Ex Parte Bird et al

Patent Trial and Appeal BoardSep 21, 2018

13543677 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/543,677 07/06/2012 125395 7590 09/21/2018 KNOBBE, MARTENS, OLSON & BEAR, LLP Specialized Bicycle Components, Inc. (SPECBIC) 2040 Main Street, Fourteenth Floor Irvine, CA 92614 Carl Darius Bird 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. SPECBIC.335A 8957 EXAMINER LYNCH, MEGAN E ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 09/21/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CARL DARIUS BIRD and ROBERT A.L. COOK Appeal2016-008559 1 Application 13/543,677 Technology Center 3700 Before GEORGE R. HOSKINS, BRADLEY B. BAY AT, and PAUL J. KORNICZKY, Administrative Patent Judges. BAY AT, Administrative Patent Judge. DECISION ON APPEAL Carl D. Bird and Robert A.L. Cook ("Appellants")2 appeal under 35 U.S.C. Â§ 134(a) the decision of the Examiner to reject claims 1--4 and 6- 20 under 35 U.S.C. Â§ 102(b) as anticipated by Schwirian. 3 Appellants waived hearing attendance on August 16, 2018. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Our Decision references Appellants' Appeal Brief ("Br.," filed May 31, 2016), the Examiner's Answer ("Ans.," mailed July 20, 2016), and the Final Office Action ("Final Act.," mailed Jan. 29, 2016). 2 Appellants identify "Specialized Bicycle Components, Inc." as the real party in interest. Br. 3. 3 US 2011/0107622 Al, published May 12, 2011. Appeal2016-008559 Application 13/543,677 STATEMENT OF THE CASE Claimed Subject Matter Appellants' invention "relates generally to the field of cycling footwear, more particularly to a cycling shoe." Spec. ,r 1. Claims 1, 10, and 1 7 are the independent claims on appeal. Claims 1 and 1 7, reproduced below, are illustrative of the subject matter on appeal: 1. A clipless cycling shoe comprising: an upper; and a base plate comprising a medial sidewall, a medial portion, a lateral portion, and a lateral edge, the medial portion having a rigid support structure having a top portion, a bottom portion, a medial side end, and a lateral side end, wherein the top portion and bottom portion merge at the medial side end and at the lateral side end, a cavity is formed between the top portion, the bottom portion, the medial side end, and the lateral side end, wherein the cavity is filled with a core material, the medial portion extending from the lateral portion at the lateral side end to the medial side end, the lateral portion extending outward from the lateral side end of the medial portion to the lateral edge of the base plate, a medial sidewall adjacent the medial portion that extends upward from the medial portion, the medial sidewall extends longitudinally along the portion of the length of the base plate, the medial sidewall extending from the medial side end of the medial portion of the base plate; and wherein a top surface of the base plate is defined by the medial portion and the lateral portion, the top surface of the base plate extending from the medial side end of the medial portion to the lateral edge of the base plate, wherein the top surface is substantially flat, the portion of the top surface defined by the medial portion of the top surface is substantially flat and the portion of the top surface defined by the lateral portion is substantially flat with the exception of a portion of the top surface defined by the lateral edge of the lateral portion that rotates upward, and wherein the medial portion is thicker than the lateral portion. 2 Appeal2016-008559 Application 13/543,677 17. A clip less cycling shoe comprising: an upper; a base plate comprising a medial portion, a lateral portion, and a lateral edge, the medial portion of the base plate has a rigid support structure having a top portion, a bottom portion, a medial side end, and a lateral side end, wherein the top portion and bottom portion merge at the medial side end and at the lateral side end, a cavity is formed between the top portion, the bottom portion, the medial side end, and the lateral side end, a core material substantially fills the cavity, the medial portion extending from the lateral portion at the lateral side end to the medial side end; the lateral portion extending outward from the lateral side end of the medial portion to the lateral edge of the base plate; and a width of the base plate divided between the medial portion and the lateral portion, wherein at a first cross-section of the base plate a width of the medial portion relative to a width of the lateral portion is 3: 1. Br. 21, 23-24, Claims App. ( emphasis added). ANALYSIS Anticipation by Schwirian Independent claims 1 and 10 The clipless cycling shoe of claims 1 and 10 requires, inter alia, a base plate comprising a medial sidewall, a medial portion, a lateral portion, and a lateral edge, the medial portion ... having a top portion, a bottom portion, a medial side end, and a lateral side end, wherein the top portion and bottom portion merge at the medial side end and at the lateral side end . . . the lateral portion extending outward from the lateral side end of the medial portion to the lateral edge of the base plate .. . and the portion of the top surface defined by the lateral portion is substantially flat with the exception of a portion of the top surface defined by the lateral edge of the lateral portion that rotates upward. 3 Appeal2016-008559 Application 13/543,677 See claim 1 supra. In rejecting claims 1 and 10 as being anticipated by Schwirian, the Examiner finds that "the top surface [ footbed portion] 42 defined by the lateral portion before it merges with [ground portion] 41 and curves upward is substantially flat," as shown in the sole structure of Schwirian' s Figure 9B, and constitutes the claimed lateral portion. Final Act. 3. To illustrate this finding, the Examiner provides an annotation of Schwirian' s Figure 9B, which is reproduced below. Id. at 4. Appellants argue that the claims require the top and the bottom portion merge at the lateral side end but "[t]he portion to the right of the dashed line on the lateral side does not include a substantially flat portion" because Schwirian only shows "a lateral edge portion that rotates upward." Br. 18. "To interpret the portion to the right of the lateral side end as including an infinitesimally small flat portion would vitiate the language of the claims and is not a reasonable construction of the claim terms." Id. 4 Appeal2016-008559 Application 13/543,677 In response to Appellants' argument, the Examiner asserts that "[t]here is nothing recited in Appellant's current claims 1 and 10 that places a limitation on the size of the lateral portion. Therefore, any portion, no matter how small, as long as it has a size meets the limitations of Claims 1 and 10." Ans. 3. \Ve are persuaded by Appellants' arguments because neither Figure 9B of Schwirian nor its corresponding description disclose a lateral portion extending outward from the lateral side end of the medial portion to the lateral edge of the base plate ... [ such that] the portion of the top surface defined by the lateral portion is substantially flat with the exception of a portion of the top surface defined by the lateral edge of the lateral portion that rotates upward, as required by claims 1 and 10. Although we agree with the Examiner that the claims do not place limitations on the size of the lateral portion, we do not however see any portion extending outward from the lateral side end in Figure 9B of Schwirian that is substantially flat The Examiner's annotation of Figure 9 B supra as disclosing the portion of the top surface defined by the lateral portion that is substantially flat is unsupported by any explicit disclosure in Schwirian, and does not appear to extend outward from the fateral side end, as required by the claims. In other words, the fateral portion labeled by the Examiner to the right of the lateral side end in Figure 9B of Schwirian appears to extend upward, rather than outward. Accordingly, we do not sustain the rejection of independent claims 1 and 10 as being anticipated by Schwirian, and claims 2--4, 6-9, and 11-16 dependent thereon. 5 Appeal2016-008559 Application 13/543,677 Independent claim 17 In rejecting independent claim 1 7 as anticipated by Schwirian, the Examiner relies on the annotation of Figure 9B of Schwirian reproduced above as disclosing "a width of the base plate divided between the medial portion and the lateral portion, wherein at a first cross-section of the base plate a width of the medial portion relative to a width of the lateral portion is 3:1." See Final Act. 10. According to the Examiner: The recitations of "a width" do not infer the interpretation of a total width and an allegation that the broadest reasonable interpretation would include a narrow interpretation of total width(s) directly contradicts the intent behind broadest reasonable interpretation. As currently claimed Appellant is not entitled to an interpretation of total width(s), but "a width" as claimed. Such a width is taught by Schwirian and a width of the medial portion can be interpreted under broadest reasonable interpretation to be a portion of the total width of the medial portion. If Appellant desires the claim to be afforded the interpretation of a total width then Appellant must include such language in the claim. Ans. 5. Appellants argue: This interpretation of the claim language ignores the recited claim language. Claim 1 7 recites "at a first cross-section of the base plate a width of the medial portion relative to a width of the lateral portion is 3: 1." The claim language does not recite a width of a portion of the base plate or a portion of the medial portion. The Examiner's interpretation of the claims is based on the inappropriate insertion of claim elements that are not recited in the claims. The broadest reasonable interpretation would include the total width of the medial portion and a total width of the lateral portion at the cross section. Accordingly, the width of the medial portion cannot be interpreted to arbitrarily require only a portion of the width of the medial portion. 6 Appeal2016-008559 Application 13/543,677 Br. 18-19. Based on the correct interpretation of the claim language, Appellants contend that "the medial portion of Schwirian extends the width of the sole structure and cannot be interpreted to have a proportional width of 3: 1 relative to the lateral portion." Id. at 19. We agree. Claim 17 is directed to "[a] clipless cycling shoe" defined by "a base plate ... a width of the base plate divided between the medial portion and the lateral portion, wherein at a first cross-section of the base plate a width of the medial portion relative to a width of the lateral portion is 3: 1." Br., Claims App. 23-24 ( emphasis added). As noted by Appellants, the claim elements recited provide antecedent basis in defining a width of the base plate, the medial portion, and the lateral portion. The Examiner's unreasonably broad interpretation of the claim language appears to be focused on the term "a width" in a vacuum instead of each of the claim elements as recited within the context of the claim as a whole, which defines the structural configuration of the base plate of the cycling shoe. Because the Examiner's finding in Schwirian relies upon an interpretation that is inconsistent with the plain language of claim 1 7, we are persuaded of Examiner error. Accordingly, we do not sustain the rejection of independent claim 17 as being anticipated by Schwirian, and claims 18-20 dependent thereon. DECISION The Examiner's decision to reject claims 1--4 and 6-20 is reversed. REVERSED 7