Appeal No. 2004-1264
Application 09/909,168
appellant's prior U.S. Patent No. 6,272,774 which is directed to
a “shoe cleat and holder combination,” and 2) “it would have been
obvious to leave out the other elements” (supp. answer, page 6).
Thus, the examiner points to the shoe cleat of the application
claims and the requirement therein of “at least a first locking
member” and finds correspondence with the shoe cleat of
combination patent claim 1 and its recitation of “a locking
means.” The examiner further contends that “[t]he remaining
language is all functional and the shoe cleat [of patent claim 1]
is inherently capable of performing the function as claimed
inasmuch as it has all of the structural limitations” (supp.
answer, pages 6-7).
Appellant’s response to the examiner’s double patenting
rejection is to point out that the application claims at issue
are directed to a shoe cleat alone, while claim 1 of the ‘774
patent is directed to a shoe cleat and holder combination, and to
further assert that “[a]pplicant is unable to find any precedent
supporting an obviousness-type double patenting rejection where
the patent claims are directed to a combination and the
application claims are directed to a sub-combination” (brief,
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