Ex Parte Bilbao

Patent Trial and Appeal Board

Sep 21, 2017

13895060 (P.T.A.B. Sep. 21, 2017)

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.
13/895,060 05/15/2013 Sebastian Bilbao 238174.US.02-494186-3 8324
30873 7590 09/25/2017
DORSEY & WHITNEY LLP - NEW YORK
ATTENTION: INTELLECTUAL PROPERTY - PATENT DOCKET
51 WEST 52ND STREET
NEW YORK, NY 10019-6119
EXAMINER
BALDORI, JOSEPH B
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEBASTIAN BILBAO
Appeal 2016-0070151
Application 13/895,060
Technology Center 3700
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 26-48. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to a method and device for training
novice skiers. Spec. 12.
1 The Appellant identifies the inventor, Sebastian Bilbao, as the real party in
interest. Appeal Br. 3.
Appeal 2016-007015
Application 13/895,060
Claim 26 is illustrative:
26. A method of assisting a trainee skier, comprising:
securing left and right reins independently of each other to
left and right ski boots of the trainee, respectively; and
holding each rein at an opposite side thereof from the
boots and directly adjusting the motion of the boots of the trainee
independently of each other by applying forces from each rein
independently of each other to each boot via each rein.
Claims 26—33 and 35—48 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Jones (US 4,505,681, iss. Mar. 19, 1985),
Buchheister (US 4,509,921, iss. Apr. 9, 1985), and Kauanoe
(US 2010/0078900 Al, pub. Apr. 1, 2010).
Claim 34 is rejected under pre-AIA 35 35 U.S.C. § 103(a) as
unpatentable over Jones, Buchheister, Kauanoe, and Foertsch
(US 5,531,480, iss. July 2, 1996).
We REVERSE.
ANALYSIS
Independent claim 26 recites “securing left and right reins
independently of each other to left and right ski boots of the trainee.”
Independent claim 40 recites “left and right ankle tethering members
connected independently to the left and right reins, respectively.” We
construe these two limitations as being essentially identical.
We are persuaded by the Appellant’s argument, that the Examiner has
not sufficiently established that the ordinary artisan would have been led to
apply Kauanoe’s idea, of handles attached to snowboarding boots rigidly
attached to a snowboard, to training a skier, by attaching reins to the boots of
the ski instruction student, which would modify the reins that loop around
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Appeal 2016-007015
Application 13/895,060
the student’s legs as disclosed in Jones, or modify the reins attached to the
student’s hips as disclosed in Buchheister. Appeal Br. 15.
The Examiner finds Jones discloses a single rein that forks and
attaches to both legs of a ski student, but fails to disclose “securing the reins
to ski boot” or “applying forces to each rein independently,” as claimed.
Answer 4, 6.
The Examiner finds Buchheister discloses straps attached to the
student’s hips, each of which leads to one of the instructors hands, for
“applying forces to each of two reins independently.” Id.
Thus, collectively, Jones discloses reins connected to the student
skier’s legs, but no independent control of each leg, and Buchheister
discloses a rein connected from the instructor’s hands to each hip of the
student skier, which does provide independent control of each rein.
It is not clear from the rejection if the Examiner proposes replacing
Jones’ leg-connected single rein with Buchheister’s hip-connected rein, or
substituting the forked rein of Jones with Buchheister’s separate reins to
each of the student’s legs. However, the Examiner explains that Buchheister
teaches “the feature of the reins being separate all the way back to the user
for independent movement.” Answer 8. We, thus, infer that the Examiner’s
combination modifies Jones’ reins so as to be connected from each leg,
separately, “all the way back” to each of the instructor’s right and left hands.
However, from this combination, no shortcoming is articulated by the
Examiner, other than that the reins are not directly secured to the boots.
Answer 4, 6.
The Examiner finds Kauanoe discloses “securing the reins to ski
boots,” and articulates the reason to attach reins directly to boots is “for the
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Appeal 2016-007015
Application 13/895,060
purpose of creating a more stable and controlled connection as taught by
Kauanoe (paragraph's 0003 and 0007).” Id. 4—5 and 6—7. Kauanoe, at the
first cited paragraph, discloses “a removable strap having a loop handle for
strapping around a snowboard boot to maneuver and stabilize a snowboard.”
Kauanoe 13. Kauanoe discloses the reason for the strap is because “there is
a need to provide flexibility in movement and control in snowboarding with
an apparatus that may be used with most types of snowboards.” Id. 17.
At these cited sections, Kauanoe fails to explain a reason to apply
Kauanoe’s disclosed snowboard boot straps to the boots of a downhill ski
instruction student, whose skis operate independently of each other, under
the control of a separate person, unlike a snowboard operated by its user. In
addition, because Jones’s straps are connected to the leg, the Examiner does
not provide a citation to any evidence, or a line of technical reasoning,
adequate to support a reason to modify the combination of Jones and
Buchheister, to substitute connecting the reins directly to the boots of the
student, as claimed, instead of to the student’s legs, as disclosed by Jones.
We discern no reason that a rein connected to a boot is “a more stable and
controlled connection” than is a rein connected to a leg, as alleged by the
Examiner. Rather, the direct connection to a ski boot appears to be taught
only by the Appellant.
For the above reasons, we determine that the Examiner does not
provide an adequate basis for combining Kauanoe with the combination of
Jones and Buchheister to teach the claimed invention, and, therefore, we
determine that the basis for combining the references appears to be solely
from impermissible hindsight. Thus, we do not sustain the rejection of
claims 26—33 and 35—48 under 35 U.S.C. § 103(a). We also do not sustain
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Application 13/895,060
the rejection of dependent claim 34, because the Examiner has not
established that the combination with Foertsch remedies the hindsight
combination with Kauanoe.
DECISION
We reverse the rejections of claims 26-48 under 35 U.S.C. § 103(a).
REVERSED
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