Ex parte Gallegos

Board of Patent Appeals and Interferences

May 22, 1998

29024479 (B.P.A.I. May. 22, 1998)

Application for patent filed June 14, 1994. According to appellant,1
this application is a continuation of application 08/169,225, filed December
20, 1993, now patent no. 5,435,079, issued July 25, 1995.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ALVARO Z. GALLEGOS
_____________
Appeal No. 97-2313
Application 29/024,479 1
______________
HEARD: May 5, 1998
_______________
Before COHEN, FLEMING and HANLON, Administrative Patent
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of the
Appeal No. 97-2313
Application 29/024,479
As originally filed, the claim was for “The ornamental design for Shoe2
With Spring as shown and described”.
The drawing figures were originally described by appellant in the3
specification as showing views of first and second embodiments of a “Shoe With
Spring”.
This document was first cited in the answer and applied in a new4
ground of rejection. A copy of a translation of this document is appended
2
following design claim. 2
The ornamental design for SIDE, UPPER AND
SOLE PERIPHERY OF A SPRING SHOE as shown
and described.
As per the amendment filed May 12, 1995 (Paper No. 6),
appellant describes Figures 1 through 3 and Figures 4 through
6 as portraying first and second embodiments, respectively,
for the SIDE, UPPER AND SOLE PERIPHERY OF A SPRING SHOE. 3
As evidence of obviousness, the examiner has applied the
documents listed below:
Loederer et al 20,967 Dec. 05,
1896
(Loederer)
Miller 2,383,877 Aug. 28, 1945
Sink 4,241,524 Dec. 30,
1980
Weber 4,566,206 Jan. 28, 1986
Gelli 310,571 Apr. 05, 19894
Appeal No. 97-2313
Application 29/024,479
hereto.
3
(European document)
The following rejections are before us for review.
The design claim stands rejected under 35 U.S.C. § 103 as
being unpatentable over Weber in view of Miller, Loederer, and
Sink.
The design claim further stands rejected under 35 U.S.C.
§ 103 as being unpatentable over Weber in view of Gelli and
Sink.
The full text of the examiner's rejections and response
to the argument presented by appellant appears in the answer
(Paper No. 17), while the complete statement of appellant’s
argument can be found in the revised main, reply, and
supplemental briefs (Paper Nos. 25, 18, and 20).
OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
appellant’s specification, drawing, and design claim, the
Appeal No. 97-2313
Application 29/024,479
4
applied prior art designs, the respective declarations of Ian
Whately and Stanley Hockerson, and the respective viewpoints
of appellant and the examiner. As a consequence of our
review, we make the determination which follows.
We are constrained to procedurally reverse each of the
examiner’s rejections under 35 U.S.C. § 103 since, as more
fully explained, infra, the design claim is determined to be
indefinite, to the extent that we are unable to ascertain the
metes and bounds of the claimed design. In cases such as the
present one, where claimed subject matter is indefinite, an
evaluation thereof relative to prior art is inappropriate. See
In re Wilson, 424 F.2d 1382, 165 USPQ 494, 496 (CCPA 1970) and
In re Steele, 305 F.2d 859, 134 USPQ 292, 295 (CCPA 1962)
As set forth above, the claimed ornamental design before
us on appeal is for the “SIDE, UPPER AND SOLE PERIPHERY OF A
SPRING SHOE, as shown and described”.
The original specification in this design application
described Figures 1 through 3 as views of a first embodiment
Appeal No. 97-2313
Application 29/024,479
The application file reveals that the amendments made by appellant5
were responsive to the examiner’s rejection under 35 U.S.C. § 112, first and
second paragraph (Paper No. 4)to the effect that the claimed design was not
fully disclosed; i.e., as explained by the examiner, for full disclosure top,
front, and bottom views would be required for each embodiment.
5
for the “Shoe With Spring”, while Figures 4 through 6 were
described as views of a second embodiment of the “Shoe With
Spring”. Figures 2 and 5 were specified as side views, with
the opposite side being a mirror image.
As earlier indicated, Figures 1 through 3 are now
described (Paper No. 6) as being views of a first embodiment
for the “SIDE, UPPER AND SOLE PERIPHERY OF A SPRING SHOE”,
while Figures 4 through 6 are now described as being views of
a second embodiment for the “SIDE, UPPER AND SOLE PERIPHERY OF
A SPRING SHOE”. 5
As is evident from the above drawing descriptions, the
same figures of drawing that originally were disclosed as
views of a design for a “SHOE WITH SPRING”, now are described
and claimed as portraying the design for “SIDE, UPPER AND SOLE
PERIPHERY OF A SPRING SHOE”, i.e., the now claimed design is
not for a SHOE WITH SPRING but for the SIDE, UPPER AND SOLE
Appeal No. 97-2313
Application 29/024,479
The later claiming of a different design, e.g., a design encompassing6
only a portion of an originally disclosed overall design, raises a description
(new matter) issue, as explained in a new ground of rejection, infra.
6
PERIPHERY OF A SPRING SHOE. Thus, it readily appears to us
that a “PERIPHERY” design, a design different from the overall
design for a SHOE WITH SPRING shown in the original drawings,
is now being claimed. However, all parts of the drawing
Figures are in solid lines indicating, according to design
practice, that everything depicted is part of what is being
claimed. Thus, we conclude that the now claimed design is not
the design depicted in the drawing (design for a SHOE WITH
SPRING). 6
It follows from our above analysis that, as to the design
claim on appeal, appellant errs in arguing (revised brief,
page 8) and indicating that the now claimed invention is
directed to the overall appearance of a spring shoe with a
coiled conical
spring visible between the sole and heel (page 7, Paper No. 6)
and that the claimed invention is directed to an ornamental
design for a spring shoe having a coiled spring between the
Appeal No. 97-2313
Application 29/024,479
Webster’s New Collegiate Dictionary, G. & C. Merriam Company,7
Springfield, Massachusetts, 1979.
7
sole and the heel (page 1 of the revised brief; Paper No. 25).
Contrary to appellant’s expressed point of view, the
claimed ornamental design on appeal is directed to the
periphery “OF A SPRING SHOE”, more specifically, the SIDE,
UPPER AND SOLE PERIPHERY OF A SPRING SHOE, as shown and
described. We are uncertain, however, as to what portion of
the originally disclosed and claimed “SHOE WITH SPRING”
depicted in the drawings is the now claimed design for the
“SIDE, UPPER AND SOLE PERIPHERY” of a spring shoe. A periphery
is the external boundary or surface of a body, or the outward
bounds of something as distinguished from its internal regions
or center. The original disclosure of this design7
application does not inform us as to what constitutes the
side, upper and sole periphery of the spring shoe. The design
application is designated by appellant as a continuation of
Application Serial No. 08/169,225 (now U.S. Patent No.
5,435,079; copy attached to revised brief). The patent
Appeal No. 97-2313
Application 29/024,479
Appellant calls upon this board to address the appropriateness of the8
present application being labeled a “continuation” (main brief, pages 17, 18
and reply brief, pages 6 and 7). In this case, all of the effective dates of
the applied references predate the filing date of appellant’s parent utility
application Serial No. 08/169225 (U.S. Patent No. 5,435,079 to Gallegos).
Ordinarily, under these circumstances, we would not have any reason to address
the appropriateness of labeling the present application a “continuation”.
However, because of the difficulty we have encountered in understanding the
language of the design claim on appeal, as explained above, we have had to
review the content of the earlier utility application. Having considered the
disclosure of the earlier application, this panel of the board makes the
determination that the label “continuation” is a misnomer relative to the
present design application. Neither of the two embodiments of the design in
the present application, as partially portrayed in respective Figures 1
through 3 and Figures 4 through 6, appear (are disclosed) in the earlier
utility application; lack of descriptive support under 35 U.S.C. 112, first
paragraph. Aesthetically unlike the present design, the design of the
embodiment of Figures 1 and 2 of the Gallegos patent includes, inter alia, the
design appearance of a serrated ground impacting surface 14, a very deep “V”
spacing between the two portions 16, 18 of the sole, an upper spacer 22, and
a stepped hollow portion 28,30. Ornamentally unlike the present design, the
design of the embodiment of Figure 4 of the Gallegos patent includes, inter
alia, the design appearance of a very deep “V” spacing between the two
portions of the sole, an upper spacer, and a stepped hollow portion.
Ornamentally unlike the present design, the design of the embodiment of Figure
4A of the Gallegos patent includes, inter alia, the design appearance of a
serrated ground impacting surface, a spacer 22N, and a ring-shaped spacer 28N.
Simply stated, the present design cannot be found in the earlier utility
patent. Thus, it is clear to us that the present design is not disclosed in
the manner provided by the first paragraph of section 112, an integral part of
35 U.S.C. § 120 (Benefit of earlier filing date in the United States) in that
the earlier application (Serial No. 08/169,225) contains illustrations that
fail to depict the ornamental design illustrated and claimed in this present
and later filed design application. See Racing Strollers Inc. v. TRI
Industries Inc., 878 F.2d 1418, 1420 11 USPQ2d 1300, 1301 (Fed. Cir. 1989).
8
does not instruct as to what constitutes the “SIDE, UPPER AND
SOLE PERIPHERY OF A SPRING SHOE”. In light of the above, we8
are unable to determine what would be the periphery of the
side, upper and sole of spring shoe, the design for which
Appeal No. 97-2313
Application 29/024,479
Appellant submits (reply brief, page 4, footnote 2) that the Gelli9
document would not be a proper basic reference. Declarants Whatley and
Hockerson (declarations in APPENDICES A and B of main brief) each addressed
the Weber patent as a basic reference, indicating in effect that Weber does
9
patent protection is being sought. It would be inappropriate
on our part to speculate as to what is intended to be covered
by appellant’s
design claim. Simply as an example of the indefiniteness issue
surrounding appellant’s design claim, we note that there is no
drawing figure in this design application which is a top view.
Thus, the periphery (external boundary) of the sole, for
example, is indeterminate based upon the showing in Figures 1
through 3 and Figures 4 through 6. It must, of course, be kept
in mind that the addition of views depicting appearances not
originally disclosed, as well as the removal of design
appearances originally disclosed, each raise a description
issue (new matter). Since the design being claimed is
indeterminate, what would constitute an appropriate Rosen
reference under 35 U.S.C.
§ 103 would likewise be indeterminate. See In re Rosen, 673
F.2d 388, 213 USPQ 347 (CCPA 1982). It is for the above9
Appeal No. 97-2313
Application 29/024,479
not show an overall triangular support appearance which looks like the
triangular support appearance of the design application with a conical spring.
However, we note that the Gelli clog design displays an overall triangular
support appearance encompassing the aesthetic form of a helical spring.
10
reasons, that the respective rejections of appellant’s
indefinite design claim under 35 U.S.C. § 103 have been
procedurally reversed.
NEW GROUNDS OF REJECTION
Under the authority of 37 CFR 1.196(b), this panel of the
board introduces the following new grounds of rejection.

35 U.S.C. § 112, first paragraph
The design claim is rejected under 35 U.S.C. § 112, first
paragraph, as lacking descriptive support in the original
disclosure.
As originally filed, a “SHOE WITH SPRING” was described
and shown. The present, amended claim, alters the design for
which patent protection was originally sought to a “PERIPHERY”
design. A design, for example, the originally disclosed
design, is a whole unto itself and is assessed in its
entirety. The “PERIPHERY” design now claimed was not the
originally described and claimed design, but clearly only a
Appeal No. 97-2313
Application 29/024,479
11
“PERIPHERY” portion of the original design.
The test for determining compliance with the written
description requirement of 35 USC § 112, first paragraph, is
whether the disclosure of an application as originally filed
reasonably conveys to an artisan that the inventor had
possession
at that time of the later claimed subject matter. See Vas-Cath
Inc. v. Mahurkar, 935 F.2d 1555, 1562-63, 19 USPQ2d 1111, 1116
(Fed. Cir. 1991) and In re Kaslow, 707 F.2d 1366, 1375, 217
USPQ 1089, 1096 (Fed. Cir. 1983).
The now claimed “PERIPHERY” design, a design different
from the originally disclosed and claimed design, is
appropriately determined to lack descriptive support in the
original disclosure. In our opinion, the original design
application disclosure reasonably conveyed to a designer a
shoe with spring design, as a whole, not a “PERIPHERY” design
portion thereof.
35 U.S.C. § 112, second paragraph
The design claim is also rejected under 35 U.S.C. § 112,
Appeal No. 97-2313
Application 29/024,479
12
second paragraph, as being indefinite.
We determine that the metes and bounds of the claimed
design are indeterminate. As earlier articulated, supra, the
depicted design, as originally filed, was expressly set forth
as portraying a “SHOE WITH SPRING, i.e., the entirety of a
shoe’s appearance as depicted in the drawing. Accordingly, the
now claimed “PERIPHERY” design of a spring shoe is ambiguous
in
meaning when considered with the depiction in the original
drawing, as explained earlier in this opinion, the content of
which discussion is incorporated herein. For the reason that
we cannot fairly ascertain the design now being claimed, the
design
claim on appeal is appropriately determined to be indefinite
under 35 U.S.C. § 112, second paragraph.
In summary, this panel of the board has:
reversed the rejection of the design claim under 35
U.S.C.
§ 103 as being unpatentable over Weber in view of Miller,
Appeal No. 97-2313
Application 29/024,479
13
Loederer, and Sink; and
reversed the rejection of the design claim under 35
U.S.C. § 103 as being unpatentable over Weber in view of
Gelli and Sink.
Additionally, we have introduced new grounds of rejection
under 37 CFR 1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the 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
Appeal No. 97-2313
Application 29/024,479
14
rejection to avoid termination of proceedings (§ 1.197(c)) as
to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)
REVERSED
37 CFR 1.196(b)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ADRIENE LEPIANE HANLON )
Administrative Patent Judge )
Appeal No. 97-2313
Application 29/024,479
15
Appeal No. 97-2313
Application 29/024,479
16
Oliff and Berridge
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