Ex Parte Kelly

Patent Trial and Appeal BoardMay 24, 2016

13231204 (P.T.A.B. May. 24, 2016)

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. 13/231,204 09/13/2011 L. Patrick Kelly KELLY-10 (5363*7) 5103 7590 05/25/2016 Connolly Bove Lodge & Hutz, LLP P.O. Box 2207 Wilmington, DE 19899-2207 EXAMINER VANAMAN, FRANK BENNETT ART UNIT PAPER NUMBER 3618 MAIL DATE DELIVERY MODE 05/25/2016 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 L. PATRICK KELLY ____________ Appeal 2014-005210 Application 13/231,2041 Technology Center 3600 ____________ Before PHILIP J. HOFFMANN, KENNETH G. SCHOPFER, and MATTHEW S. MEYERS, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 1–12 and 14–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND According to Appellant, “[t]he present invention relates to improvements in ice skates such as used by skaters in hockey, figure skating[,] and long-blade skating.” Spec. 1, ll. 7–9. 1 According to Appellant, the real party in interest is L. Patrick Kelly. Appeal Br. 2. Appeal 2014-005210 Application 13/231,204 2 CLAIMS Claims 1–12 and 14–20 are on appeal.2 Claim 1 is illustrative of the appealed claims and recites: 1. In an ice skate comprising a boot having an inner sole, a contoured blade mounted to the bottom of said boot, said blade being movable in an xy plane which is the plane of principal motion when said blade is on an ice surface, said blade in the xy plane having a large radius rocker curvature, the rocker having a geometrical radial line which makes an angle with respect to a foot plane, the boot and the inner sole having a heel portion at the rearward end of the boot and having a ball-of-foot portion at the forward end of the boot, the improvement being in a removable shim being inserted on said inner sole in one of said heel portion and said ball-of-foot portion of said boot to shift said rocker center relative to the foot plane by elevating a generally uniform distance the entire respective one of the heel and ball- of-foot of the skater in the xy plane. Appeal Br. 25. REJECTIONS I. The Examiner rejects claims 1, 2, 4–6, 9–11, 14, 16, 18, and 19 under 35 U.S.C. § 103(a) as unpatentable over Edauw3 in view of Borel.4 II. The Examiner rejects claims 1, 2, 4, 6–11, and 15–19 under 35 U.S.C. § 103(a) as unpatentable over Edauw in view of Farhad.5 III. The Examiner rejects claims 3, 12, and 20 under 35 U.S.C. § 103(a) as unpatentable over Edauw in view of Borel and Dardinski.6 2 Claim 13 has been cancelled. See Ans. 2. 3 Edauw, US 5,971,405, iss. Oct. 26, 1999. 4 Borel, US 6,394,469 B1, iss. May 28, 2002. 5 Farhad, US 5,732,481, iss. Mar. 31, 1998. 6 Dardinski et al., US 7,461,470 B2, iss. Dec. 9, 2008. Appeal 2014-005210 Application 13/231,204 3 IV. The Examiner rejects claims 8 and 17 under 35 U.S.C. § 103(a) as unpatentable over Edauw in view of Borel and Farhad. DISCUSSION Rejection I With respect to this rejection, Appellant separately addresses claims 1, 4, 9, and 10. See Appeal Br. 12–22. We address these claims separately below. Claim 1 With respect to claim 1, the Examiner finds that Edauw discloses an ice skate with the configuration required by the claim preamble, and that Edauw teaches adjusting the angle of a foot plane with respect to the blade to adjust the skate for a particular skating style. Final Action 3 (citing Edauw Figs. 1, 3). The Examiner finds that “Edauw fails to teach that the angle of a user’s foot plane may be adjusted by the insertion of one or more of a heel or ball-of-foot shim element.” Id. The Examiner finds that Borel teaches the use of a shim element under the heel with a flat bottom and substantially flat top to elevate the heel a generally uniform distance. Id. (citing Borel Fig. 2). The Examiner concludes that it would have been obvious to use a shim as taught by Borel in Edauw’s skate “for the purpose of allowing a single skate to be simply and inexpensively reconfigured for plural stance configurations.” Id. The Examiner also finds that it would have been obvious to use such a shim as taught by Borel in order to improve the maneuverability of a skate lacking such an adjustment (see Borel, col. 1, lines 26-30), with a certain variability in height being acknowledged to be beneficial in adjusting a degree of maneuverability improvement (col. 1, lines 30-35). Additionally, using a shim arrangement rather than Appeal 2014-005210 Application 13/231,204 4 changing a chassis configuration beneficially results in a simplified chassis construction (Borel col. 2, lines 2-15). Further it may be reasonably seen that a shim may further be provided in a skate boot for the purpose of both improving maneuverability of a skate otherwise lacking in adjustability while also beneficially providing a degree of shock absorption (Borel, col. 2, lines 16-20). Ans. 9. We agree with and adopt the Examiner’s findings and conclusions regarding the scope and content of Edauw and Borel with respect to claim 1. See Final Action 3; Ans. 2–18. For the reasons set forth below, we are not persuaded of error by Appellant’s arguments. Appellant first argues that Edauw does not teach that it was known to adjust the angle of a foot plane with respect to the blade because the embodiments referred to in the rejection do not have identical blades. Appeal Br. 11. However, we agree with the Examiner that Edauw appears to show a change in orientation of the user’s foot relative to the blade in the different embodiments depicted, which supports the Examiner’s finding. Further, the rejection relies on Borel as disclosing a removable shim for adjusting the angle of the foot and does not rely on Edauw for this functionality. Next, Appellant asserts that Edauw does not disclose removable shims, as claimed, because Edauw’s props are not readily removable and are located below the insole rather than on the insole inside the boot. Appeal Br. 12–13. Appellant also asserts that Edauw does not disclose a structure that is capable of performing the function claimed. Id. at 13. To the extent Appellant is arguing that the rejection is in error for these reasons, we are not persuaded as the rejection relies on Borel for a removable shim. Appeal 2014-005210 Application 13/231,204 5 Appellant next argues that Borel does not overcome the deficiencies of Edauw. Id. at 13. In support, Appellant asserts that Borel does not relate to ice skates, that the intent of Borel is to address concerns regarding aggressive skating, and, thus, Borel is not analogous because “Borel cannot be construed as suggesting any modifications that should be made to an ice skate having a contoured blade with a large radius rocker curvature.” Id. at 13–14. We disagree. The analogous-art test requires that the Board how that a reference is either in the field of the applicant's endeavor or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). References are selected as being reasonably pertinent to the problem based on the judgment of a person having ordinary skill in the art. Id. (“[I]t is necessary to consider ‘the reality of the circumstances,’–in other words, common sense–in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.” (quoting In re Wood, 599 F.2d 1032, 1036 (C.C.P.A.1979))). In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir. 2006). We agree with the Examiner that Borel is analogous because it is pertinent to the problem of how to adjust the relative height of one or more parts of the user’s foot. See Ans. 5. In addressing this problem, we find that one of ordinary skill in the art would reasonably be expected to look for a solution in references related to footwear, including Borel. Next, Appellant argues that “[i]f Edauw were modified in the manner of Borel to locate the prop inside the skate boot, then the purpose of the prop in Edauw would be totally defeated since it would no longer control the location of where the thrust is exerted.” Appeal Br. 15. We agree with the Appeal 2014-005210 Application 13/231,204 6 Examiner that Appellant only speculates and does not provide sufficient evidentiary support for this position. See Ans. 7–8. Further, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant also argues that Borel does not overcome the deficiencies of Edauw because Borel’s shim does not uniformly elevate the entire heel of the foot. However, we agree with the Examiner that Borel’s shim may reasonably be described as providing a “generally uniform” elevation for the entire heel. Ans. 8–9. Although Borel’s shim does have a taper, it tapers very little directly under the heel of the user. See Borel Fig. 2. Finally, to the extent Appellant argues that the rejection is in error because neither Edauw nor Borel perform the same function as the claimed shim, we are not persuaded of error. “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (emphases added). Based on the foregoing, we find that the Examiner established a prima facie showing of obviousness with respect to claim 1 over Edauw and Borel without error. Accordingly, we sustain the rejection of claim 1. Appellant does not present separate arguments with respect to dependent claims 2, 5, and 6, and thus, those claims fall with claim 1. Claim 4 Appellant separately argues that Borel’s wedge 21 is “not substantially flat in the xz plane which is perpendicular to the xy plane” as Appeal 2014-005210 Application 13/231,204 7 required by claim 4. Appeal Br. 18. Without further explanation by Appellant, we are not persuaded of error. The underside of Borel’s wedge appears substantially flat in the plane parallel to the bottom of the boot. See Borel Fig. 2. Accordingly, we sustain the rejection of claim 4 over Edauw and Borel. Claim 9 Appellant argues that Borel does not provide an illustration or description of wedge 21 showing the relationship of its various edges as recited in claim 9. Appeal Br. 20. However, although Borel may not specifically show the claimed shape, the Examiner finds that it would have been obvious to provide the shape claimed. See Final Action 4. Appellant does not address this finding, and thus, we are not persuaded of error. Accordingly, we sustain the rejection of claim 9 over Edauw and Borel. Claim 10 With respect to the rejection of claim 10 over Edauw and Borel, the Examiner relies on the same findings provided with respect to claim 1, as discussed and adopted above. Appellant relies on the same arguments discussed previously, and we are not persuaded of error for the same reasons as above. Accordingly, we sustain the rejection of claim 10. Appellant does not raise separate arguments regarding this rejection with respect to claims 14, 16, 18, and 19, and thus, those dependent claims fall with claim 10. Rejection II With respect to this rejection, Appellant separately addresses claims 1, 4, 7, 8, 9, 10, 15, and 17. See Appeal Br. 12–22. To the extent appropriate, we address these claims separately below. Appeal 2014-005210 Application 13/231,204 8 Claim 1 As discussed in the previous rejection, the Examiner finds that Edauw discloses a skate as required by the preamble of the claim as well as that it was known to adjust the angle of a foot plane with respect to the blade. Final Action 5. Here, the Examiner finds that Farhad discloses a shim that is used in the heel of a shoe and that it would have been obvious to use Farhad’s shims in Edauw’s skate to simply and inexpensively change the configuration of the skate. Id. at 5–6; see also Ans. 11. We agree with and adopt the Examiner’s findings and conclusions regarding the scope and content of Edauw and Farhad with respect to claim 1. See Final Action 5–6; Ans. 10–12. As discussed below, we are not persuaded of error by Appellant’s arguments. Appellant relies on similar arguments here as those made above with respect to the rejection of claim 1 over Edauw and Borel. Specifically, Appellant argues that Farhad is non-analogous art and that replacing Edauw’s prop below the insole with Farhad’s shim within the skate boot would be contrary to Edauw’s purpose. See Appeal Br. 16–17. We are unpersuaded for reasons similar to those discussed above. First, we find that Farhad is analogous for the reasons provided by the Examiner including that Farhad is pertinent to the problem of how to adjust the relative height of one or more parts of the user’s foot. See Ans. 10. We find that one of ordinary skill in the art would reasonably be expected to look for a solution to this problem in references related to footwear, including Farhad. We also agree with the Examiner that Appellant’s other argument is based on speculation without sufficient supporting evidence. See Ans. 11. We further find this Appeal 2014-005210 Application 13/231,204 9 argument inappropriately relies on whether Farhad’s shim may be bodily incorporated into Edauw’s skate. See In re Keller, 642 F.2d at 425. For these reasons, we find that the Examiner has established a prima facie showing of obviousness with respect to claim 1 over Edauw and Farhad without error. Accordingly, we sustain the rejection of claim 1 over Edauw and Farhad. Appellant does not raise separate arguments with respect to dependent claims 2, 6, 11, 18, and 19, and thus, those claims fall with claim 1. Claim 4 Appellant separately argues that Farhad’s lifts are “not substantially flat in the xz plane which is perpendicular to the xy plane” as required by claim 4. Appeal Br. 18. Without further explanation by Appellant, we are not persuaded of error. The underside of Farhad’s lifts appear substantially flat in the plane parallel to the bottom of the boot. See Farhad Fig. 3. Accordingly, we sustain the rejection of claim 4 over Edauw and Farhad. Claim 7 Claim 7 requires that the shim has an elevation of at least 1/64 inch and no greater than 3/16 inch. The Examiner finds that it would have been obvious to provide a shim with these dimensions “for the purpose of optimizing the fit and/or characteristic of the skate carrying the shim.” Final Action 6. Appellant argues that “neither Edauw nor Farhad would be looking to achieve an optimization for a purpose of which neither is concerned, i.e. shifting the rocker center.” Appeal Br. 19. Appellant’s argument is focused on the intended use of the device as recited in the claim and does not address the reasoning provided by the Examiner in the Appeal 2014-005210 Application 13/231,204 10 rejection. Thus, we are not persuaded of error, and we sustain the rejection of claim 7. Claim 8 With respect to claim 8, Appellant argues only that “Farhad is directed simply to shoes and is in no way concerned with nor does it teach techniques for shifting the rocker center as required by Claim 8.” Appeal Br. 20. As found above, Farhad is analogous art and the claims cannot be distinguished from the art based solely on the intended use provided in the claim. Accordingly, we sustain the rejection of claim 8. Claim 9 With respect to claim 9, Appellant argues that Farhad is not related to an ice skate, and that there is no description given of the shape of the lift. Appeal Br. 20. However, we agree with the Examiner that Farhad is analogous and that Farhad depicts lifts that meet the limitations of claim 9. See Ans. 15–16; Farhad Figs. 1–4. Accordingly, we sustain the rejection of claim 9. Claim 10 With respect to claim 10, Appellant relies on arguments previously addressed and found unpersuasive. See Appeal Br. 21–22. Accordingly, we are not persuaded of error, and we sustain the rejection of claim 10 over Edauw and Farhad. Appellant does not separately address claims 11, 16, 18, and 19, and, thus, those dependent claims fall with claim 10. Claim 15 With respect to claim 15, Appellant relies on similar arguments to those presented with respect to claim 7. Appeal Br. 22. We find those Appeal 2014-005210 Application 13/231,204 11 arguments unpersuasive for reasons similar to those discussed above. Accordingly, we sustain the rejection of claim 15. Claim 17 With respect to claim 17, Appellant relies on similar arguments to those presented with respect to claim 8. Appeal Br. 23. We find those arguments unpersuasive for reasons similar to those discussed above. Accordingly, we sustain the rejection of claim 17. Rejection III With respect to the rejection of claims 3, 12, and 20, Appellant argues that Dardinski is not analogous art, and that Dardinski does not overcome the deficiencies in the rejection based on Edauw and Borel. Appeal Br. 17– 18, 24. We are not persuaded of error. Initially, we note that we found no such deficiencies in the rejection over Edauw and Borel, as discussed above. Further, we agree with the Examiner that Dardinski is analogous art for the similar reasons as Borel and Farhad. Specifically, Dardinski is pertinent to the problem of adjusting the relative height of one or more parts of the user’s foot. See Ans. 12. Accordingly, we sustain the rejection of claims 3, 12, and 20. Rejection IV Appellant’s arguments regarding the rejection of claims 8 and 17 were addressed above with respect to the rejection over Edauw and Farhad. Those arguments are equally unpersuasive with respect to this rejection. Accordingly, we sustain the rejection of claims 8 and 17 over Edauw, Borel, and Farhad. Appeal 2014-005210 Application 13/231,204 12 CONCLUSION For the reasons set forth above, we affirm the rejections of claims 1– 12 and 14–20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED