Ex Parte Hauglin et al

Patent Trial and Appeal Board

Jun 2, 2017

11813610 (P.T.A.B. Jun. 2, 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.
11/813,610 08/21/2007 Bernt-Otto Hauglin MEISS77.008APC 4847
20995 7590 06/06/2017
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
VANAMAN, FRANK BENNETT
ART UNIT PAPER NUMBER
3618
NOTIFICATION DATE DELIVERY MODE
06/06/2017 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):
jayna.cartee@knobbe.com
efiling @ knobbe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNT-OTTO HAUGLIN, ROBERT TOMTER, and
GUNNAR BJERTNAES
Appeal 2015-002014
Application 11/813,6101
Technology Center 3600
Before JAMES P. CALVE, LISA M. GUIJT, and BRADLEY B. BAYAT,
Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the decision
rejecting claims 1, 9—11, and 13 under 35 U.S.C. §103(a) as being
unpatentable over Szafranski2 and Rousset.3 Claims 2—8, 12, 14, and 15 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b). Appellants’
representative appeared for oral hearing on May 15, 2017.
1 Appellants identify “Rottefella AS” as the real party in interest. Appeal
Brief 3 (“Br.,” filed July 8, 2014). We note USPTO assignment records also
include “MADSHUS AS” as a joint assignee. See Reel/Frame 019729/0979
(recorded Aug. 21, 2007).
2 Szafranski et al., US 5,338,051, issued Aug. 16, 1994.
3 Rousset et al., US 5,114,172, issued May 19, 1992.
Appeal 2015-002014
Application 11/813,610
CLAIMED INVENTION
The claimed invention relates to a ski or similar device for sliding on
snow having a mounting plate bonded to the top face of the ski. Spec. 1.
Claim 1, the sole independent claim, is reproduced below.
1. A device for sliding on snow, comprising:
[(a)] a ski having a top face;
[(b)] a mounting plate secured to the top face of the ski;
[(c)] wherein the mounting plate is made of plastic
material, said mounting plate comprising one or
more elements that are configured to associate
with a binding or parts thereof,
[(d)] wherein the mounting plate comprises two
longitudinal edges and a central base portion, the
edges being raised relative to the central portion so
that they define an undercut longitudinal guide for
the binding or a binding plate;
[(e)] wherein the mounting plate is thin and flexible
relative to the ski and is bonded with a thinner4
layer of adhesive over essentially its entire bottom
surface directly onto the top face of the ski without
screws and with essentially no intervening
materials other than the adhesive in such a manner
that it effectively defines a structural unit
therewith; and
[(f)] wherein the modulus of elasticity “E” of
essentially all parts of the mounting plate are
appreciably lower than that of the ski, the modulus
of elasticity “E” of essentially all parts of the
mounting plate being approximately from 500 to
2000 MPa, and the modulus of elasticity “E” of the
ski being approximately from 10 to 60 GPa.
Br. 17, Claims App. (formatting, bracketed matter, and emphasis added).
4 We interpret this claim term to mean “a layer of adhesive thinner than the
mounting plate ...”
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Application 11/813,610
ANALYSIS
Independent claim 1 requires, in relevant part, “wherein the mounting
plate ... is bonded with a thinner layer of adhesive over essentially its entire
bottom surface directly onto the top face of the ski. . . with essentially no
intervening materials other than the adhesive in such a manner that it
effectively defines a structural unit therewith”. See claim 1 limitation (e)
supra.
In rejecting limitation (e), the Examiner found that Szafranski
discloses:
a mounting plate [2] being bonded to the ski [1] via vibrational
welding with a thinner layer of adhesive (material 22) which
extends between the ski and mounting plate for essentially the
entire area of the plate; there being no screws and 'essentially
no other intervening materials' other than the adhesive material
(22 - note that element 21 is destroyed removed or displaced
such that it is not present at the locations where 1 and 2 are
connected) such that the plate may define a structural unit with
the ski.
Non-Final Act. 3^4 (citing Szafranski, Fig. 8).
Appellants submit that although “[t]he art of record admittedly treats
gluing, bonding, and welding as equivalent means for securing certain parts
of a ski. . . Szafranski is silent with respect to any adhesive layer.” Br. 7. In
particular, Appellants argue “that a person of skill in the art would
understand, after reading the claims and the specification, that a ‘layer of
adhesive’ recited by Claim 1 would require a layer of glue, paste, etc ...
between the mounting plate and the top surface of the ski.” Id. at 9. As
such, Appellants conclude that neither Szafranski nor Rousset “disclose[s] ‘a
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Application 11/813,610
thinner layer of adhesive over essentially its entire bottom surface directly
onto the top face of the ski’ as required by Claim 1Id. at 11.
In response to Appellants’ argument, the Examiner asserts:
As regards the adhesive layer, initially Szafranski et al.
teach the explicit provision of a compatible adhesive material
(material 22, as described in Szafranski at col. 6, lines 56-63;
Szafranski et al. further explain the compatibility needed for such
a material in the description of an earlier embodiment, see, for
example, at col. 4, lines 19-39) which is fused with the binding
mount plate. In this case, the element 22 is indeed positively
adhered to the binding mount plate, and also to the ski, and as
such, it performs as an adhesive to the breadth this limitation is
actually recited in the claims, that is to say, it tends to adhere or
cause an adherence. As was mentioned previously by the
examiner, adherence in this context is commonly understood to
refer to a holding or sticking by, or as if by, one or more of
gluing, suction, grasping or fusing (see the Final Office action of
Aug. 28, 2012, page 5 of the action). Appellant’s claims do not
provide a recitation which precludes the application of this
definition to the layer 22 as taught by Szafranski et al.
Ans. 4—5.
Appellants’ arguments are persuasive.
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, [ ] and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Bond, 910 F.2d 831,
833 (Fed. Cir. 1990) (internal citation and quotations omitted). This means
that the words of the claim must be given their plain meaning unless the
plain meaning is inconsistent with the specification. In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989). Here, the ordinary and customary meaning of the
term “adhesive” is “[a] substance used for sticking objects or materials
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Appeal 2015-002014
Application 11/813,610
together; glue.”5 Thus, the claim requires that the mounting plate is bonded
directly onto the top face of the ski with a thinner layer of a substance used
for sticking objects (e.g., glue) over essentially the entire bottom surface of
the mounting plate. The claim further defines this direct connection between
the mounting plate and the top face of the ski by specifying that there are
“essentially no intervening materials other than the adhesive.” We find that
this interpretation is consistent with Appellants’ position, supra, and the
Specification in describing the connection between the mounting plate and
top face of the ski. See Spec. 7 (“a uniformly thin distribution of adhesive
between mounting plate 12 and ski top-face is achieved, which ensures an
extremely high degree of bonding between those two components”).
In light of this interpretation of the claimed term “adhesive,” we
determine that one of ordinary skill in the art would not understand insert 22
of Szafranski as being a layer of adhesive, as recited in claim 1. Szaffanski
describes a process of attaching a slide plate (mounting plate) to the upper
surface of a ski by vibrational welding, to provide a secure connection
between the slide plate and the ski without the use of screws that enables
superior flexion characteristic of the ski. Szafranski, Abstract. Szafranski
discloses that slide 2 is formed of a thermofusible material, with its
horizontal surface 2a constituting the attachment layer with the ski 1. Id. at
3:42-45. Ski 1 comprises a core 3 with a reinforcement layer 3a, which is
itself covered with a layer 4 made of thermofusible material that can coat the
entire upper horizontal surface of ski 1, by constituting a linkage layer 4a (or
5 https://en.oxforddictionaries.com/defmition/us/adhesive (last visited May
24, 2017).
5
Appeal 2015-002014
Application 11/813,610
insert 22 as described in Szafranski’s Figure 8 embodiment). Id. at 3:30-40;
6:57—59. To achieve Szafranski’s assembly of ski 1 and slide 2, the slide is
placed on the surface of ski 1 in a manner such that the two thermofusible
attachment layers 2a and 4a are in contact with one another. Id. at 3:66-4:2.
“The two layers of heat-meltable material in contact with one another are
heated in a manner so as to bring them to a temperature above the melting
point of the thermofusible material of each layer in contact, while applying
under pressure” the ski and the slide against one another, fusing the two
layers so as to form only a single homogenous layer. Id. at 1:67—2:22. As
such, an artisan would not understand attachment layers 4a and 22 as being a
substance for sticking objects together, as required in claim 1. In other
words, Szaffanski’s thermofusible material 22 (i.e., a polyamide) is not
described as a substance used for sticking objects together, like glue.
Accordingly, the Examiner’s interpretation of the claimed layer of
“adhesive” as corresponding to Szaffanski’s insert 22 is unreasonable in
view of the plain and ordinary meaning of the term “adhesive” as would be
understood by persons of ordinary skill in the art in view of Appellants’
Specification.
Furthermore, the Examiner’s assertion that “element 22 is indeed
positively adhered to the binding mount plate, and also to the ski, and as
such, it performs as an adhesive to the breadth this limitation [a]s actually
recited in the claims, that is to say, it tends to adhere or cause an adherence”
(Ans. 4), fails to account for the limitation at hand. Limitation (e) requires a
thinner layer of adhesive over essentially the entire bottom surface of the
mounting plate. The Examiner has not accounted for the structural
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Application 11/813,610
relationship between the claimed adhesive element and the bottom surface of
the mounting plate; there is no corresponding finding in the rejection. See
Non-Final Act. 3. Moreover, although Rousset teaches that a mounting plate
(part 10) may be attached to a ski by gluing (Rousset 3:55—58), Rousset fails
to disclose a layer of adhesive over essentially the entire bottom surface of
the mounting plate, as required by claim 1. The Examiner has the initial
duty of supplying the factual basis for supporting a rejection, without
“resort[ing] to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies” in the cited reference. In re Warner,
379 F.2d 1011, 1017 (CCPA 1967).
Accordingly, we do not sustain the rejection of independent claim 1.
For the same reasons, we do not sustain the rejection of claims 9—11 and 13
dependent thereon. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
(“dependent claims are nonobvious if the independent claims from which
they depend are nonobvious”).
DECISION
The decision of the Examiner to reject claims 1, 9—11, and 13 is
reversed.
REVERSED
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