Ex Parte Kessler

Patent Trial and Appeal BoardApr 21, 2015

12086277 (P.T.A.B. Apr. 21, 2015)

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. 12/086,277 11/03/2008 Hansjürg Kessler RP-112 6373 42419 7590 04/22/2015 PAULEY PETERSEN & ERICKSON 2800 WEST HIGGINS ROAD SUITE 365 HOFFMAN ESTATES, IL 60169 EXAMINER GURARI, EREZ ART UNIT PAPER NUMBER 3618 MAIL DATE DELIVERY MODE 04/22/2015 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 HANSJÜRG KESSLER ____________ Appeal 2013-001944 Application 12/086,277 Technology Center 3600 ____________ Before LINDA E. HORNER, THOMAS F. SMEGAL, and LISA M. GUIJT, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Hansjürg Kessler (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1‒5 and 7‒25. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and ENTER A NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal 2013-001944 Application 12/086,277 2 THE CLAIMED SUBJECT MATTER Appellant’s claimed subject matter relates to “a snow sliding board.” Spec. 2. 1 Of those claims before us on appeal, claim 1 is the sole independent claim. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A snow sliding board (1) comprising: a tip (8), a center area (13) and a tail (9) and with a sliding surface (10) with a concave tip uptilt (21) and a concave end uptilt (23) and a convex center area (22) extending between the concave tip uptilt (21) and the concave end uptilt (23), wherein a front saddle point (6) and a rear saddle point (7) define curvature transitions between a convex radius of the center area (13) and a concave radius of the tip (8) and the tail (9) along a length of the snow sliding board (1) and saddle points (24, 25) define curvature transitions between positive and negative curvature along a width of the snow sliding board (1), wherein the concave tip uptilt (21) in an area of a front saddle point (6) terminates in the convex center area (22) in the area of the sliding surface (10), wherein the sliding surface (10) has a concave roll-up surface (17) in an area of the tip uptilt (21), which makes a load-dependent shifting of the edge pressure possible; and wherein the sliding surface radii (RS) and waisting radii (RG) decrease at least in a region bounded by respectively adjoining saddle points (6, 7) and saddle points (24, 25). Br. 11 (Claims App.). 1 All references to “Spec.” in this opinion refer to the Substitute Specification filed on November 3, 2008. Appeal 2013-001944 Application 12/086,277 3 THE REJECTIONS Appellant seeks review of the rejection of claims 1‒5 2 , 7, 8, 17, 22, and 23 under 35 U.S.C. § 102(b) as anticipated by Peart (US 6,352,268 B1; issued March 5, 2002) and the rejection of claims 9‒16, 18‒21, 24, and 25 under 35 U.S.C. § 103(a) as unpatentable over Peart. ANALYSIS Appellant argues that claim 1 is not anticipated by Peart because Peart “does not include any teaching regarding sliding surface radii and waisting radii decreasing in a region bounded by two respective sets of adjoining saddle points.” Br. 6; see also id. at 8‒9 (arguing that the Examiner misidentified saddle points in Peart, and when properly identified, Peart’s drawings do not teach “sliding surface radii that decrease between the alleged saddle points and the waisting radii appear to remain constant between such alleged saddle points”). The Examiner found that Peart discloses the board as claimed: wherein a front saddle point (24b) and a rear saddle point (5) define curvature transitions between a convex radius of the center area and a concave radius of the tip and the tail along a length of the snow sliding board (fig. 2) and saddle points (24e, 24d) define curvature transitions between positive and negative curvature along a width of the snow sliding board (fig. 2). Final Act. 2. 2 The Examiner improperly lists claim 6 as a rejected, pending claim on appeal. See Ans. 3 (listing claims 1‒25 as rejected and pending); see also id. at 4 (including claim 6 in the statement of the anticipation rejection). Appellant canceled claim 6 in an Amendment filed August 23, 2011. Appeal 2013-001944 Application 12/086,277 4 Provided below is Figure 2 of Peart annotated to show the saddle points identified by the Examiner as the front and rear saddle points along a length of the sliding board and the saddle points along a width of the sliding board. Provided below also is Figure 1 of Peart annotated with dashed lines to show where these saddle points lie on the plan view of the board shown. Figure 1 is a plan view of the snowboard of Peart, and Figure 2 is a side elevation of the board of Figure 1. Peart, col. 2, l. 57; id. at col. 3, l. 1 (hereinafter referred to as “First Set of Annotated Figures”). The Examiner found that Peart discloses sliding surface radii and waisting radii that decrease at least in a region bounded by respectively adjoining saddle points. In making this finding, the Examiner provided Figures 1 and 2 of Peart (reproduced below) annotated to show the regions between the respective adjoining saddle points. Appeal 2013-001944 Application 12/086,277 5 Final Act. 2‒3. The annotated figures include Figure 1 of Peart, which has been annotated by the Examiner to show saddle points along a width of the board. The annotated figures further include Figure 2 of Peart, which has been annotated by the Examiner to show saddle points along a length of the board (hereinafter referred to as “Second Set of Annotated Figures.”) The Examiner’s identification in the Second Set of Annotated Figures of the saddle points along the width of Peart’s board, for purposes of finding that the sliding surface radii and waisting radii decrease in the claimed regions, differs from the saddle points along the width of the board previously identified by the Examiner in the rejection, as depicted in the First Set of Annotated Figures. The Examiner fails to explain adequately the change within the statement of rejection itself as to the identification of these saddle points. As to the rejection based on the saddle points in the First Set of Annotated Figures, the rejection is deficient because we have no finding by the Examiner that the sliding surface radii and waisting radii decrease in a Appeal 2013-001944 Application 12/086,277 6 region bounded by saddle points depicted in the First Set of Annotated Figures. As to the rejection based on the saddle points in the Second Set of Annotated Figures, in response to Appellant’s argument that the Examiner misidentified these saddle points, the Examiner explained: [T]he saddle points identified by the examiner in the final action do show a transfer from negative to positive curvature, contrary to the Appellant’s contention. In fig. 1[,] the snowboard is at its widest point at each saddle point (with . . . the curvature of one side increasing relative to that point (positive) and the curvature of the other side decreasing (negative)). Ans. 10. The Examiner based the findings as to the waisting radii solely on the figures of Peart, finding: The waisting radii clearly decrease[] as can be seen by the curvature along the side of the snowboard pinches inward in a parabolic and not circular manner (a circular manner would mean the radius was constant. As it is not circular and having a constant radius, a decrease must exist). Id. at 10‒11. Even if we were to find that the identification of the saddle points in the Second Set of Annotated Figures is in keeping with the language of the claim, in that they define curvature transitions between positive and negative curvature along a width of the snow sliding board, the rejection is deficient because we do not have adequate evidence from the figures of Peart alone to discern by a preponderance of the evidence that the waisting radii decrease in the claimed regions (i.e., a region bounded by saddle points 6 and 24 and a region bounded by saddle points 7 and 25). In other words, we have Appeal 2013-001944 Application 12/086,277 7 insufficient evidence to find simply by looking at the prior art figures that the waisting radii between the saddle points corresponding to Appellant’s saddle points 6 and 24 or the waisting radii between the saddle points corresponding to Appellant’s saddle points 7 and 25 decrease, because, contrary to the Examiner’s assertion, the snowboard does not clearly pinch inwardly in those regions. Appellant also provided annotated Figures 1 and 2 of Peart, reproduced below, showing where Appellant asserted the saddle points occur. Br. 8 (referred to hereinafter as “Third Set of Annotated Figures”). This Third Set of Annotated Figures shows Figures 1 and 2 of Peart with the respective saddle points (6, 7) and (24, 25) closer together along the length of the board as compared with the First and Second Sets of Annotated Figures. According to Appellant, these annotated figures show where the sign of the curvature changes between positive and negative and/or convex Appeal 2013-001944 Application 12/086,277 8 and concave, with the saddle points labeled consistently with the claimed invention. The Examiner determined that “even if Appellant’s identification of the saddle points were correct, the rejection would still apply.” Ans. 11. Taking these saddle points identified by Appellant as the claimed saddle points, the rejection likewise is deficient because we do not have adequate evidence from the figures of Peart alone to discern by a preponderance of the evidence that the waisting radii decrease in the claimed regions (i.e., a region bounded by saddle points 6 and 24 and a region bounded by saddle points 7 and 25). In other words, we have insufficient evidence to find simply by looking at the prior art figures that the waisting radii between saddle points 6 and 24 or the waisting radii between saddle points 7 and 25 decrease, because, contrary to the Examiner’s assertion, the snowboard does not clearly pinch inwardly in those regions. For these reasons, we cannot sustain the rejection of claim 1 as anticipated by Peart. Likewise, the anticipation rejection of dependent claims 2‒5, 7, 8, 17, 22, and 23 and the obviousness rejection of dependent claims 9‒16, 18‒21, 24, and 25, suffer from the same deficiency. NEW GROUND OF REJECTION Claims 7‒14 depend either directly or indirectly from canceled claim 6. We enter a new ground of rejection of claims 7‒14 under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. These claims should be either canceled, rewritten in independent form, or their dependencies corrected to depend from a pending claim. Appeal 2013-001944 Application 12/086,277 9 DECISION The decision of the Examiner to reject claims 1–5 and 7–25 is REVERSED. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION of claims 7‒14 under 35 U.S.C. § 112, second paragraph. 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b) hh