Ex Parte BathumDownload PDFPatent Trial and Appeal BoardNov 7, 201611829848 (P.T.A.B. Nov. 7, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111829,848 07/27/2007 Dale Bathum 23483 7590 11/09/2016 WILMERHALE/BOSTON 60 STATE STREET BOSTON, MA 02109 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. 2200929.00376 USl 1865 EXAMINER PRANGE, SHARON M ART UNIT PAPER NUMBER 3765 NOTIFICATION DATE DELIVERY MODE 11/09/2016 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): whipusptopairs@wilmerhale.com teresa.maia@wilmerhale.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DALE BATRUM Appeal2014-007437 Application 11/829,848 Technology Center 3700 Before MICHAEL L. HOELTER, THOMAS F. SMEGAL, and PAUL J. KORNICZKY, Administrative Patent Judges. KORNICZKY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellant 1 appeals under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-5, 7-12, 14, and 17-34.2 We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. Appellant identifies Ra Footwear, LLC as the real party in interest. Appeal Br. 2. 2 Claims 6, 13, 15, and 16 are cancelled. Appeal Br. 12-17 (Claims App.). Appeal2014-007437 Application 11/829,848 THE CLAIMED SUBJECT MATTER The claims are directed to "footwear and, more particularly, toward shoes with side panels including decorative elements." Spec. i-fl. Claims 1, 8, and 18 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A shoe assembly, comprising: a sole assembly; an upper coupled to the sole assembly, the upper including a first panel; and a hand gesture element on the first panel, the hand gesture element including at least three simulated digits of a hand, wherein at least one of the at least three simulated digits is in a simulated position other than a fully extended position. REFERENCES In rejecting the claims on appeal, the Examiner relied upon the following prior art: Hard Winters Hatfield Nguyen US Dl64,235 US D341,474 us 5,377,430 US D451,664 S REJECTIONS The Examiner made the following rejections: June 29, 1950 Nov. 23, 1993 Jan.3, 1995 Dec. 11, 2001 1. Claims 1, 5, 8, 12, and 18-22 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Hard. 2. Claims 1, 2, 4, 5, 7-9, 11, 12, 14, 17-29, and 31-34 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Hatfield. 2 Appeal2014-007437 Application 11/829,848 3. Claims 1, 4, and 30-32 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nguyen. 4. Claims 2, 3, 9, 10, and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hard and Winters. Appellant seeks our review of these rejections. ANALYSIS The Rejection of Claims 1, 5, 8, 12, and 18-22 As Anticipated By Hard Appellant argues claims 1, 5, 8, 12, and 18-22 as a group. Appeal Br. 4--6. We select claim 1 as the representative claim, and claims 5, 8, 12, and 18-22 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). In response to the Examiner's finding that Hard discloses all of the limitations of claim 1, Appellant argues that, according to the Specification, "hand gesture elements 'are expressive of an idea, phrase, symbol, opinion, emotion .... "' Appeal Br. 4 (citing to Spec., p. 4:11-12). Appellant continues that the "recited hand gesture element is not simply an arbitrary image of a hand, but is instead a hand element arranged to communicate a particular message to those who view it. In contrast, Hard portrays an image of a cowboy holding a pair of guns in his hands." Id. (footnote omitted, emphasis added). According to Appellant, Hard's "hands are not configured to communicate any particular message. Instead, those hands simply grip the handles of the guns as part of the cowboy image, and are fully occupied with that task." Id. at 4--5 (emphasis added). In response, the Examiner states "the meaning of the image of a hand is a matter of personal interpretation, and so the images of hands seen in Hard ... may be considered as gesture elements operating to communicate." Final Act. 6. 3 Appeal2014-007437 Application 11/829,848 The Specification's definition of "hand gesture element," however, is broader than merely communicating a message, as asserted by Appellant. According to Appellant's Specification, the hand gesture element may also express an idea or an emotion. The definition of an "idea" is ( 1) "something that you imagine or picture in your mind," or "a visible representation of a conception: a replica of a pattern" (Merriam-Webster Dictionary, http://www.merriam-webster.com/dictionary/idea, last visited November 2, 2016), or (2) "a mental representation of something" (Free Dictionary, http://www.thefreedictionary.com/idea, last visited November 2, 2016). The definition of an "emotion" is "any strong feeling, as of joy, sorrow, or fear." (Free Dictionary, http://www.thefreedictionary.com/emotion, last visited November 2, 2016.) Here, Hard's gloved cowboy is a whimsical image expressing the idea of a smiling young cowboy waiving a pair of pistols in his hands. In view of the Specification's and Appellant's broad construction of "hand gesture element," a person of ordinary skill in the art would understand that Hard discloses a hand gesture element (e.g., idea, emotion) as recited in claim 1. Appellant also argues that the Examiner "engages in 'hindsight reasoning' that stretches Hard to cover concepts that one of ordinary skill simply would not have recognized from Hard." Reply Br. 2-3. Appellant asserts that "putting aside the fact that (if anything) it is the gun [in Hard] that conveys any intention to shoot and not the hands, the Answer relies on hindsight to attach some communicative meaning to the configuration of those hands in order to find the recited 'hand gesture element."' Id. Appellant, however, does not identify any knowledge relied upon by the Examiner that was gleaned only from Appellant's disclosure and that was 4 Appeal2014-007437 Application 11/829,848 not otherwise within the level of ordinary skill in the art at the time of the invention, thereby obviating Appellant's assertion of hindsight. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Appellant's arguments do not show error by the Examiner. Thus, the rejection of claim 1 is sustained, and claims 5, 8, 12, and 18-22 fall with claim 1. The Rejection of Claims 1, 2, 4, 5, 7-9, 11, 12, 14, 17-29, and 31-34 As Anticipated By Haifield In finding that Hatfield discloses all of the limitations of claims 1, 2, 4, 5, 7-9, 11, 12, 14, 17-29, and 31-34, the Examiner explains that Hatfield's straps 56 represent four simulated fingers of a hand and strap 118 represents a simulated thumb. Final Act. 3. We agree with Appellant that these "'elongated shapes' are simply unrecognizable as fingers of a hand, let alone the recited hand gesture element." Appeal Br. 6. Thus, we cannot sustain the rejection of claims 1, 2, 4, 5, 7-9, 11, 12, 14, 17-29, and 31-34 as anticipated by Hatfield. The Rejection of Claims 1, 4, and 30-32 As Unpatentable Over Nguyen Claim 1, 4, and 30-32 recite, in part, that one of the "three simulated digits is in a simulated position other than a fully extended position." The Examiner finds that Nguyen's shoe has a first panel, wherein the "first panel has a hand gesture element (hand element, as seen in Fig. 3). The hand gesture element includes at least three simulated digits of a hand. At least one of the digits is in a simulated position other than fully extended (for example, bottom most digit as seen in Fig. 3, this digit being shorter, 5 Appeal2014-007437 Application 11/829,848 therefore simulating a non-extended position)." Final Act. 4. In response, Appellant correctly argues that "Nguyen portrays a pair of Mickey Mouse hands with all four digits fully extended," Appeal Br. 9 (citing to Nguyen, Figures 3 and 4). Thus, Nguyen does not disclose all of the limitations of the claims, and we cannot sustain the rejections of claims 1, 4, and 30-32 as unpatentable over Nguyen. The Rejection of Claims 2, 3, 9, 10, and 24 As Unpatentable Over Hard and Winters Appellant argues that claims 2, 3, 10, and 24, which depend from independent claims 1 and 8, are patentable because claims 1 and 8 are patentable over Hard, and Winters does not remedy the deficiencies of Hard. Because we disagree with Appellant regarding the applicability of Hard (see supra), and because Appellant does not identify any other patentable features in claim 2, we sustain the Examiner's rejection of claim 2. Further, Appellant does not address the rejection of claim 9, and as such we summarily sustain the rejection of claim 9. Claims 3, 10, and 24 broadly recite a "first hand gesture" that is different from a "second hand gesture." With respect to these claims, Appellant argues that "the rationale provided by the [Examiner] simply does not follow from the disclosure of Hard, even in view of Winters. In particular, both of the cowboy's hands in Hard are in the same configuration (i.e., fingers wrapped around the grip, thumb on opposite side of grip, with the index finger near the trigger), so that duplicating that image would not result in two distinct visual elements." Appeal Br. 11. 6 Appeal2014-007437 Application 11/829,848 In response, the Examiner correctly finds "the left and right hands depicted in Hard are clearly different (a right hand is inherently different than a left hand, they have different orientations, and they are located in different places on the shoe). Therefore, a first (right) hand gesture element would be different than a second (left) hand gesture element." Ans. 6. Thus, Appellant does not identify error by the Examiner, and the rejections of claims 3, 10, and 24 are sustained. DECISION For the above reasons, the Examiner's rejections of claims 1-3, 5, 8- 10, 12, 18-22, and 24 are AFFIRMED. The Examiner's rejections of claims 4, 7, 11, 14, 17, 23, and 25-34 are REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2015). AFFIRMED-IN-PART 7 Copy with citationCopy as parenthetical citation