Ex Parte Bathum

Patent Trial and Appeal Board

Nov 7, 2016

11829848 (P.T.A.B. Nov. 7, 2016)

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