Ex Parte Champagne et al

Patent Trial and Appeal Board

Aug 22, 2016

12960821 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/960,821 12/06/2010
28291 7590 08/24/2016
SMART & BIGGAR
1000 DE LA GAUCHETIERE ST. W.
SUITE 3300
MONTREAL, QC H3B 4W5
CANADA
FIRST NAMED INVENTOR
Gaetan CHAMP AGNE
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
86421-103 7986
EXAMINER
KAVANAUGH, JOHN T
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
08/24/2016 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):
USPTO.MTL@SMART-BIGGAR.CA
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GAETAN CHAMP AGNE and OLIVER LA VIGNE
Appeal2014-007328
Application 12/960,821 1
Technology Center 3700
Before LINDA E. HORNER, THOMAS F. SMEGAL, and
MARK A. GEIER, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gaetan Champagne and Oliver Lavigne (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner's Final Rejection (1) under 35
U.S.C. § 102(b) of claims 1-9 as anticipated by Hilkemeyer (US 3,040,451,
iss. June 26, 1962)2, of claims 1-6 as anticipated by Pfander (US 7,434,338
B2, iss. Oct. 14, 2008), and of claims 1-6 and 8 as anticipated by each of
Knapp (US 2,080,320, iss. May 11, 1937) and Frieder (US 2,808,664, iss.
1 According to Appellants, the real party in interest is Bauer Hockey, Inc.
Appeal Br. 3.
2 The Examiner withdrew rejections of claims 1-7 and 9 under 35 U.S.C.
§ 102(b) as anticipated by one of Delaney (US 1,093,608, iss. Apr. 21, 1914)
and Shiang (US 4,776,110, iss. Oct. 11, 1988). Ans. 2.
Appeal2014-007328
Application 12/960,821
Oct. 8, 1957); and (2) under 35 U.S.C. § 103(a) of claim 8 as unpatentable
over each of Hilkemeyer, Frieder, and Knapp. 3 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
1. A footbed to be inserted into a skate boot having a
quarter and a toe cap defining an internal space for receiving a
human foot having a heel, an ankle, medial and lateral sides, a
big toe, second, third and fourth toes, a little toe and a plantar
surface, said footbed comprising:
(a) a sole portion for facing the plantar surface of the
foot, said sole portion having medial and lateral sides and front
and rear ends; and
(b) medial, front and lateral walls extending from said
front end of said sole portion, said medial, front and lateral walls
being movable from a first position, wherein said medial, front
and lateral ivalls are generally in the same plane than that of
said sole portion, to a second position, wherein each of said
medial, front and lateral walls defines an angle with respect to
said sole portion such that, in use, said medial, front and lateral
walls face the toes and are located between the toes and the toe
cap of the skate boot.
ANALYSIS
Anticipation of Claims 1-9 by Hilkemeyer
Appellants argue claims 1-9 as a group. See Appeal Br. 14-19 and
Reply Br. 2-7. We select claim 1 as the representative claim for this group,
and the remaining claims stand or fall with claim 1. See 37 C.F.R.
3 Claim 10 is canceled and claims 11-20 are withdrawn. Appeal Br. 30-32,
Claims App.
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Application 12/960,821
§ 41.37(c) (l)(iv). We have considered Appellants' arguments raised in the
Appeal Brief and Reply Brief, but do not find them persuasive to
demonstrate error in the Examiner's rejection of claim 1 as being anticipated
by Hilkemeyer.
The Examiner finds that the protective cover (10) of Hilkemeyer
anticipates claim 1 because it has the structure as claimed that is "capable of
being movable from a first position to a second 90 degree position,"
reasoning that "[a ]11 of the functional claim language and statements of
intended use do not make an otherwise unpatentable claim patentable."
Final Act. 2. The Examiner also explains that "it is only necessary that the
reference include structure capable of performing the recited function in
order to meet the functional limitations of a claim," and "[ s ]ince
[Hilkemeyer has] the structure as claimed, as noted above, it would clearly
seem to be inherently capable of performing the functions as claimed." Id.
at 3.
Appellants first argue that the Examiner "failed to identify each and
every element of the claimed footbed." Appeal Br. 14. However, as noted
above, the Examiner explicitly points in the Final Office Action to protective
cover 10 of Hilkemeyer to support the finding that Hilkemeyer does disclose
every element of claim 1. Final Act. 2. Moreover, in the Answer the
Examiner provides "a marked-up copy of figure 2 of Hilkemeyer showing
each and every element in question." Ans. 2-3. Appellants' general
argument regarding the Examiner's finding thus does not apprise us of any
error in the Examiner's factual findings.
Appellants also argue that "even if one assumes that Hilkemeyer' s
protective cover 10 can be inserted into a shoe or skate boot, ... the skilled
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Application 12/960,821
person would understand that Hilkemeyer' s peaks 11 would not remain in
an upward position if Hilkemeyer' s protective cover 10 was inserted into a
shoe or skate boot since they are made of a thin soft material that has no
resilience and that can be folded up." Reply Br. 5-6. However, claim 1
does not exclude cover 10 from being "made of a thin soft material that has
no resilience." See Appeal Br. 30, Claims App. As we are instructed by our
reviewing court, "limitations are not to be read into the claims from the
specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
Appellants also contend that in Hilkemeyer "the projections or peaks
11 of the protective cover 10 are not movable into a second position,
wherein they define an angle with respect to the sole portion." Appeal Br.
18. However, the Examiner correctly observes that "figures 1 and 2 of
Hilkemeyer show that the shoe cover is capable of moving between a second
position and a first position, respectively." Ans. 4. Again Appellants have
not apprised us of any error in the Examiner's factual findings, and we find
none.
Appellants continue by contending that "Hilkemeyer does not
disclose or suggest a 'footbed' ... to be inserted into the skate boot and
adapted to face the plantar surface and toes of the foot," and that
"Hilkemeyer' s protective cover 10 must be put on the outside of the shoe in
order to cover the external surface of the sole and nowhere in Hilkemeyer is
there any teaching or suggestion that the protective cover 10 can be used as a
footbed to be inserted in the shoe," while "[t]he intended use of the claimed
footbed is 'to be inserted into a skate boot."' Appeal Br. 15-16. In this
respect, Appellants rely upon the language in their preamble, which they
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contend limits the scope of the claim. See Reply Br. 2-3; see also id. at 2
(asserting that the preamble is limiting, in part, because "the expression
'skate boot' appears in the body of claim 1 and the only possible antecedent
basis for that expression is from the preamble").
We agree with the Examiner that "the language 'to be inserted,'
recited in the preamble, is functional language and therefore the skate boot is
only functionally recited." Ans. 3. It is well established that "[a]n intended
use or purpose usually will not limit the scope of the claim because such
statements usually do no more than define a context in which the invention
operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp.,
320 F.3d 1339, 1345 (Fed. Cir. 2003). Thus, identifying the sole portion for
insertion in a skate boot does no more than define a possible use of the
claimed footbed. Such a statement of use does not make a claim to a known
structure patentable. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997) (holding that the appellants' contention that the claimed structure will
be used in a way not taught by the prior art reference does not have
patentable weight if the structure is already known). "[C]laims drawn to an
apparatus must distinguish from the prior art in terms of structure rather than
function." In re Danly, 263 F.2d 844, 848 (CCPA 1959). This is a corollary
to the maxim that "the recitation of a new intended use for an old product
does not make a claim to that old product patentable." Schreiber, 128 F.3d
at 1477.
Moreover, even if the intended use/functional language is limiting, we
agree with the Examiner that "if a prior art structure is capable of performing
the intended use as recited by the preamble, then it meets the claim." Ans.
4; see also Schreiber, 128 F.3d at 1477. Importantly, the Examiner
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explains that Hilkemeyer "has all the structure as claimed and is inherently
capable of being inserted in a skate boot and therefore be folded between a
first position and a second position as claimed such that the medial, front
and lateral walls will be located between the toes and the toe cap of the skate
boot." Ans. 3. We find that the inherency determination made by the
Examiner is sound. In particular, the protective cover of Hilkemeyer is
flexible and would be capable of being inserted into a skate boot for use as a
footbed.
In light of that finding, Appellants must establish that the prior art
does not possess the capability the Examiner identifies. See Schreiber, 128
F.3d at 1478; see also In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)
("[W]here the Patent Office has reason to believe that a functional limitation
asserted to be critical for establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the prior art, it possesses the
authority to require the applicant to prove that the subject matter shown to be
in the prior art does not possess the characteristic relied on."). Appellants do
not explain why the Examiner's findings in that respect are incorrect;
instead, Appellants focus on Hilkemeyer lacking any disclosure regarding
such a use. See, e.g., Appeal Br. 17; Reply Br. 3. Such arguments do not
apprise us of Examiner error.
Appellants further contend that because "Hilkemeyer' s protective
cover 10 must be put on the outside of the shoe ... Hilkemeyer teaches
away from the claimed footbed wherein the footbed must rather be inserted
into the skate boot." Appeal Br. 17. See also Reply Br. 3. We first note that
"whether a reference 'teaches away' from [an] invention is inapplicable to
an anticipation analysis." Clear Value, Inc. v. Pearl River Polymers, Inc.,
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Application 12/960,821
668 F.3d 1340, 1344 (Fed. Cir. 2012) (quoting Celeritas Techs, Ltd. v.
Rockwell Int'! Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Furthermore,
to the extent that Appellants are contending that Hilkemeyer is not capable
of performing the recited functions, as previously explained, the Examiner
correctly finds the identical structure in Hilkemeyer to be suitable for the use
recited by claim 1. See Ans. 2-3.
In the Reply Brief, for the first time, Appellants argue that "[i]t is
further submitted that the Examiner's rejection is clearly based on
impermissible hindsight afforded by the Appellant's patent application."
Reply Br. 4. While hindsight is not relevant to an anticipation rejection,
Appellants also did not present this argument in the Appeal Brief. For that
reason, it is also not responsive to an argument newly raised in the
Examiner's Answer. Thus Appellants did not set forth this argument in a
timely manner prior to filing of the Reply Brief to permit the Examiner an
opportunity to fully respond. See 37 C.F.R. § 41.4l(b)(2) (2014) ("Any
argument raised in the reply brief which was not raised in the appeal brief, or
is not responsive to an argument raised in the examiner's answer ... will not
be considered by the Board for purposes of the present appeal, unless good
cause is shown.").
For these reasons, we sustain the rejection of claim 1 under 35 U.S.C.
§ 102(b) as anticipated by Hilkemeyer. Claims 2-9 fall with claim 1.
Anticipation of Claims 1-6 by Pfander; anticipation of 1-6 and 8 by
each of Knapp and Frieder; and obviousness of Claim 8 over each of
Hilkemeyer, Frieder, and Knapp.
We affirm the rejection of claims 1-9 under 35 U.S.C. § 102(b) as
being anticipated by Hilkemeyer. This affirmance disposes of all claims
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before us on appeal. See 37 C.F.R. § 41.50(a)(l) ("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, except as to any
ground specifically reversed.").
DECISION
We AFFIRM the Examiner's adverse decision as to claims 1-9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37
C.F.R. § l.136(a)(l )(iv).
AFFIRMED
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