DUNLOP SPORTS CO. LTD.

Patent Trials and Appeals Board

Jan 27, 2021

2020003734 (P.T.A.B. Jan. 27, 2021)

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.
15/171,897 06/02/2016 Masatoshi KATO 6400-0154PUS1 9527
2292 7590 01/27/2021
BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
PIERCE, WILLIAM M
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
01/27/2021 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MASATOSHI KATO

Appeal 2020-003734
Application 15/171,897
Technology Center 3700
____________

Before DANIEL S. SONG, MICHAEL L. HOELTER, and
BRANDON J. WARNER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–18, which constitute all the claims
pending in this application. See Non-Final Act. 1 (Office Action Summary).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART the Examiner’s rejection of these claims and
enter a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“SUMITOMO RUBBER INDUSTRIES, LTD.” Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a golf club head.” Spec. ¶ 1.
Apparatus claims 1 and 11 are independent. Claim 1 is illustrative of the
claims on appeal and is reproduced below.
1. A golf club head comprising a plate-shaped face portion
for hitting a ball,
wherein the face portion has a thick portion that includes
a face center, and a peripheral portion that is thinner than the
thick portion and surrounds the thick portion, the thick portion
having an approximately uniform thickness,
the peripheral portion has a transition portion that
surrounds the thick portion and is in contact with the thick
portion, and a thin portion that is in contact with the transition
portion on the opposite side of the thick portion, the transition
portion being thicker than the thin portion, but is thinner than
the thick portion, and the transition portion gradually
decreasing in thickness from the thick portion toward the thin
portion, the transition portion being an approximately ring-
shaped when viewed from a direction orthogonal to a back
surface of the face portion, the back surface being a surface
opposite to a front surface of the face portion, the front surface
being a surface for hitting a ball,
the thick portion extends along a central axis line that
extends in a direction inclined from a toe side toward a heel
side along a direction from a sole side toward a top side,
the central axis line is a line segment having a maximum
length among line segments that pass through a centroid of the
thick portion and are overlapped with the thick portion, and
the thick portion has a recessed portion on at least one
side of the central axis line so that a central region of the thick
portion along the central axis line is recessed more toward the
central axis line than parts of the thick portion on two sides of
the central region along the central axis line.

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EVIDENCE
Name Reference Date
Gibbs et al. (“Gibbs”) US 8,012,041 B2 Sept. 6, 2011
Curtis et al. (“Curtis”) US 8,197,356 B2 June 12, 2012
REJECTIONS2
Claims 1–103 are rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor regards as the invention.
Claims 1–18 are rejected under 35 U.S.C. § 112(b) as being indefinite
for failing to particularly point out and distinctly claim the subject matter
which the inventor regards as the invention.
Claims 1–18 are rejected under 35 U.S.C. § 103 as obvious over
Gibbs, “as set forth in the previous office action and below in response to
applicant’s remarks and further in view of Curtis.” Non-Final Act. 3.
ANALYSIS
The rejection of claims 1–10 as being indefinite
The Examiner rejects independent claim 1 (and hence also dependent
claims 2–10) as being indefinite because the phrase “approximately ring-
shaped” “cannot be determined.” Non-Final Act. 2. Appellant disagrees,
referencing “page 9, lines 24 and 25,” as well as “FIG. 4,” of Appellant’s

2 A rejection of claims 1–18 as anticipated by Gibbs has been withdrawn.
See Ans. 3.
3 Claim 6 was also specifically identified as being indefinite (see Non-Final
Act. 2) but, upon consideration of Appellant’s remarks, this rejection of
claim 6 was “not sustained” such that claim 6 “remains rejected only as a
dependent to rejected claim 1.” Ans. 3.
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Specification contending that “‘approximately ring-shape’ is clearly defined
in the specification and that the term ‘approximately’ modifies ‘ring-shape’
to allow for slight variations in the ring shape.” Appeal Br. 6.
Regarding the term “approximately,” both Appellant and the
Examiner agree that this term does not require strict adherence to an exact
“ring shape,” but they disagree as to the extent to which such variations are
permitted. Compare Appeal Br. 7 (“‘approximately’ is equivalent to the
term ‘substantially’”), with Ans. 7 (“The term does more than allow for
slight variations.”).
Despite this disagreement, we elect to focus on the claim term “ring-
shaped” instead. As noted above, Appellant provides a specific citation to
Appellant’s Specification, including a reference to Figure 4 thereof, as
support for Appellant’s contention. See Appeal Br. 6 (referencing “page 9,
lines 24 and 25” (which is understood to be a part of Spec. ¶ 29)).4 This
cited portion states, “[t]he peripheral portion 60 has an approximately ring-
shaped transition portion 61 that surrounds the thick portion 50.” Spec. ¶ 29.
Claim 1 recites, at one location, a “transition portion that surrounds
the thick portion.” At another location, claim 1 recites “the transition
portion being [] approximately ring-shaped.” By Appellant’s use of
different descriptors (“surrounds” and “ring-shaped”) for the transition
portion, and because there is no indication that these two terms share the
same definition (see Appellant’s Specification), they are understood, instead,
to have different meanings. This is because a different shape, other than
“ring-shaped,” such as triangular or rectangular or one that is irregular, may

4 Hereafter we employ citations to the numbered paragraphs in Appellant’s
Specification, and not page/line numbering.
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also “surround” the thick portion as per paragraph 29 of Appellant’s
Specification. It is the meaning of “ring” that the Examiner explores. See
Ans. 3–8. As regarding the illustration provided by Appellant’s Figure 4,
the Examiner characterizes this illustration as being “peanut shaped” perhaps
because the depicted intermediate region of this elongated shape is smaller
than the diameter of it opposite end regions. Ans. 4 (referencing Appellant’s
Figure 4). From a review of Appellant’s Figure 4, the Examiner’s “peanut
shaped” characterization is a reasonable one.
The Examiner supplies two different dictionary definitions of the term
“ring.” Ans. 6. One is “a small circular band” and the other is “surround.”
Ans. 6. Appellant does not challenge either definition. The Examiner
focuses on the former definition, which we do not fault, because claim 1
already recites that the transition portion “surrounds the thick portion.” See
Ans. 5, 6. The Examiner then concludes that “there does not appear to be
anything that is circular with respect to the disclosed transitional portion 61
that is disclosed in accordance with [its] ordinary meaning.” Ans. 6.
Instead, as per the Examiner, “the claim is open to many different subjective
interpretations” and “neither the specification nor [A]ppellant in his remarks
explicitly states how such a limitation can clearly be interpreted.” Ans. 6
(referencing Ex parte Miyazaki, 89 USPQ2d 1207, 1217 (BPAI 2008)), 7.
Appellant does not explain how the Examiner’s findings might be
mistaken or how the shape of the transition portion surrounding the thick
portion as illustrated in Figure 4 of Appellant’s Specification might be a
“ring” as this term is presently defined. Accordingly, we sustain the
Examiner’s rejection of claims 1–10 as being indefinite because the claim
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phrase “approximately ring-shaped” “cannot be determined [and] is most
broadly subjective.” Non-Final Act. 2.
Upon further investigation, however, it is noted that independent
claim 11 also recites “a transition portion that surrounds the thick portion”
and “the transition portion being approximately ring-shaped,” identical to
claim 1 above. Regardless, the Examiner did not reject claim 11 on the basis
that the recitation “approximately ring-shaped” is indefinite. No explanation
is provided and it would not be proper to sustain a rejection based on this
phrase being indefinite with respect to claim 1, but not do so when this same
limitation is employed in claim 11 under similar circumstances.
Accordingly, we consider claim 11 (and hence also dependent claims 12–18)
indefinite for the same reasons expressed above. However, because claims
11–18 were not heretofore rejected as being indefinite based on this
limitation, we designate this new rejection of claims 11–18 as a new ground
of rejection. We do so in order to provide Appellant an opportunity to
respond to this new rejection of these claims.
In addition to the above rejection of claim 1 being indefinite because
of the claim phrase “approximately ring-shaped,” the Examiner also rejects
claim 1 (and hence dependent claims 2–10 as well) as being indefinite
because of the claim term “thinner.” See Non-Final Act. 2. The Examiner
reasons that “the claim does not define with respect to what structure or
feature this dimension[] is being measured.” Non-Final Act. 2. We disagree
with the Examiner on this point. Claim 1 recites “a peripheral portion that is
thinner than the thick portion.” Hence, the term “thinner” is not without a
reference or a basis by which to make a comparison of this physical trait.
Instead, the term is used to contrast a thickness of a peripheral portion with a
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thickness of the thick portion. The Examiner is not persuasive that a skilled
person would fail to be aware of the meaning of this claim limitation, or how
it is to be interpreted or understood within the context of the claim. See Ans.
8–9. We thus disagree with the Examiner that “the claim does not define
with respect to what structure or feature this dimension[] is being measured”
because, as recited, it is being measured with respect to “the thick portion.”
Non-Final Act. 2. Accordingly, we do not sustain this (additional) “thinner”
basis by which claims 1–10 are deemed to be indefinite.
The rejection of claims 1–18 as being indefinite
Both independent claims 1 and 11 are deemed by the Examiner to be
indefinite based on their usage of the claim phrase “plate-shaped” (and
hence also claims 2–10 and 12–18 which depend therefrom). Non-Final
Act. 3. The Examiner determines that “the term is subjective and fails to
convey any clear structure.” Non-Final Act. 3. Appellant disagrees stating
“[t]he term ‘plate’ is defined in Merriam-Webster dictionary as ‘a smooth
flat thin piece of material.’” Appeal Br. 7. Appellant thus states that in view
of the common dictionary definition of this term, “a plate shape is known to
one of ordinary skill in the art to have a relatively flat surface.” Appeal Br.
7. The Examiner disagrees stating that “a ‘plate’ is also ‘typically circular.’”
Ans. 9 (referencing a definition defining “plate” as “typically circular and
made of china, from which food is eaten or served”); see also id. at 11. The
Examiner is not persuasive that this proffered “circular” definition is that
which would have been understood by one skilled in the art upon reading
Appellant’s Specification. Accordingly, we do not sustain the Examiner’s
rejection of claims 1–18 as being indefinite due to the limitation “plate-
shaped.”
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The rejection of claims 1–18
as obvious over Gibbs and Curtis
As noted above, the Examiner states:
Claim(s) [] 1–18 are is/are rejected under 35 U.S.C. 102(a2) as
anticipated by or, in the alternative, under 35 U.S.C. 103 as
obvious over Gibbs 8,012,041 as set forth in the previous office
action and below in response to applicant’s remarks and further
in view of Curtis 8,197,356.
Non-Final Act. 3. Note that, subsequently, “[t]he anticipation considerations
have been withdrawn” (Ans. 3), leaving only the alternative rejection “under
35 U.S.C. 103” involving Gibbs and Curtis. Non-Final Act. 3.
Regarding independent claim 1, the Examiner states:
As to claim 1, Gibbs shows [a] club head wherein the face
portion has a thick portion 200 that includes a face center 400,
and a peripheral portion 205 that is thinner than the thick
portion and surrounds the thick portion, the thick portion
extends along a central axis line 505 that extends in a top-sole
direction, the thick portion has a recessed portion at 210 on at
least one side of the central axis line 505 so that a central region
of the thick portion along the central axis line is recessed more
toward the central axis line than parts of the thick portion such
as 222 on two sides of the central region along the central axis
line.
Non-Final Act. 3. Regarding independent claim 11, the Examiner states,
“Claim 11 is interpreted as claim 1 above.” Non-Final Act. 5.
We note the complete lack of any reference to Curtis by the Examiner
in explaining this rejection. In fact, the Examiner also does not reference
Curtis with respect to any of the subsequent reasons to reject claims 2–10
and 12–18 either. See Non-Final Act. 3–5. As indicated above, the
Examiner has withdrawn the anticipation rejection based on Gibbs (see Ans.
3), and there is no indication that claims 1–18 are rejected as being obvious
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based only upon the single reference to Gibbs.5 For example, the Examiner
observes that Appellant’s discussion of “Curtis alone do[es] not consider the
combination of art applied as a whole in the grounds for rejection.” Ans. 27.
Further, the Examiner states, “the rejection is made under 103 where Gibbs
does not directly discuss in detail the face without element 400.” Ans. 12.
Hence, we understand the rejection of these claims rests upon more than just
Gibbs alone.
Considering the Examiner’s silence as to Curtis in the above rejection,
Appellant states, “[a]t the outset, regarding the 35 U.S.C. § 103 rejection, the
Office Action has not clearly established exactly how Curtis is combined
with Gibbs.” Appeal Br. 9. Nor has the Examiner, as per Appellant,
“indicated why” the recited invention would have been obvious. For
example, Appellant states, “it is unclear how Gibbs would be modified with
Curtis” and that “the Office Action is unclear.” Appeal Br. 9, 10.
The Examiner disagrees stating that in an earlier office action, the
Examiner provided the reason of “[t]o have uniform thickness in the face of
a club like Gibbs would have been obvious in order to improve strength,
alter the CT and/or shift the weight of the club head.” Ans. 15 (referencing
“the 2/5/2019 office action”). This rationale might be applicable had the
Examiner based the rejection as being obvious over Gibbs alone, but that is
not how the Examiner has structured the present rejection under appeal. See
Non-Final Act. 3. Thus, Appellant’s concern above that “the Office Action

5 We find troubling that after the Examiner withdrew the anticipation
rejection based on Gibbs (see Ans. 3), the Examiner chastised Appellant
stating “Appellant ignores that Gibbs has been applied as anticipating the
claimed invention since the first non-final office action dated 7/13/2018.”
Ans. 12.
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has not clearly established exactly how Curtis is combined with Gibbs”
(Appeal Br. 9) remains unanswered.6
The Examiner, in further explaining the rejection, states that the center
and transition portions “can be either ring-shaped or x-shaped as desired by
the design of the face” (Non-Final Act. 7 (referencing a number of US
patents)), thereby perhaps signaling a rejection based on an obvious to try
rationale. However, there are infinitely more possible shapes than just ring
or x-shapes, such as triangular (right, equilateral, or otherwise), square (or
some other polygon with or without internal right angles), oval or elliptical,
egg-shaped, heart-shaped, as well as an abundance of symmetrical or
asymmetrical, irregular, or uneven shapes, that can be imagined. Here, the
Examiner does not attempt to explain how the only choices available are
“either ring-shaped or x-shaped,” and thus any reliance on an obvious to try
rationale is misplaced.7
The Examiner also references “design choice” in the Answer (see
Ans. 14, 15), but does not address this possible reason in the rejection, from
which this appeal is taken. See Non-Final Act. 3. To be clear, the Examiner
states, “Curtis ‘is applied in the alternative’ that appellant’s face thickness

6 We hardly think it fair for the Examiner to recite the rejection one way but,
in the Answer, provide a rationale wholly unrelated to that rejection.
7 To perhaps underscore the point that there are, indeed, countless different
shape options available, the Examiner states that Appellant’s recited face is
one designed “for an intended golfer with an intended stroke for an intended
purpose of play.” Non-Final Act. 7. This implies that the Examiner
understands that no two golfers, or their stroke or their game, are the same,
and that each situation is unique. This further undercuts an obvious to try
rationale which requires, instead, there being “a finite number of identified,
predictable solutions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007).
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design is not novel and a matter of design choice.” Ans. 14. Because Curtis
is now apparently “applied in the alternative,” but the single-paragraph
rejection (see Non-Final Act. 3) does not identify Curtis as being the basis of
an alternate rejection, one might wonder if this expressed alternate rejection
is a new ground of rejection or whether the Examiner is now relying solely
on Curtis to reject the claims. It is not clear from the record.
What is further striking is that, in rendering the rejection, the
Examiner states “as set forth in the previous office action and below in
response to applicant’s remarks.”8 Non-Final Act. 3. We, thus, further
investigate “the previous office action” and that which is “below” as directed
by the Examiner.
Beginning with “the previous office action,” in this situation, the
previous office action is a final office action dated February 5, 2019
(hereinafter “Final Act.”). However, this earlier Final Act., and the present
non-final office action, are substantially the same. In other words, it appears
the latter was maintained from the former. Again, no reference to Curtis is
provided in this earlier, final, office action, which also relies on a
combination of Gibbs and Curtis. See Final Act. 3.
To further complicate matters, in this earlier Final Act., the Examiner,
in rejecting claims 1–18 as being obvious, also states that they are obvious
“as set forth in the previous office action and below.” Final Act. 3. This
additionally referenced “previous office action” is a non-final action dated
July 13, 2018 (hereinafter “2018 Non-Final Act.”). The fact of the matter is,
however, that the 2018 Non-Final Act. does not employ Curtis in rejecting

8 The Examiner also states, “the prosecution history is clear when necessary
of how the two references combine.” Ans. 12.
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these claims under Section 103. See 2018 Non-Final Act. 3. Instead, these
claims 1–18 were rejected as being obvious only in view of Gibbs. See 2018
Non-Final Act. 3.
Thus, any investigation of any “previous office action,” as directed by
the Examiner, would not be fruitful in attempting to ascertain the role of
Curtis since all three rejections (i.e., the present Non-Final Action subject to
this appeal, the Final Act., and the 2018 Non-Final Act.) fail to explain the
role Curtis plays in the obviousness rejection of claims 1–18.
We now investigate that which the Examiner deems is “below.”
Starting with the earliest 2018 Non-Final Act., there is no “below” regarding
Curtis since Curtis was not relied on with respect to that office action. Now
addressing the “below” as regarding the next-in-time Final Act., the
Examiner states in the “Conclusion” portion of this final action that “Curtis
is applied in the alternative.” Final Act. 6. However, no further explanation
is provided by the Examiner in this “Conclusion” portion (or elsewhere) as
to how (or why) Curtis is to be applied. Thus, it is still unknown what or
how Curtis is being employed by the Examiner (other than as an
“alternative” but without more).
Now addressing the “below” of the present non-final action, we
(again) understand this reference to be to the “Conclusion” portion that
follows the stated rejection. See Non-Final Act. 5. Without any specificity
whatsoever, the Examiner casually asserts that “[t]he application of Curtis is
clear from the rejection.” Non-Final Act. 5. We disagree because, as noted
above, the Examiner has mainly remained silent as to the application of
Curtis in the present rejections of claims 1–18. The Examiner further states,
addressing Appellant, that:
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As a patent professional applicant is certainly capable of
determining that the combination of applied art are directed to
the same inventive concepts in the shape and design of golf
club face plates.
Non-Final Act. 6. As best we can ascertain, the Examiner is charging
Appellant with interpreting the basis of the rejection in view of “the
combination of applied art.” We disagree with this approach taken by the
Examiner because, instead, it is the Examiner that bears the initial burden of
establishing a prima facie case of obviousness. See In re Kumar, 418 F.3d
1361, 1366 (Fed. Cir. 2005). Further, just as “Judges are not like pigs,
hunting for truffles buried in briefs,” neither are Appellants hunting for
reasons not otherwise expressed in office actions. United States v. Dunkel,
927 F.2d 955, 956 (7th Cir. 1991). What is considered a particular violation
of this standard is the Examiner referencing one statement from one office
action, and another statement from another office action, and concluding
that, based on these disparate statements, somehow “the basis for the
grounds for rejection has been clearly articulated to the appellant.” Ans. 15.
Elsewhere, the Examiner addresses a certain limitation stating “this
limitation is clearly shown in fig. 21 of Gibbs and also taught in fig. 8a of
Curtis.” Non-Final Act. 6. However, one is left to wonder why the
Examiner is relying on a combination with Curtis if Gibbs already discloses
the limitation.
The Examiner also asserts that “Curtis clearly teaches shaping the
center portion of a club to have uniform thickness and transitions portions
‘ring-shaped.’” Non-Final Act. 6. The Examiner elaborates further stating
“that Curtis was applied to further show that, even if one were to consider
Gibbs too vague[,] . . . uniform thickened portions . . . are fairly taught in the
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art.” Ans. 14. Assuming arguendo that Curtis does disclose a uniform
thickened portion, the Examiner, consistent with the above single-paragraph
rejection (see Non-Final Act. 3), does not provide an explanation or reason
why, just because a feature was known, a skilled person would have selected
Curtis for combination with Gibbs. On this point, we have been instructed
by the Supreme Court that, in instances of claims to combinations of known
devices, it is still “important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does.” KSR, 550 U.S. at 418. From our
review of the record presented, we agree with Appellant that such a reason
to combine is lacking. See Appeal Br. 9–10.
We are also instructed by our reviewing court that the Examiner
satisfies the initial procedural burden of establishing a prima facie rejection
by adequately explaining the shortcomings perceived so that the applicant is
properly notified and able to respond. See In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011). On the other hand, when the rejection is so “uninformative
that it prevents the applicant from recognizing and seeking to counter the
grounds for rejection,” the Examiner has failed to carry the necessary
procedural burden. Jung, 637 F.3d at 1362. In short, “[t]he examiner cannot
sit mum, leaving the applicant to shoot arrows into the dark hoping to
somehow hit a secret objection harbored by the examiner.” In re Oetiker,
977 F.2d 1443, 1449 (Fed. Cir. 1992).
Presently, and based on the record before us, we are not persuaded
that the requisite notification as to the basis of the rejection has been
properly conveyed to Appellant. Nor are we persuaded that a prima facie
case of obviousness has been rendered such that “the burden of coming
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forward with evidence or argument shifts to the applicant” to counter the
Examiner’s rejection. Oetiker, 977 F.2d at 1445.
Before concluding, we further note that independent claims 1 and 11
each recite a certain slope for the central axis L3. Neither Gibbs nor Curtis
appears to illustrate such a slope and the Examiner discounts this specifically
recited orientation stating “[s]uch arbitrary reference lines can inherently be
drawn” (Non-Final Act. 5) and “[i]t is an arbitrary reference line” (Ans. 17;
see also id. at 21). The Examiner proffers no explanation that changing the
recited slope could readily be accomplished or that such change could be
achieved without any adverse effect on the recited art. Thus, we do not
agree with the Examiner that a specifically recited limitation can, in the
present case, be said to be “arbitrary” or that the claims “do[] not clearly
recite any particular direction of inclination.”9 Ans. 17, 19, 21; see also
Bicon, Inc. v. Straumann Co., 441 F.3d 945, 951 (Fed. Cir. 2006)
(explaining that to read limitations out of a claim would “be contrary to the
principle that claim language should not be treated as meaningless”).
Further, we wish to comment briefly on the Examiner’s statement that
“Appellant continues to attempt to make the grounds for rejection appear
confusing to the Board.” Ans. 17. We disagree. As explained above,
expressing the grounds of rejection in a clear manner is a requirement of the

9 Further, the Examiner states, “the ‘toe side’ and ‘heel side’ are not
explicitly defined elements in the claims. Instead to the examiner they are
general and relative directions.” Ans. 21; see also id. at 25. We disagree.
Claims are to be interpreted in view of Appellant’s Specification and several
of Appellant’s figures clearly identify that which is designated the “toe side”
and the “heel side.” See Spec. Figs. 2, 4, 5. In other words, these “sides”
are explicitly identified, contrary to the Examiner’s statement above.
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Examiner. See, e.g., Jung, 637 F.3d at 1362. From our perspective, the
present confusion regarding the grounds of rejection is the Examiner’s
doing.
We reverse the Examiner’s rejection of claims 1–18 as being obvious
in view of Gibbs and Curtis.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1–18 112(b) Indefiniteness 1–10 11–18
1–18 112(b) Indefiniteness 1–18
1–18 103 Gibbs, Curtis 1–18
Overall
Outcome10
1–10 11–18
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, [Appellant],
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating

10 37 C.F.R. § 41.50(a)(1) states: “The affirmance of the rejection of a claim
on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim.”
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to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, [A]ppellant may again appeal to the Board pursuant to
this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01 (9th Ed.,
Rev. 10.2019, June 2020).
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; 37 C.F.R. § 41.50(b)