Hickman Claim 35 is an independent claim and claim 44 depends therefrom. Claims App. The Examiner finds that Olivieri discloses the invention substantially as claimed except for corresponding relief pattern on the soles of the shell and liner, for which the Examiner relies Annovi and Hickman. Non-Final Act. 7-8. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to provide a relief pattern on its soles. Id. at 8. According to the Examiner, a person of ordinary skill in the art would have done this to position the liner in the shell. Id. at 8-9. Appellant argues that Olivieri’s component identified by the Examiner as the “rear” part of the upper (element 3) is actually the “front” part of the upper. Appeal Br. 25. Appellant considers the Examiner’s claim construction that applies the word “rear” to element 3 to be unreasonable. Id. at 26. Appellant further points out that element 17 of Olivieri does not articulate on an axis that is fixed and stationary relative to the sole. Id. Appeal 2021-04740 Application 14/241,526 10 In response, the Examiner argues that element 3 of Olivieri qualifies as a “rear” part because the Examiner found other structure in Olivieri that is if disposed forward of the element 3. Ans. 6. Olivieri discloses a ski boot with a shell that features what Olivieri refers to as a “quarter,” which is comprised of two parts that, when fastened together, encircle the shin-ankle-lower leg region. Olivieri, col. 1, ll. 64-68, Fig. 2 (elements 2, 3, 4). Element 3 is referred to as the “front” part of the quarter. Id. Element 4 is referred to as the “rear” part of the quarter. Id. When the boot is taken on or off, rear part 4 pivots about pivotal connection 7 and front part 3 pivots about pivot point 17. Id. col. 2, ll. 11-15, 64-68, Fig. 2. Pivot point 17 is located eccentrically with respect to pivot point 7. Id. col. 3, ll. 1-2. Thus, as the rear part of the quarter articulates about point 7, pivot point 17 translates along an arc as indicated by arrow 18 in Figure 4. Id. col. 3, ll. 2-5, Fig. 4. We agree with Appellant that the Examiner’s claim construction that designates Olivieri’s “front part 3” as the “rear” part of the upper in claim 35 is overly broad. Non-Final Act. 8. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Nevertheless, the Board’s construction cannot be divorced from the specification and the record evidence. In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011). A construction that is Appeal 2021-04740 Application 14/241,526 11 “unreasonably broad” and which does not “reasonably reflect the plain language and disclosure” will not pass muster. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Appellant discloses a ski-boot comprised of a sole 10 and an “upper.” Spec. ¶ 5. The “upper” has a “forward” part 11 and a “rear” part 12. Id. ¶ 26, Fig. 3. A person of ordinary skill in the art, having read Appellant’s disclosure, would understand that the “forward” part is disposed toward the front of the skier’s lower leg and that the “rear” part is disposed toward the back side of the skier’s lower leg. Id. In order to read the claim language on Olivieri, the Examiner construes the front part 3 of Olivieri’s quarter as corresponding to the “rear” part of Appellant’s claim. This is an unreasonably broad construction and constitutes reversible error. Furthermore, the Examiner’s finding that Olivieri’s pivot point 17 is fixed and stationary relative to the sole is not supported by record. Non- Final Act. 8. Pivot point 17 translates through a defined arc as illustrated in Figure 4. Olivieri, col. 3, ll. 1-5. The Examiner’s findings of fact are not supported by a preponderance of the evidence and, therefore, the Examiner’s legal conclusion of unpatentability is not well-founded. We do not sustain the Examiner’s unpatentability rejection of claim 35. Furthermore, we do not sustain the rejection of claim 44 that depends therefrom. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (explaining that dependent claims are nonobvious if the independent claims from which they depend are nonobvious). Appeal 2021-04740 Application 14/241,526 12 CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 34, 43, 46, 47 102 Sartor 34, 43, 46, 47 33 103 Annovi, Hickman 33 35, 44 103 Olivieri, Annovi, Hickman 35, 44 Overall Outcome 33 34, 35, 43, 44, 46, 47 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART