Appeal 2007-0197
Application 10/076,956
The Examiner’s arguments indicate that the reason relied upon by the
Examiner for placing Garbuio’s elastic pad 8 inside Pozzobon’s liner comes
from the Appellant’s disclosure rather than the applied references and that,
therefore, the Examiner used impermissible hindsight in rejecting the
Appellant’s claim 13. See W.L. Gore & Associates v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984); In re Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331
(CCPA 1960). Accordingly, we conclude that the Examiner has not carried
the burden of establishing a prima facie case of obviousness of the invention
claimed in that claim.
Claims 8 and 28
In addition to the first and second banana-shaped pads required by
claim 13, claims 8 and 28 require that the upper portion of the boot liner
includes “a tightening device fixed thereto with a first strap portion
overlying a part of said first banana-shaped pad and a second strap portion
overlying a part of said second banana-shaped pad”.
Breuner discloses a strap (56) that goes around the top of a boot upper
(38) and helps close the boot’s tongue (40) down onto the upper (col. 6, ll.
15-17; figs. 1, 3).
The Examiner argues that “it would have been obvious, to place a
tongue on the inner boot upper as well as straps to attach the outer boot to
the inner boot and prevent the ingress of material into the boot” (Answer 8).
That is the function of Breuner’s strap (56) around the outside of the boot
(“[t]his strap is fastened and tightened to close the tongue of the boot close
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