Ex Parte Henkel

Patent Trial and Appeal Board

Oct 31, 2018

13880555 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/880,555 04/19/2013
24222 7590 11/02/2018
Maine Cernota & Rardin
547 Amherst Street
3rd Floor
Nashua, NH 03063
FIRST NAMED INVENTOR
Heidi Henkel
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.
HENKOOl-US_DPB 2457
EXAMINER
MOHANDESI, JILA M
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
patents@mcr-ip.com
dwitmer@mcr-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEIDI HENKEL 1
Appeal2018-006264
Application 13/880,555
Technology Center 3700
Before CHARLES N. GREENHUT, ERIC C. JESCHKE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
2, 6-12, 17, 18, 20, 22, 23, 27, 33-36, 41, 43, 44, 50, and 52-54. 2 We have
jurisdiction under 35 U.S.C. § 6(b ). In a prior appeal (2016-004635), we
reversed the Examiner's rejections and entered new grounds of rejection.
We reverse the rejections presently before us.
1 Appellant is the applicant, Ms. Heidi Henkel, which the Appeal Brief
identifies as the real party in interest. App. Br. 3.
2 The Examiner withdrew the only rejection of claim 51. Ans. 2.
Appeal2018-006264
Application 13/880,555
CLAIMED SUBJECT MATTER
The claims are directed to a flexible and precisely fitting ski boot for
maximum efficiency and foot and leg health during Nordic skiing. Claims 1,
43, and 50, reproduced below, are the independent claims before us:
1. A cross country ski boot comprising:
a cross country ski boot having a sole, the cross country
ski boot being configured for attachment at a toe area of the boot
to a cross country ski by a cross country ski binding, the cross
country ski boot being sufficiently flexible to accommodate
cross country skiing leg and foot movements by allowing a user
to raise a heel of the cross country ski boot off of the cross
country ski when the toe area is attached to the cross country ski
binding;
a customizable ball attachment mechanism incorporated
into the cross country ski boot, the customizable ball attachment
mechanism including a first band extending over the ball region
of the boot from left and right attachments to the sole, said ball
attachment mechanism being capable of maintaining firm and
customizable contact between the ball of a user's foot and a ball
region of the sole; and
a customizable heel attachment mechanism incorporated
into the cross country ski boot, the customizable heel attachment
mechanism including at least one of a second band extending
over an arch region of the boot from left and right attachments to
the sole, an inflatable pocket, and a moldable interior material,
said heel attachment mechanism being capable of maintaining
firm and customizable contact of a user's heel with a heel region
of the sole.
43. A cross country ski boot comprising:
a cross country ski boot having a sole, the cross country
ski boot being configured for attachment at a toe area of the boot
to a cross country ski by a cross country ski binding, the cross
country ski boot being sufficiently flexible to accommodate
cross country skiing leg and foot movements by allowing a user
to raise a heel of the cross country ski boot off of the cross
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Application 13/880,555
country ski when the toe area is attached to the cross country ski
binding;
a cuff adapted to be attached to the user's lower leg;
a rigid outer shell attached to sides of the heel of the cross
country ski boot, a distance between the cuff and the rigid outer
shell being variable during eversion and inversion; and
adjustable means for limiting an eversion and inversion
angle by limiting the variation of the distance between the cuff
and the rigid outer shell during eversion and inversion to a
defined range, thereby allowing full plantar flexion of the cross
country ski boot and a determined range of motion of
dorsiflexion of the boot, while limiting foot eversion and
inversion to defined ranges.
50. A sole for a cross country ski boot, said sole being twistable
and vertically flexible, while preventing side-to-side lateral
bending thereof.
REJECTIONS
1. Claim 50 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite. 3
2. Claims 1, 2, 10-12, 17, 18, 20, 33, 52, and 53 are rejected under
35 U.S.C. § 102(b) as being anticipated by Boggs (US 4,788,780,
issued Dec. 6, 1988).
3. Claims 1, 2, 6, 7, 10-12, 17, 18, 20, 27, 33, 41, 43, 44, 50, and 52-
54 are rejected under 35 U.S.C. § 102(b) as being anticipated by
Johnson (US 6,082,768, issued July 4, 2000).
4. Claims 27, 43, 44, and 54 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Rullier (US 5,177,884, issued Jan. 12, 1993).
3 The Examiner withdrew the § 112 rejection of claim 51. Ans. 2.
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Application 13/880,555
5. Claim 50 is rejected under 35 U.S.C. § 102(b) as being anticipated
by Salzman (US 4,186,500, issued Feb. 5, 1980).
6. Claims 27, 43, 44, and 54 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Lazzaroni (US 6,098,317, issued Aug. 8,
2000).
7. Claim 50 is rejected under 35 U.S.C. § 102(b) as being anticipated
by Salomon (US 4,487,427, issued Dec. 11, 1984).
8. Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over either Boggs or Johnson in view of Sisco (US 4,724,627,
issued Feb. 16, 1988).
9. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over either Boggs or Johnson4 in view of Meyer (US 4,756,096,
issued July 12, 1988).
10. Claim 22 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over either Boggs or Johnson in view of Hauglin
(US 5,897,127, issued Apr. 27, 1999).
11. Claim 36 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over either Boggs or Johnson in view of Heierling
(US 7,231,729 B2, issued June 19, 2007).
4 The Examiner indicated this rejection of claim 8 was based on "either of
Salzman [sic]" and referred to "Salzman as described above .... " Final Act.
15. However, Salzman was never relied on in the Office Action prior to the
rejection of claim 8 to reject parent claim 1. The Examiner may have
intended to refer to "either Boggs or Johnson" as were previously relied
upon in the Office Action to reject claim 1. Alternatively, the Examiner may
have intended to refer to the combination of Salzman and Johnson
subsequently relied on in the Office Action to reject claim 1. As independent
claims are usually treated prior to their dependents, it seems more likely that
the Examiner intended to refer to Boggs or Johnson.
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Application 13/880,555
12. Claims 1, 34, and 35 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Salzman and Johnson.
13. Claim 23 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Salzman, Johnson, and Broughton
(US 5,518,264, issued May 21, 1996).
OPINION
Effect of the prior appeal
Appellant cites MPEP § 1214.01 to argue that the Examiner should
not have reopened prosecution as to the claims not subject to our new
grounds of rejection in the prior appeal. App. Br. 14 ( quoting MPEP
§ 1214.01 (I) ("The new ground of rejection raised by the Board does not
reopen prosecution except as to that subject matter to which the new
rejection was applied.")). The sentence in the MPEP immediately following
the sentence quoted by Appellant seems to indicate that, when considered in
context, the sentence quoted by Appellant refers to Appellant's right to
reopen prosecution in order to overcome affirmed rejections: "If the Board's
decision in which the rejection under 37 CPR 4I.50(b) was made includes an
affirmance of the examiner's rejection, the basis of the affirmed rejection is
not open to further prosecution." 5 Appellant does not identify, and we do
not find, any subsection of MPEP § 1214 that directly addresses the
procedure following the particular outcome of the prior appeal in this case,
where all rejections were reversed and we entered new grounds of rejection
against some of the claims. Where all rejections are reversed in an appeal, as
5 It is further noted that the title of section I, which includes the quoted
sentence, is "Submission of Amendment or New Evidence," which clearly
refers to actions by an appellant.
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was the situation with the prior appeal, examiners typically have the
discretion to reopen prosecution. See, e.g., MPEP § 1214.04; 37 C.F.R. §
1.198. MPEP § 1214.01 does not evince any intent to limit this discretion
because the Board included new grounds of rejection in its decision. If there
is an abuse of the examiner's discretion or a failure to follow the procedures
associated with the reopening of prosecution after an appeal, remedy must
be sought by way of petition under 3 7 C.F .R. § 1.181, not by appeal to the
Board. To the extent Appellant is arguing the contrary, the weight of
authority is that anything along the lines of res judicata is generally
inapplicable against a PTO Examiner in an ex parte proceeding. See, e.g., In
re Oelrich, 666 F.2d 578, 580 n. 2 (CCPA 1981). This is because "the public
interest in granting valid patents" (id.) would be frustrated were the PTO
compelled to issue patents that do not satisfy the statutory requirements. For
this reason, an examiner is not precluded from reopening prosecution to
reconsider issues related to patentability after a board or court decision. See
In re Ruschig, 379 F.2d 990, 992-93 (CCPA 1967); In re Fisher, 448 F.2d
1406, 1407 ( CCP A 1971) ("As we have often pointed out, we pass only on
rejections actually made and do not decree the issuance of patents. After our
decision in an ex parte patent case, the Patent Office can always reopen
prosecution and cite new references, in which limited sense our mandates
amount to remands."); In re Voss, 557 F.2d 812, 816 n.11 (CCPA 1977)
("[R ]eversal is not a mandate to the PTO to issue a patent and does not
preclude the PTO from reopening prosecution"); Ex Parte Frye, 94 USPQ2d
1072, 1077 (BPAI 2010) (precedential) ("The Board does not 'allow' claims
of an application and cannot direct an examiner to pass an application to
issuance.").
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Indefiniteness of claim 5 0
In rejecting claim 50 under 35 U.S.C. § 112, second paragraph, for
being indefinite, the Examiner states:
The sole by itself is not capable of preventing side-to-side lateral
bending. The combination of the sole being attached to a boot
and the bottom surface of the sole having a feature that is
compatible with a boot binding system ... allows the sole to be
twistable and vertically flexible, while preventing side-to-side
lateral bending thereof.
Final Act. 4.
The Examiner does not explain how the alleged discrepancy between
the claims and the disclosure renders the scope of subject matter embraced
by a claim unclear. The issues raised by the Examiner relate more to the
adequacy of a disclosure that supports the subject matter of claim 50 than to
indefiniteness. MPEP § 2174 (discussing In re Borkowski, 422 F.2d 904
(CCPA 1970)). Further, the rejection is predicated on the Examiner's
misunderstanding of Appellant's disclosure. As Appellant correctly argues
(App. Br. 14 (citing Figs. 19A---C and Spec. paras. 145, 146)), it is the design
of the sole itself that is "twistable and vertically flexible, while preventing
side-to-side lateral bending thereof." Contrary to the Examiner's finding,
Appellant has disclosed at least one embodiment falling within the scope of
claim 50 and we do not agree that claim 50, read in light of the
Specification, presents any issues of claim clarity or indefiniteness for the
reasons set forth by the Examiner. Claim 50 may be broad, but breadth is not
indefiniteness. MPEP § 2173 .04. The adequacy of the disclosure insofar as
supporting the full scope of claim 50 under§ 112, first paragraph, is not a
question presented for our review in this appeal. See id.
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Accordingly, we reverse the Examiner's rejection of claim 50 under
§ 112, second paragraph (rejection 1), as being indefinite.
The "cross country ski boot" of claim 1 in Boggs or Johnson
The Examiner takes the position that "Boggs clearly discloses a cross-
country ski boot/over boot" and "Johnson clearly discloses a cross-country
ski boot/foot supporting enclosure." Ans. 3. Although the terminology used
by the prior art is not necessarily controlling in an anticipation analysis
because anticipation is not an ipsissimis verb is test, the PTO' s broadest
reasonable interpretation of claim terms must be consistent with the
interpretation that those skilled in the art would reach. In re Cortright, 165
F.3d 1353, 1358 (Fed. Cir. 1999). As the Court of Appeals for the Federal
Circuit explained:
Prior art references may be "indicative of what all those skilled
in the art generally believe a certain term means ... [and] can
often help to demonstrate how a disputed term is used by those
skilled in the art." Accordingly, the PTO's interpretation of claim
terms should not be so broad that it conflicts with the meaning
given to identical terms in other patents from analogous art.
Id. (Citations omitted). Here, both Boggs and Johnson expressly contrast
their inventions with cross-country ski boots. App. Br. 16, 18. For example,
Boggs states, "there are times when people want to engage in cross count[ r ]y
skiing or snowshoeing without having to purchase or rent the specialized
boots" (col. 1, 11. 22-25) and Johnson states, "[u]se [of roller skis] by non-
skiers has been further limited by their reluctance to purchase cross-country
boots and bindings" (col. 1, 11. 18-20). Thus, both Boggs and Johnson were
aware of the term "cross country ski boot" and chose to contrast their
inventions with cross-country ski boots as opposed to referring to them as
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such. The Examiner does not provide persuasive evidence or reasoning to
demonstrate that one skilled in the art, when construing Appellant's claims,
would have a different understanding of the term "cross country ski boot"
than is evinced by the cited prior art. The weight of evidence before us
strongly favors Appellant's position that the skilled artisan would not regard
the devices of Boggs or Johnson as "cross country ski boot[ s ]," thereby
defeating the Examiner's anticipation rejections on Boggs and Johnson
(rejections 2 and 3) as well as the rejections predicated on obviousness but
relying on the same erroneous claim construction (rejections 8-11 ).
The "adjustable means for limiting an eversion and inversion" of claim 43
in Rullier or Lazzaroni
In the prior appeal we held the above-quoted limitation of claim 43
invoked §-112-paragraph-six and "the Examiner's rejection cannot be
sustained because the Examiner has not found the same structure disclosed
in Appellant's Specification, or a §-112-paragraph-six equivalent." Opinion
at 8 (citing In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en
bane)). The Examiner's rejections of claim 43 predicated on Rullier or
Lazzaroni suffer from the same flaw. Clearly, neither the hole 12b and pin
19 of Rullier (Final Act. 10), nor the rib 10 and groove 22 of Lazzaroni
(Final Act. 12), are the same as the structure depicted in Appellant's Figure
12 and described at paragraph 135 of Appellant's Specification. App. Br. 26,
29. The Examiner has not set forth sufficient analysis-following the
procedures in MPEP §§ 2181-83-to demonstrate §-112 equivalence. For
these reasons, rejections 4 and 6 cannot be sustained.
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A "sole being twistable and vertically flexible, while preventing side-to-side
lateral bending thereof," according to claim 5 0, in Salzman or Salomon
In the prior appeal, we held that "the recited limitations [ of claim 50]
may amount to latent characteristics" and that "it is the Examiner's burden
to establish with evidence or technical reasoning a sound basis for believing
the prior art necessarily contains those characteristics." Opinion at 9 (citing
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)). With regard to Salzman,
the Examiner has again failed to carry that burden. The findings made on
pages 11-12 of the Final Office action are not grounded in any factual basis.
The Examiner does not point to sufficient evidence to reasonably conclude
that the Salzman sole would necessarily exhibit the properties recited in
claim 50. App. Br. 27. The only expressly stated characteristic of Salzman's
sole relevant to the properties recited is that the sole exhibits "torsional
rigidity." Col. 1, 11. 49-50. The Examiner does not explain why this would
not be regarded as the opposite of "twistable" as required by claim 50. App.
Br. 27. The Examiner also points to the figures to assert that thinness near
area 31 makes it flexible. Final Act. 11. It is not clear precisely which
limitation the Examiner is attempting to address with this reasoning,
twistability or vertical flexibility. In either case, enough information is not
provided based on the drawings alone to reach such a conclusion. The
requirements for rejections based on allegedly inherent characteristics of the
prior-art are detailed in MPEP § 2112. The Examiner's rejection predicated
on Salzman does not meet the Examiner's burden associated with such
rejections.
The Examiner's rejection of claim 50 based on Salomon does not
adequately address the precise language of claim 50. See Final Act. 13-14.
Although not entirely clear based on the Examiner's Answer, the Examiner
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appears to rely on elements other than the sole to provide the functionality
claim 50 attributes to the sole. See Ans. 6-7 (disagreeing with Appellant's
assertion that "the Examiner has disputed and/or ignored the obvious
requirement that the limitations recited in the claim apply to the properties of
a sole considered separately, and not to some other combination of elements
considered as a whole" because "due to the comprising language, other
elements are not excluded by claim 50"). As best as we can ascertain from
these rejections of claim 50, in which it is not clear precisely what aspects of
the prior art are relied upon to satisfy the various limitations of the claim, the
Examiner is of the opinion that part 6 in Salomon can perform the recited
function of "preventing side-to-side lateral bending" to meet the claim. This
appears to stem from a misreading of claim 50. Claim 50 does not recite, for
example, that side-to-side lateral bending of the sole is prevented, leaving
open-ended the structure that may perform that prevention. Rather, claim 50
expressly requires the sole be responsible for preventing side-to-side lateral
bending. The allowance of additional elements due to the open-ended nature
of the claim does not undo this required attribute of the sole itself. The
Examiner has not demonstrated how claim 50 is satisfied by Salomon.
For the foregoing reasons, we do not sustain rejections 5 and 7.
The combination of Salzman and Johnson in rejections 12 and 13
Salzman discloses a basic conventional lace-up cross-country ski boot
without any of the customizable attachment mechanisms recited in claim 1.
The fact that molding may be used in the manufacturing process of Salzman
(Final Act. 17-18) does not make Salzman's boot customizable with respect
to the user as indicated in claim 1. Claim 1 refers to customization with
regard to "a user's foot [and heel]." This provides the ability to adjust fit
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based on each user-something not contemplated by Salzman' s use of a
molded sole for the manufacturing process. App. Br. 36-37. End-user
customized molding is something Appellant's Specification indicates is an
art-recognized term that does not refer to simply any molding procedure that
might occur during the manufacturing process. See Spec. paras. 27-28.
Furthermore, Johnson's bands are not connected to any boot, as discussed
above.
Although the Examiner has shown by citation to Johnson and Salzman
that the individual elements that could be used to piece together Appellant's
invention may have been known in the prior art, we are not apprised of
sufficient reasons supported by rational underpinnings to incorporate
Johnson's elements into Salzman apart from reconstructing the claimed
subject matter. KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007) ("a
patent composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art"). Johnson expressly discourages incorporation into conventional
boots in the passage quoted above. It is not clear why Salzman' s design
would benefit from adding bands of the type described by Johnson. The
Examiner's stated reason for the proposed combination is "to better maintain
firm and customizable contact between the ball of a user's foot and a ball
region of the sole." Final Act. 19. This reasoning appears to be extracted
directly from Appellant's own Specification and claims. To draw on
hindsight knowledge of the patented invention, when the prior art or the
level of skill in the art does not contain or suggest that knowledge, is to use
the invention as a template for its own reconstruction-an illogical and
inappropriate process by which to determine patentability. Sensonics Inc. v.
Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996). Additionally, the
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Examiner's reasoning does not explain any advantages over the lace
structure already used by Salzman or why Salzman' s design would
otherwise benefit from the addition of Johnson's bands, which would
seemingly be very cumbersome to incorporate. App. Br. 37. The Examiner's
reasoning also does not explain why Johnson's attachment mechanisms
should be modified to attach the foot to the sole of the shoe in particular, as
opposed to being used according to Johnson to attach the foot to the ski
itself. App. Br. 36. Accordingly, for the foregoing reasons, we do not sustain
the Examiner's rejections (rejections 12 and 13) based on the combination of
Salzman and Johnson, with or without Broughton, which is not relied on by
the Examiner to cure any of the aforementioned deficiencies.
DECISION
The Examiner's rejections are reversed.
REVERSED
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