shape of a boot either, and Bourdeau has failed to direct us
to sufficient and credible evidence which show that one of
ordinary skill in the art knew of snowboard boots whose rear
and front widths are equal. The fact that the prior art may
be modified in the manner suggested does not make the
modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d
1260, 12666 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992).
Bourdeau argues in its reply that:
even if the Board does not find the two planes to be the
same as a matter of law, the two planes are nevertheless
practically the same. Both planes pass through the
center of the heel and are used simply as a reference
point. (Paper 56, Introduction at 1).
The above quoted remark is found under the heading
“Introduction” which precedes the section entitled “Reply to
the Specific Points Raised By Okajima”. (Paper 56 at 1-2).
The rule regarding a reply states that a “reply shall be
directed only to new points raised in the opposition.” 37 CFR
§ 1.638(b). The above quoted argument was not in response to
new points raised in Okajima’s opposition.
Bourdeau reiterated this new argument at final hearing.
What we understand Bourdeau’s new argument to be is that even
if the “plane of approximate symmetry” and the “longitudinal
- 16 -
Page: Previous 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 Next
Last modified: November 3, 2007