Ex parte Lemoine

Application for patent filed May 18, 1992. According1
to applicant, the application is a continuation of Serial
No. 07/639,095, filed January 9, 1991, abandoned.
1
PRECEDENTIAL OPINION
Pursuant to the Board of Patent Appeals and Interference's
Standard Operating Procedure No. 94-02, the opinion below
has been designated as precedential on the sole issue of
the construction of 35 U.S.C. § 134.
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte PHILIPPE LEMOINE
________________
Appeal No. 94-0216
Application 07/884,875 1
________________
DECIDED: December 27, 1994
________________
Before McKELVEY, Chief Administrative Patent Judge, and STONER,
MEISTER, McQUADE and SCHAFER, Administrative Patent Judges.
DECISION ON APPEAL
Per curiam
This appeal was initially argued on March 23, 1994,
before a merits panel consisting of Judges Stoner, Meister, and
McQuade. The panel was unable to reach a decision. Judge Stoner
would have reversed, Judge Meister would have affirmed, and Judge

Appeal No. 94-0216
Application 07/884,875
2
McQuade would have dismissed for lack of jurisdiction. There-
after, an expanded five-member panel consisting of Chief Judge
McKelvey and Judges Stoner, Meister, McQuade, and Schafer voted
to rehear the appeal. The appeal was reheard on June 20, 1994.
The expanded panel has reached a split decision.
By a vote of 4-1, the expanded panel determines that
the Board has jurisdiction. Judge McQuade dissents.
By a 3-1 vote, the expanded panel affirms on the
merits. Judge Stoner dissents. Judge McQuade declines to
participate on the merits.
Judge Schafer's majority opinion, Judge Stoner's
dissent on the merits, and Judge McQuade's dissent on
jurisdiction follow.
SCHAFER, Administrative Patent Judge.
Applicant appeals the final rejection of claims 24 to
52 and 54 to 58, all the claims in the application. Claims 54
and 36 are representative. Claims 54 and 36 are set forth below:
54. An apparatus for mounting a boot upon a ski, the
boot adapted to be maintained between a front safety
binding and a rear safety binding, said apparatus
comprising:
(a) an intermediate support plate for affixation
to the ski for vertically supporting the boot and for

Appeal No. 94-0216
Application 07/884,875
Kuchler 4,804,200 February 14, 1989	2
Smolka et al. 3,797,844 March 19, 1974	3
3
having secured thereon at least one of said front
safety binding and said rear safety binding;
(b) at least one support element having a
predeterminate size and shape to enable said at least
one support element to be positioned between said
intermediate support plate and an upper surface of the
ski, to enable at least vertical forces to be
transmitted between said intermediate support plate and
the ski;
(c) means for longitudinally displacing said at
least one support element beneath said intermediate
support plate and between said intermediate support
plate and the ski for selectively adjusting
longitudinal positions of said at least one support
element; and
(d) means for immobilizing said at least one
support element in predeterminate longitudinal
positions between said intermediate support plate and
the ski.
36. The apparatus of claim 54, further comprising
means for vertically retaining said intermediate
support plate relative to said ski.
The examiner made three rejections:
1. The rejection of claims 24, 25, 31-52, and 54-55
under 35 U.S.C. § 112, second paragraph as indefinite;
2. The rejection of claims 24-27, 31-33, 43-45 and
54-58 under 35 U.S.C. § 103 as unpatentable over the
combination of the teachings of the Kuchler and	2
Smolka patents; and	3

Appeal No. 94-0216
Application 07/884,875
Weigl 4,251,090 February 17, 1981	4
4
3. The rejection of claims 28-30, 36 and 42 under
35 U.S.C. § 103 as unpatentable over the combined
teachings of the Kuchler, Smolka and Weigl patents.	4
The board also sua sponte raised the question of
whether "any of [applicant's] claims had been twice rejected" as
required by 35 U.S.C. § 134 and thus whether the jurisdiction of
this board was properly invoked.
Procedural History
Because of the jurisdictional issue, we review the
relevant procedural history of this application and its parent
application 07/639,095.
The parent application was originally filed with claims
1-22. In the first Office action the examiner made a variety of
formal objections, rejected all the claims for indefiniteness
under 35 U.S.C. § 112, ¶ 2, and rejected claims 1-8, 16 and 17
under 35 U.S.C. § 103. In the latter rejection the examiner
relied upon a combination of the teachings of Kuchler and Smolka,
as evidence that the claimed subject matter would have been
obvious.
In response to the rejection applicant, inter alia,
canceled all the claims (claims 1-22) and submitted new claims

Appeal No. 94-0216
Application 07/884,875
5
23-53. The examiner issued a final Office action, rejecting
claims 23-53 as indefinite under 35 U.S.C. § 112, ¶ 2, and
rejecting claims 23-27, 31-33, 43-45 and 53 as being directed to
subject matter which would have been obvious over the combined
teachings of the Kuchler and Smolka references. Claims 28-30, 36
and 42 were also rejected under 35 U.S.C. § 103 as unpatentable
in view of the combined teachings of Kuchler, Smolka and Weigl.
The examiner noted that applicant had not separately argued the
features of the dependent claims and that the patentability of
the dependent claims stood or fell with independent claims.
Applicant responded to the final rejection with a
notice of appeal and a proposed amendment. The examiner denied
entry of the amendment on the basis that the amendments raised
new issues and did not simplify or reduce the number of issues on
appeal.
Applicant filed another proposed amendment. The
examiner again denied entry of the amendment on the basis that
the amendment was not in compliance with 37 CFR § 1.116(b),
raised new issues and did not materially reduce or simplify the
issues for appeal.
Rather than submitting an appeal brief, applicant chose
to refile the application as a "file wrapper continuation" (FWC)

Appeal No. 94-0216
Application 07/884,875
6
under 37 CFR § 1.62. By a preliminary amendment, applicant
canceled claims 23 and 53, added claims 54-58 and made minor
amendments to claims 24-26, 28, 29, 31-33, 36, 37, 39, and 43-46.
The examiner essentially repeated the three grounds of
rejection. Claims 24, 25, 31-52, 54 and 55 were rejected as
indefinite under 35 U.S.C. § 112, ¶ 2. Claims 24-27, 31-33,
43-45, and 54-58, were rejected under 35 U.S.C. § 103 as
unpatentable over the combination of the Kuchler and Smolka
disclosures. Claims 28-30, 36 and 42 were rejected under
35 U.S.C. § 103 as unpatentable in view of the combined teachings
of Kuchler, Smolka and Weigl. The Office action was not made
final.
In response applicant filed a notice of appeal and
subsequently filed a proposed amendment. The examiner held the
application to be abandoned. He felt the notice of appeal was
improper at the particular stage of the prosecution, citing
35 U.S.C. § 134 and 37 CFR § 1.191. He also felt that the
amendment was untimely under 37 CFR §§ 1.135 and 1.136.
Applicant filed a paper captioned "Request to Withdraw
Holding of Abandonment and Provisional Petition to Revive." With
respect to the request to withdraw the holding of abandonment,
applicant argued that an appeal was authorized under 35 U.S.C.

Appeal No. 94-0216
Application 07/884,875
We note that this should be claims 24-52, claim 53 having been	5
canceled.
7
§ 134 since applicant "has had his claims rejected at least
twice."
The Director of Patent Examining Group 3100 reviewed
the request and found that at least applicant's claims 24-53 5
were twice rejected in that they had been rejected in both the
parent and the FWC applications. Paper # 29, p.1. He concluded
that it was appropriate to transmit the appeal to the board, thus
facially transferring jurisdiction to us. 37 CFR § 1.191(e).
Applicant filed his brief and the examiner responded
with an answer.
An oral hearing was held March 23, 1994, before a panel
consisting of Administrative Patent Judges Stoner, Meister and
McQuade. As noted earlier, one judge felt that the board lacked
subject matter jurisdiction because the rejection was not a final
rejection and no claim had been twice rejected as required by
35 U.S.C. § 134. He declined to participate in a decision on the
merits. The remaining judges, while believing jurisdiction was
present, disagreed as to the merits. The panel was expanded so
that a majority decision could be reached. Applicant was given

Appeal No. 94-0216
Application 07/884,875
8
an opportunity to submit a brief addressed to the following
issue:
Does the Board of Patent Appeals and
Interferences have jurisdiction (35 U.S.C.
§ 134) under the circumstances of this case,
including the fact that an appeal in this
continuing application was taken from a first
Office action which was not designated by the
Primary Examiner as a final rejection.
Applicant briefed the issue and appeared at an additional hearing
held before the expanded panel on June 20, 1994.
Jurisdiction
Section 134 of Title 35 gives applicants the statutory
right to an administrative appeal. The section provides:
An applicant for a patent, any of whose
claims have been twice rejected, may appeal
from the decision of the primary examiner to
the Board of Patent Appeals and
Interferences . . . .
Jurisdiction for this appeal depends on whether appellant is an
applicant "any of whose claims has been twice rejected." We
conclude that appellant had the right to appeal the rejections
and we have jurisdiction.
To reach a decision requires to construe the word
"claims" as used in § 134. The word is susceptible to at least
two interpretations. It can refer to the claims of an applica-
tion, i.e., the "one or more claims particularly pointing out

Appeal No. 94-0216
Application 07/884,875
9
and distinctly claiming the subject matter" of the invention
required by 35 U.S.C. § 112, ¶2. Or the word can be used in a
more general sense to refer to claims "for a patent" as it is
used in 35 U.S.C. § 132. In this latter sense, the word is
synonymous with a request or demand for a patent.
Section 134 merely uses the word "claims." We must,
therefore, decide which construction to give to the statute. We
conclude that "claims" in § 134 should be construed consistently
with its use in § 132 to mean "claims for a patent" rather than
particular "claims of an application."
Section 134 is part of Chapter 12 of Title 35. Chapter
12 is titled "Examination of Application" and sets forth the
general procedures to be followed in the Office for examination.
Sections 131 to 134 provide the general procedures relating to ex
parte examination. In relevant part, these sections specify that
(1) an examination shall be made (§ 131); (2) if "any claim for a
patent" is rejected, the applicant shall be informed of the bases
of the rejection (§ 132); (3) if the applicant persists in the
"claim for a patent, with or without amendment," the application
shall be reexamined (§ 132); and (4) if applicant's claims have
been twice rejected, the applicant may appeal (§ 134). Con-
sidering these sections together, we conclude that the "claims"

Appeal No. 94-0216
Application 07/884,875
10
as used in § 134 is a reference to the repeated "claim for a
patent" as used in § 132 rather than a reference to a particular
claim "of an application." Under our interpretation, so long as
the applicant has twice been denied a patent, an appeal may be
filed. So construing the statute, we conclude that applicant's
claims for a patent have been twice rejected. Applicant has been
denied a patent three times. Applicant, therefore, had the right
to appeal and we, accordingly, have jurisdiction.
Judge McQuade's dissent on jurisdiction
Judge McQuade's dissent argues that we have failed to
provide authority for our interpretation of § 134. This is
incorrect since the authority is Chapter 12, of Title 35. We
have construed "claims" in § 134 in pari materia with the other
sections of that Chapter and the examination scheme of Chapter 12
as a whole. Sections 132 and 134 were promulgated and the same
time and both are part of the statutory framework setting forth
the procedures for the patent examination process. Accordingly,
the two sections should be interpreted in pari materia.
Erlenbaugh v. United States, 409 U.S. 239, 243, 93 S.Ct. 477, 480
(1972). It is appropriate, therefore, to give the word the same
meaning in both sections. Our construction is also consistent
with the principle that statues giving the right to appeal are to

Appeal No. 94-0216
Application 07/884,875
11
be liberally construed. United States v. Mobay Chemical Corp.,
576 F.2d 368, 374 (CCPA 1978).
The dissent argues that our construction is
inconsistent with the "construction which traditionally has been
accorded 35 USC 134." The dissenter relies on In re Szajna, 422
F.2d 443, 164 USPQ 632 (CCPA 1970) and In re Hengehold, 440 F.2d
1395, 169 USPQ 473 (CCPA 1971). In Szajna the court noted:
Those sections [132 and 134] do not require
that each and every claim presented during
the prosecution of an application must be
twice examined and twice rejected on the same
ground. Section 134 appears to imply the
contrary since it permits an appeal to be
taken when any claim has been twice rejected.
Nevertheless, the claims here in question
have been twice rejected, contrary to
appellants' allegations, since the examiner
rejected them on the grounds of undue
multiplicity and as being based on new matter
prior to the rejection in his Answer.
[Emphasis original.]
422 F.2d at 446, 164 USPQ at 635. In Hengehold, the court noted
that
it is clear that, for the board to have some
jurisdiction in a case, only one claim need
be twice rejected, and that event occurred
here. [Emphasis original.]
440 F.2d at 1403, 169 USPQ at 479.
We do not view these cases as being inconsistent with
our interpretation of the statute. In each case, the applicant's

Appeal No. 94-0216
Application 07/884,875
12
claim for a patent was twice denied. We believe the dissent errs
in interpreting the court's rationale as stating necessary rather
than sufficient conditions for jurisdiction. The Federal Circuit
has cautioned against extending legal principles to cases having
different fact situations. FMC Corp. v. Manitowac, 835 F.2d
1411, 1417 n.12, 5 USPQ2d 1112, 1117 n.12 (Fed. Cir. 1987).
The dissent also errs in construing "any of whose
claims has been twice rejected" to mean "any of whose claims,
which do not differ in substance and scope from previously
rejected claims, has been twice rejected." There is simply no
support for this limited view in the statute.
The § 112 rejection
The examiner has rejected claims 24-25, 31-52, 54
and 55 under 35 U.S.C. § 112, second paragraph as indefinite.
The examiner indicates that these claims only positively and
distinctly claim the interconnection of one binding leaving the
positive interconnection of the other safety binding unknown.
We reverse this rejection. At the outset we note that
the examiner has apparently interpreted the claims as requiring a
binding or bindings. However, none of the claims positively
require that bindings be attached to the intermediate support

Appeal No. 94-0216
Application 07/884,875
13
plate. For example, claim 54 recites that the intermediate
support plates is "for" having a binding secured thereon.
In any event, we fail to see how lack of a reference
to a second binding makes the claim indefinite. A claim is
indefinite if it fails to clearly delineate the boundary between
the claimed and unclaimed subject matter. See In re Vogel, 422
F.2d 438, 442, 164 USPQ 619, 622 (CCPA 1970). ("A claim is a
group of words defining only the boundary of the patent
monopoly.") See also, In re Vamco Machine & Tool, Inc., 752 F.2d
1564, 1577 n.5, 224 USPQ 617, 625 n.5 (Fed. Cir. 1985) (The claim
sets forth the metes and bounds of the rights which the appli-
cants seek to obtain). In determining if claims are indefinite,
claim language is analyzed in light of the teachings of the prior
art and in light of the particular application disclosure as it
would be interpreted by one having ordinary skill in the art. In
re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
The fact that only one binding is recited does not obscure the
boundary line between the claimed and unclaimed subject matter or
otherwise make the claimed subject matter unclear. The ordinary
person working in this art would not, in our view, have any
problem ascertaining the scope of the claimed subject matter. In
order to fall within the literal scope of the claim, the inter-

Appeal No. 94-0216
Application 07/884,875
We also note that the examiner's concern seems to be more in	6
the nature of a lack of enablement under 35 U.S.C. § 112, first
paragraph, or inoperativeness under 35 U.S.C. § 101. We express
no comment, in this opinion, on any grounds of rejection which
were not brought before us.
14
mediate support plate need only be "for" securing a single
binding. 6
The 35 U.S.C. § 103 rejections
The invention is directed to an apparatus for attaching
a ski boot to a ski. In use, the apparatus is attached (1) to
the ski boot through the safety bindings and (2) to the upper
surface of the ski. The apparatus includes a boot supporting
device or plate for attaching the boot both to the ski and to at
least one safety binding. The apparatus further includes at
least one support element to be positioned between the plate and
the ski. In use, the support element transmits forces between
the boot and upper surface of the ski. The apparatus also
includes a means for mounting the support element for selective
positioning relative to the plate.
The examiner presents two rejections directed to two
groups of claims: (1) Claims 24 to 27, 31 to 33, 43 to 45 and
54 to 58 under 35 U.S.C. § 103 as unpatentable over the combina-
tion of the teachings of Kuchler and Smolka; and (2) Claims 28

Appeal No. 94-0216
Application 07/884,875
15
to 30, 36 and 42 under 35 U.S.C. § 103 as unpatentable over the
teachings of these same patents combined with the disclosure in
Weigl.
In presenting the appeal, applicant has separately
addressed each rejection, but has not separately asserted the
patentability of the claims within each group. Accordingly,
the claims in each group stand or fall together. 37 CFR
§ 1.192(c)(5); In re Goodman, 11 F.3d 1046, 1053, 29 USPQ2d 2010,
2013 (Fed. Cir. 1993); In re King, 801 F.3d 1324, 1325, 231 USPQ
136, 137 (Fed. Cir. 1986); In re Sernakar, 702 F.2d 989, 991, 217
USPQ 1, 3 (Fed. Cir. 1983); In re Kaslow, 707 F.2d 1366, 1376,
217 USPQ 1089, 1096 (Fed. Cir. 1983); In re Albrecht, 579 F.2d
92, 93-94, 198 USPQ 208, 209 (CCPA 1978). Where an applicant
does not "point out what relevance the additional limitations
have to the patentability of the narrower claims," the claims
will stand or fall together even if applicant asserts that the
claims do not stand or fall together. In re Herbert, 461 F.2d
1390, 1391, 174 USPQ 259, 260 (CCPA 1972).
The 35 U.S.C. § 103 rejection based on Kuchler and Smolka
The closest prior art of record is the Kuchler patent.
Kuchler relates to a ski which is said to be both shock absorbing
and have improved sliding performance. Col. 1, lines 45-48.

Appeal No. 94-0216
Application 07/884,875
16
Kuchler's ski includes two separated portions which are joined
together to form a torsion-resistant "box." Col. 1, lines 52
to 55. Figures 1, 2, 5 and 6 show examples of the box. The box
can be an integral part of the ski structure as shown in Figure 5
or attached to the top surface of the ski as shown in Figure 1.
The box has an upper portion or surface 2. This upper portion
can be used, totally or partially, as a binding plate for the ski
bindings. Col. 4, lines 63-66.
The box includes torsion-resistant connections made by
spacers 6 and 7. E.g., col. 3, lines 49-55. In the summary of
the invention section of the patent, Kuchler describes the
function of the spacers (Col. 2, lines 16-32):
The torsion-resistant connection between the
body portions, according to the invention, is
effected by spacers which are arranged
correspondingly at intervals, in front and in
the back of the binding. Preferably, these
spacers are displaceable, and namely in the
longitudinal direction of the body portion.
Thus, a simple, individual adjustment of the
gliding device is possible.
The spacers can be detachably connected
to the body portions. Through the
modification of the distance between the
displaceable spacers or of the height of the
spacers, by corresponding replacing thereof,
the damping characteristics can also be
modified. This is of particular importance
in the case of an alpine ski, since the ski
can be adjusted optimally according to the
weight and the skill of the skier.

Appeal No. 94-0216
Application 07/884,875
17
(Emphasis added.)
Thus, Kuchler teaches the concept of utilizing
displaceable spacers to adjust the characteristics of the ski.
The difference between Kuchler and the claimed subject matter
is the failure of Kuchler to disclose a specific mechanism for
attaching the spacers at the desired location. However, based
on the level of ordinary skill in the art as represented by the
references before us, we feel that one having ordinary skill in
the art would have no trouble adapting readily available attach-
ment means to this end. The person of ordinary skill in the art
is presumed to know something about the art apart from what the
references expressly disclose. In re Jacoby, 309 F.2d 513, 516,
135 USPQ 317, 319 (CCPA 1962). We conclude that it would have
been obvious to include a conventional means for mounting or
securing the supports or spacers on Kuchler's apparatus.
The examiner relied on the Smolka patent for the
teaching of the use of safety bindings on a raised intermediate
support plate. Smolka shows a ski having binding parts 1 and 2
mounted on a rigid binding plate 3. Figures 1 to 6 and Col. 1,
lines 46 to 47. In light of Kuchler's teaching that the upper
portion of the torsion box may take up the function of the
binding plate (Col. 4, lines 63-66), it would have been obvious

Appeal No. 94-0216
Application 07/884,875
18
to attach bindings to Kuchler's upper plate. In this regard, we
note that applicant's claims do not require bindings. Rather,
the claims indicate that the intended use of the intermediate
plate is to support or act as a mounting for the bindings. See,
for example, claims 26 and 56. In any event, to the extent the
claims require or read on the inclusion of bindings, the subject
matter would have been obvious over the combined teachings of
Kuchler and Smolka.
In reaching this conclusion we have carefully
considered applicant's arguments but have not been persuaded of
error in the examiner's rejection. We fundamentally disagree
with applicant's assertions as to the teachings of the Kuchler
patent. Kuchler, in our view, teaches the use and positioning of
spacers under a boot supporting plate or surface to affect the
handling characteristics of the skis. Col. 2, lines 16-32.
The rejection of claims 24 to 27, 31 to 33, 43 to 45
and 54 to 58 is affirmed.
The rejection based on Kuchler, Smolka and Weigl
Claims 28 to 30, 36 and 42, recite an additional
difference when compared with the Kuchler patent. These claims
additionally require the inclusion of a means for restraining the
amount of movement between the intermediate support plate and the

Appeal No. 94-0216
Application 07/884,875
19
ski. The examiner relies on the Weigl patent to show that the
use of such means is old in the art. In the Answer the examiner
states:
Weigl is solely relied upon by the examiner
to show the old and well-known use of an
assembly to limit the vertical movement of a
ski binding plate assembly as set forth in
the office action (paper [N]o. 21). Such
centrally located pivoted support parts (3)
are conventional in the art and widely
utilized when a control or limit of the
binding plate is necessary or desired for
safety reasons.
The examiner concluded that it would have been obvious to employ
such restraint with respect to Kuchler's system.
Applicant argues that the incorporation of means to
limit vertical movement would not have been obvious since the
support elements would need to be positioned between Weigl's
plate and the upper portion of the ski body which would interfere
with the operation of the Weigl arrangement. It is also argued
that incorporation of the Weigl arrangement would not enhance
torsional resistance. Thus, it is argued one of ordinary skill
in the art would not have incorporated Weigl's arrangement into
Kuchler's support structure.
We agree with the examiner that the subject matter of
claims 28 to 30, 36 and 42 would have been obvious from the

Appeal No. 94-0216
Application 07/884,875
20
combined teachings of the references. The nature of the ski arts
and the references cited by the examiner demonstrate the high
level of mechanical ingenuity demonstrated by those working in
the art. We find that the level of ordinary skill in the art
includes the ability to make the adaptations necessary to incor-
porate Weigl's device into Kuchler's ski while retaining its
desirable control functions. The person of ordinary skill in
the art would desire to add Weigl's arrangement to obtain the
benefits described in the first two columns of Weigl's patent.
Applicant in effect argues that Weigl's arrangement
could not be physically incorporated into Kuchler's ski. How-
ever, the test for obviousness is not whether the disclosures of
the references could be physically combined. The test is whether
the invention is rendered obvious by the combined teachings of
the references. In re Etter, 756 F.2d 852, 859, 225 USPQ 1, 6
(Fed. Cir. 1985). Accordingly, we affirm the rejection of
claims 28 to 30, 36 and 42.
Judge Stoner's dissent on obviousness
Judge Stoner dissents from our conclusion of
obviousness. He errs in (1) giving essentially no weight to
Kuchler's express teaching that the spacers are displaceable in
the longitudinal direction to provide a simple individual

Appeal No. 94-0216
Application 07/884,875
21
adjustment, that the spacers can be detachably connected to the
body portions, and that the spacers allow optimal adjustment for
the particular skier (Col. 2, lines 16-32) and (2) limiting the
disclosure to the specific embodiments and drawings. As noted by
the CCPA:
It is axiomatic that a reference must be
considered in its entirety, and it is well
established that the disclosure of a
reference is not limited to specific working
examples contained therein.
In re Fracalossi, 681 F.2d 792, 794 n.1, 215 USPQ 569, 570 n.1
(CCPA 1982). A reference must be considered for everything it
teaches by way of technology. EWP Corp, v. Reliance Universal
Inc., 755 F.2d 898, 907, 225 USPQ 20, 25 (Fed. Cir.), cert.
denied 474 U.S. 843 (1985). Consideration of the reference in
its entirety, including both the summary of the invention and the
specific examples, leads us to conclude that the claimed subject
matter would have been obvious.
Conclusion
For the above-stated reasons (1) we conclude that we
have jurisdiction to decide this appeal; (2) we do not sustain
the examiner's rejection under 35 U.S.C. § 112, ¶ 2; and (3) we
affirm the examiner' rejections under 35 U.S.C. § 103. The

Appeal No. 94-0216
Application 07/884,875
22
rejection of claims 34-35, 37-41 and 46-52 is reversed. The
rejections of claims 24-33, 36, 42-45 and 54 to 58 are affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R.
1.136(a). 37 C.F.R. § 1.136(a)(3).
AFFIRMED-IN-PART
FRED E. McKELVEY, Chief )
Administrative Patent Judge )
)
)
)
JAMES M. MEISTER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS
) AND
) INTERFERENCES
)
RICHARD E. SCHAFER )
Administrative Patent Judge )

Appeal No. 94-0216
Application 07/884,875
23
STONER, Administrative Patent Judge, concurring-in-part and
dissenting-in-part.
I agree with the view stated in the majority opinion
that the jurisdiction conferred on the Board of Patent Appeals
and Interferences by 35 U.S.C. § 134 has been properly invoked in
this appeal by the patent applicant Philippe Lemoine ("Lemoine"
or "appellant"), although my agreement is based on different
reasons than those expressed in the majority opinion. I share
the view of the majority opinion that the rejection of claims 24,
25, 31 through 52, 54 and 55 for indefiniteness under 35 U.S.C.
§ 112, second paragraph, must be reversed. I disagree, however,
with the majority's determination that the subject matter of
claims 24 through 27, 31 through 33, 43 through 45 and 54 through
58 would have been obvious from the teachings of Kuchler and
Smolka and that the subject matter of claims 28 through 30, 36
and 42 would have been obvious from the teachings of Kuchler,
Smolka and Weigl. Accordingly, I would reverse the rejections
of those claims under 35 U.S.C. § 103 as unpatentable over the
prior art. My views on the jurisdictional issue and the § 103
rejections follow.
Jurisdiction
As the majority opinion has noted, appeals to this

Appeal No. 94-0216
Application 07/884,875
Mailed April 3, 1991.	1
24
Board are governed by 35 U.S.C. § 134, which reads as follows:
Appeal to the Board of Patent Appeals and
Interferences.
An applicant for a patent, any of whose
claims has been twice rejected, may appeal
from the decision of the primary examiner
to the Board of Patent Appeals and Inter-
ferences, having once paid the fee for such
appeal.
Apart from the fee requirement, the literal words of
the statute simply require that at least one claim be twice
rejected for a right of appeal to exist. I consider the
provisions of § 134 satisfied in this instance.
The present application is a file wrapper continuation
(FWC) application of Serial No. 07/639,095 (the '095 applica-
tion). As filed, the '095 application included claims 1 through
22 directed to an apparatus for mounting a boot upon a ski.
After receiving an Office action rejecting claims 1 through 22	1
under 35 U.S.C. § 112, second paragraph, and some of the claims
under 35 U.S.C. § 103 as unpatentable over Kuchler in view of
Smolka (along with an indication that some of the claims would
be allowed if rewritten to avoid the § 112, second paragraph
rejection), Lemoine canceled claims 1 through 22 and submitted

Appeal No. 94-0216
Application 07/884,875
Amendment filed July 3, 1991.	2
Mailed October 18, 1991.	3
Filed February 18, 1992.	4
Filed May 18, 1992.	5
25
claims 23 through 53, likewise directed to an apparatus for
mounting a ski upon a boot. In the final Office action in the	2
'095 application, claims 23 through 53 were finally rejected	3
under 35 U.S.C. § 112, second paragraph. Additionally, claims 23
through 27, 31, 32, 33, 43, 44, 45 and 53 were rejected under
35 U.S.C. § 103 as unpatentable over Kuchler in view of Smolka,
while claims 28, 29, 30, 36 and 42 were rejected under 35 U.S.C.
§ 103 as unpatentable over Kuchler in view of Smolka and Weigl.
Claims 23 through 53 were identified in the Notice of Appeal
submitted by Lemoine in the '095 application. 4
Ultimately, the appeal in the '095 application was not
perfected by the filing of a brief; instead, Lemoine filed the
present FWC application. By preliminary amendment in this FWC	5
application, Lemoine added independent claim 54, from which
claims 24 through 52 were made to directly or indirectly depend,
as well as claims 55 through 58. At the same time, Lemoine
canceled claims 23 and 53. As was true in the '095 application,

Appeal No. 94-0216
Application 07/884,875
26
the claims on this FWC application are drawn to an apparatus for
mounting a ski upon a boot. It is from the rejection of these
claims under 35 U.S.C. § 112, second paragraph, and 35 U.S.C.
§ 103 that Lemoine has appealed.
Throughout, the claims have remained drawn to substan-
tially the same subject matter which was defined in claims 1
through 22 initially filed in the '095 application, that is, to
an apparatus for mounting a boot upon a ski. At least claims 24
through 52 have survived the filing of the FWC and have been
rejected in both applications on the same grounds and on the same
evidence. As indicated above, in the '095 application, claims 23
through 27, 31, 32, 33, 43, 44, 45 and 53 were finally rejected
under 35 U.S.C. § 103 as unpatentable over Kuchler in view of
Smolka, the same rejection applied to claims 24 through 27, 31,
32, 33, 43, 44, 45 and 54 through 58 in the present application.
Likewise, claims 28, 29, 30, 36 and 42 were finally rejected
under § 103 over Kuchler in view of Smolka and Weigl in the
earlier application, the same rejection applied to the like
numbered claims in the present application. That no claim,
including none of claims 24 through 52, has retained identical

Appeal No. 94-0216
Application 07/884,875
By virtue of a change to the language of the independent claim	6
from which it depends, the language of a dependent claim may be
likewise considered to have changed, even though the dependent
claim is otherwise not amended.
While one might envision situations in which the only thing	7
remaining from an earlier claim is its claim number, with all the
language and claimed subject matter having been changed, that is
not the case here.
Indeed, the fact that the examiner has seen no need to alter8
the basis for rejection demonstrates that virtually the same
subject matter has been repeatedly claimed and rejected.
27
wording through two separate Office actions should not and does	6
not, in my view, deprive Lemoine of his right to appeal from the
Office action mailed July 17, 1992. 7
Where, as here, the examiner's rejection (and under-
lying evidence in the form of references) remains unchanged
through at least two actions on the merits, despite amendments to
the claims, there is no reasonable purpose served by forcing an
applicant like Lemoine to request reconsideration without further
amendment prior to exercising the right to appeal conferred by
35 U.S.C. § 134. In my view, to read the statute as though it	8
requires this futile act ill serves the applicant, for whom the
right of appeal has been created by statute. Additionally, such
a reading departs from a common sense understanding of what "any
of whose claims has been twice rejected" means in this context.

Appeal No. 94-0216
Application 07/884,875
28
It is on this basis that I would hold that we possess jurisdic-
tion to decide the present appeal.
I see no need to take the view, expressed in the
majority opinion, that the word "claims" in § 134 means something
other than what that term is ordinarily understood to mean in the
patent application examination process, that is, those claims
"particularly pointing out and distinctly claiming the subject
matter which the inventor regards as his invention" with which a
specification is required by 35 U.S.C. § 112, second paragraph,
to conclude. Construing the word "claims" in § 134 as though
synonymous with "requests or demands for a patent" may lead to
appeals in situations which are presently not envisioned and
quite removed from the kind of situation now before us.
The § 103 rejections
With all due respect to my colleagues in the majority
and to the examiner, I cannot agree that the combined teachings
of Kuchler and Smolka render any of independent claims 54, 55
and 56 obvious. Nor do I see anything in the teachings of Weigl,
applied only against certain dependent claims, which makes up for
the deficiency of Kuchler and Smolka.
Claim 54 defines the invention as follows, with empha-
sis added to denote that structure which I believe finds no

Appeal No. 94-0216
Application 07/884,875
29
response in Kuchler or either of the other prior art references
relied upon:
54. An apparatus for mounting a boot upon a ski, the
boot adapted to be maintained between a front safety binding and
a rear safety binding, said apparatus comprising:
(a) an intermediate support plate for affixation to the
ski for vertically supporting the boot and for having secured
thereon at least one of said front safety binding and said rear
safety binding;
(b) at least one support element having a predeter-
minate size and shape to enable said at least one support element
to be positioned between said intermediate support plate and an
upper surface of the ski, to enable at least vertical forces to
be transmitted between said intermediate support plate and the
ski;
(c) means for longitudinally displacing said at least
one support element beneath said intermediate support plate and
between said intermediate support plate and the ski for selec-
tively adjusting longitudinal positions of said at least one
support element; and
(d) means for immobilizing said at least one support
element in predeterminate longitudinal positions between said
intermediate support plate and the ski.
The language of claim 55 parallels that of claim 54,
with the exception of clause (c), for which claim 55 substitutes
a recitation of "means for selectively adjusting longitudinal
positions of at least one support element," a means likewise not
taught by the art.

Appeal No. 94-0216
Application 07/884,875
30
Claim 56, perhaps the broadest independent claim,
defines the invention as follows, again with distinguishing
emphasis added:
56. An apparatus for mounting a boot upon a ski, said
apparatus comprising:
(a) a boot-supporting device for supporting at least
one ski binding for engagement of the at least one ski binding
with the boot;
(b) at least one supporting element located between
said boot-supporting device and an upper surface of said ski,
when said apparatus is mounted upon a ski; and
(c) means for mounting said at least one support [sic,
supporting] element with respect to said boot-supporting device
for selective longitudinal positioning of said at least one
support [sic, supporting] element relative to said boot-
supporting device.
Of the three references upon which the examiner has
relied, Kuchler is, without a doubt, the closest prior art. Each
illustrated embodiment of Kuchler's skis includes, as recited in
claim 56, "a boot-supporting device for supporting at least one
ski binding for engagement of the at least one ski binding with
the boot" defined by the "upper body portion" 2. Likewise, each
illustrated embodiment of Kuchler's skis includes, as recited in
claim 56, "at least one supporting element located between said

Appeal No. 94-0216
Application 07/884,875
31
boot-supporting device and an upper surface of said ski, when
said apparatus is mounted upon a ski" defined by spacers 6 and 7.
The several embodiments discussed and illustrated by
Kuchler contain no displaceable spacers, much less any means for
mounting or securing these spacers in the manner required by
Kuchler's independent claims. Kuchler is primarily concerned
with connecting portions of a ski to one another in a torsion-
resistant manner (column 1, lines 45-58).
With regard to the embodiments of figures 1, 5 and 6,
Kuchler discloses that connection of the upper body portion 2 to
the lower body portion is achieved:
. . . via the spacers 6, 7 whereby the two
body portions 2, 3 are either directly
connected through the spacers 6, 7 as in
FIG. 1, or, as shown in FIG. 5, through an
additionally provided transition of the upper
body portion 2 into the lower body portion 3.
A further possible construction of the
torsion resistant box 49 is shown in FIG. 6.
There, an additional body portion 48 is
provided, which together with the upper
portion 2 and the spacers 6, 7 form the
torsion-restant [sic, torsion-resistant]
box 49 [column 5, lines 49-60].
Kuchler makes no mention of adjustability of the spacer location
in connection with these embodiments.

Appeal No. 94-0216
Application 07/884,875
32
The embodiment disclosed in figure 4 of Kuchler
provides that the spacers may be trapezoidally shaped. Kuchler
makes no mention of adjustability of the spacer location in
connection with this embodiment.
The embodiment disclosed in figure 7 of Kuchler simply
provides that the space between body portions 2 and 3, occupied
in part by spacers 4, 5, 6 and 7, may be closed by a sponge
rubber plate 14. Kuchler makes no mention of adjustability of
the spacer location in connection with this embodiment.
At first glance, Kuchler's figures 2 and 8 appear
to have something to do with adjustment of spacers. The
descriptions of these figures show that first impression to be
erroneous. The description with regard to figure 8 reads as
follows (emphasis added):
FIG. 8 shows an embodiment wherein the upper
body portion 2 is given the possibility to
move in longitudinal direction, with respect
to the lower body portion 3. Here the
spacers 6, 7 are provided with a guide peg 35
whose neck 36 passes through a longitudinal
slot 19 of the upper body portion 2. This
longitudinal slot 19 is formed in an elastic
material 34, so that between the neck 36 and
the lateral walls 33 of the longitudinal slot
19 there is practically no clearance left.
More specifically, when the two body portions
2, 3 are displaced longitudinally with
respect to each other, this movement is

Appeal No. 94-0216
Application 07/884,875
33
purposely damped by the elastic material 34,
respectively the conformation of the longi-
tudinal slots 19 which results in a safe
guidance of the upper body and in the preser-
vation of the torsion-resistant box, as a
whole [column 6, lines 28-44].
The description of the embodiment of figure 2 at column 5,
line 61 through column 6, line 6 reveals nothing about any
movement of the spacers, much less about the structure which
appears to protrude from the top of each of spacers 6 and 7
in figure 2 and might be thought to resemble the peg 35 of
figure 8.
It is unquestionably true that Kuchler's "SUMMARY OF
THE INVENTION" makes reference to spacers which are "displace-
able" in the longitudinal direction of the "body portion" and
states that modification of the distance between displaceable
spacers permits the damping characteristics of a ski to be
adjusted to an optimal value according to the weight and skill of
a skier (column 2, lines 16 through 32). In hindsight, knowing
what we do of the appellant's disclosed invention, it is tempting
to conclude that Kuchler's spacers are intended to be displace-
able in the same manner as the appellant's claimed supporting
element and that the spacers would be provided with the undis-
closed but "conventional means for mounting or securing the

Appeal No. 94-0216
Application 07/884,875
The majority has quietly abandoned most, if not all, of the	9
position taken by the examiner in his statement of the rejection
in the Office action mailed July 17, 1992, and the answer mailed
October 4, 1993. The examiner appears to have bottomed his
rejection on Kuchler's figure 8 embodiment, while mixing in
comments pertaining to other embodiments.
Filed June 17, 1993.	10
34
supports on Kuchler's apparatus" posited by the majority (ante,
at 14) required to meet claims 54, 55 and 56. It is also wrong.	9
The appellant's characterizations of Kuchler's
disclosure as "ambiguous" concerning the displaceable spacers
(brief, page 12) and deficient with regard to the required	10
mounting means (brief, page 19) are well taken. When Kuchler is
viewed without benefit of knowing the arrangement of elements
desired by the appellant, when the entirety of Kuchler is read
and appreciated for what it actually teaches the ordinarily
skilled worker in the art, a conclusion contrary to that reached
by the majority is required. Simply put, there is nothing
whatsoever in Kuchler's specific description of the several
embodiments, contained at column 5, line 44 through column 6,
line 43 which remotely hints at the sort of construction claimed
by the appellant.
I recognize that it is possible for a patent specifi-
cation like Kuchler's to include a description of an unillus-

Appeal No. 94-0216
Application 07/884,875
35
trated embodiment which would anticipate or render obvious the
subject matter claimed by a later applicant. In my view, the
portion of Kuchler to which the majority opinion directs atten-
tion does not do so. A reading of Kuchler's complete disclosure
would have suggested to the skilled worker that the sort of
change of spacing mentioned has more to do with constructing the
torsion-resistant box in the first place than with any adjust-
ability as claimed by the appellant. In this connection, I
direct attention to the following statement in Kuchler:
The torsion-resistant box can be
adjusted . . . to the respective conditions,
namely the running characteristics and skills
of each user, in a simple and suitable
manner, by simply replacing it. This way, it
can be manufactured as a finished part and
also handled as such, preferably it can be
mounted on available sliding devices,
particularly skis [column 2, lines 57-63].
Similarly:
The absorption of such frontal shocks can
also be achieved due to the fact that the
spacers are rigidly connected to the lower
body portion, while with respect to the upper
body portion, they are longitudinally movable
to a limited extent and laterally guidable.
The upper body portion carrying the binding
can thus move with respect to the lower body
portion carrying the gliding surface, so that
shocks can be intercepted not only in a
vertical direction, but also in a horizontal
direction . . . . The longitudinal mobility

Appeal No. 94-0216
Application 07/884,875
36
is achieved, for instance, by the fact that
the spacers are held in slits in the upper
body portion or have pegs guided in these
slits, so that the torsion-resistant con-
struction is preserved [column 3, lines
37-51; emphasis added].
I also recognize that we are to presume skill on the
part of the worker, rather than the converse. See In re Sovish,
769 F.2d 738, 226 USPQ 771 (Fed. Cir. 1985). We are not, how-
ever, authorized to speculate as to what one having ordinary
skill in the art would have understood a reference to mean,
particularly when that speculation is guided by the appellant's
own disclosure. Our court of review has repeatedly cautioned
against employing hindsight by using an applicant's disclosure as
a blueprint to reconstruct the claimed invention out of isolated
teachings in the prior art. See, e.g., Grain Processing Corp. v.
American Maize-Products Co., 840 F.2d 902, 907, 5 USPQ2d 1788,
1792 (Fed. Cir. 1988). That court has also cautioned against
focussing on the obviousness of the differences between the
claimed invention and the prior art rather than on the
obviousness of the claimed invention as a whole as § 103
requires. See, e.g., Hybritech Inc. v. Monoclonal Antibodies,
Inc., 802 F.2d 1367, 1383, 231 USPQ 81, 93 (Fed. Cir. 1986),

Appeal No. 94-0216
Application 07/884,875
37
cert. denied, 480 U.S. 947 (1987). In my view, the majority has
done just that in evaluating the teachings of Kuchler.
Apart from whatever else they teach, neither Smolka nor
Weigl has anything to do with movable spacers of the type
required by the appellant's claims and, accordingly, those
references do not make up for the features lacking in Kuchler.
I would reverse the § 103 rejections.
)
) BOARD OF PATENT
BRUCE H. STONER, JR. ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)

Appeal No. 94-0216
Application 07/884,875
38
McQuade, Administrative Patent Judge, dissenting.
This appeal is premature and should be dismissed
without a decision on its merits.
The pertinent facts are not in dispute. In parent
application Serial No. 07/639,095, originally filed claims 1
through 22 were rejected in a first Office action dated April 3,
1991 (Paper No. 3). In response, the appellant canceled claims 1
through 22 and replaced them with new claims 23 through 53 (see
Paper No. 4). Claims 23 through 53 were rejected in a "final"
Office action dated October 18, 1991 (Paper No. 7). The parent
application was subsequently abandoned in favor of the instant
file wrapper continuation application. By way of a preliminary
amendment, the appellant canceled claims 23 and 53, the two
independent claims finally rejected in the parent application,
and added new claims 54 through 58, with claims 54 through 56
being independent claims (see Paper No. 20). Claims 24 through
52 and 54 through 58 were rejected in a "non-final" Office action
dated July 17, 1992 (Paper No. 21). The present appeal was
taken from this "non-final" Office action (see Paper No. 24).
By virtue of the amendments made by the appellant in
response to the Office actions issued in the parent application,
the claims rejected in the "non-final" Office action appealed

Appeal No. 94-0216
Application 07/884,875
Although certain dependent claims may not have been amended in	1
and of themselves, they nevertheless incorporate all the
limitations of, and therefore the changes in, the claims to which
they refer. 35 USC 112, fourth paragraph.
39
from differ in substance or scope from the claims which had
been rejected in the parent application. As conceded by the	1
appellant,
[t]he independent claims entered in the
parent application (claims 1, 23 and 53) and
the independent claims entered in the instant
continuation application (claims 54, 55 and
56) have been reviewed. The wording of the
continuation claims is indeed different from
the wording of the parent claims. The
difference in the wording is believed to
result in a claim scope that is somewhat
different between the two applications. That
is, although the scopes of the respective
sets of independent claims are similar, the
scopes are not the same [Paper No. 46 filed
on June 20, 1994].
Thus, the "non-final" Office action dated July 17, 1992
(Paper No. 21) marks the first and only time that claims having
the substance or scope of appealed claims 24 through 52 and 54
through 58 have been rejected. Stated differently, none of the
claims on appeal has been twice rejected.
35 USC 134 confers on a patent applicant, "any of whose
claims has been twice rejected," the right to appeal to this

Appeal No. 94-0216
Application 07/884,875
35 USC 134 Appeal to the Board of Patent Appeals and	2
Interferences
An applicant for a patent, any of whose claims has been
twice rejected, may appeal from the decision of the primary exam-
iner to the Board of Patent Appeals and Interferences, having
once paid the fee for such appeal.
40
Board from the decision of the primary examiner. This statutory	2
right of appeal is supplemented by 37 CFR 1.191(a) which provides
in pertinent part that "[e]very applicant for a patent ... any
of the claims of which have been twice rejected or who has been
given a final rejection (§ 1.113), may ... appeal from the deci-
sion of the examiner to the Board of Patent Appeals and Inter-
ferences." Thus, in order for this Board to have jurisdiction
in an appeal, at least one of the appealed claims must be twice
rejected or the claims must be under final rejection. In the
present case, none of the claims on appeal has been twice
rejected and the decision of the examiner appealed from was not a
"final" rejection. This appeal is therefore premature and this
Board does not have jurisdiction to render a decision on its
merits.
The majority's determination that they have jurisdic-
tion to decide the appeal under 35 USC 134 is predicated on their
construction of the word "claims" as it appears in this statutory
provision as referring to a general request or demand for a

Appeal No. 94-0216
Application 07/884,875
41
patent, rather than to claims of the type required by 35 USC 112,
second paragraph. According to the majority, this interpretation
is consistent with the usage of the term "claim" in 35 USC 132.
In this light, it is rationalized that since the appellant's
"claim" or demand/request for a patent has been denied or
rejected at least twice (actually three times), 35 USC 134
affords the appellant the right to appeal to this Board.
The majority, however, has failed to advance any
authority for what is, at best, a strained interpretation of the
statutory language in question. The fact that this language
includes the modifier "any" in conjunction with the plural term
"claims" would seem to plainly and unambiguously indicate that
35 USC 134 refers to "claims" of the type required by 35 USC 112,
second paragraph, not a general demand or request for a patent,
and that at least one of such claims must be twice rejected for
an applicant to have a statutory right to appeal the examiner's
decision to this Board. This is the construction which tradi-
tionally has been accorded 35 USC 134.
For example, in In re Szajna, 422 F.2d 443, 164 USPQ
632 (CCPA 1970), the court stated that
[t]hose sections [132 and 134] do not require
that each and every claim presented during

Appeal No. 94-0216
Application 07/884,875
42
the prosecution of an application must be
twice examined and twice rejected on the same
ground. Section 134 appears to imply the
contrary since it permits an appeal to be
taken when any claim has been twice rejected.
Nevertheless, the claims here in question
have been twice rejected, contrary to
appellants' allegations, since the examiner
rejected them on the grounds of undue
multiplicity and as being based on new matter
prior to the rejection in his Answer [164
USPQ at 635; emphasis in the original].
In the same vein, the court in In re Hengehold,
440 F.2d 1395, 169 USPQ 473 (CCPA 1971) commented on the Board's
observation that 35 USC 134 "states that the purpose of an appeal
is to afford review of claims which have been ’twice rejected’ by
decision of the primary examiner" and that "[c]laims 1, 3 and 9
have not been so rejected" (169 USPQ at 477) by saying that
[o]f course, not all claims in the appli-
cation have to have been twice rejected
[169 USPQ at 477, footnote 7; emphasis in
the original].
The court in Hengehold also stated that
it is clear that, for the board to have some
jurisdiction in a case, only one claim need
be twice rejected [169 USPQ at 479; emphasis
in the original].
As noted above, due to the substantive changes encom-
passed by the appellant's cancellation and replacement of inde-
pendent claims during the prosecution of the parent and instant

Appeal No. 94-0216
Application 07/884,875
43
applications, none of the claims on appeal has been twice
rejected.
In addition, the majority's interpretation of 35 USC
134 is inconsonant with the above-noted long-standing provision
in 37 CFR 1.191(a) granting a patent applicant who has been given
a final rejection the right to appeal to this Board. A final
rejection may be given only on the second or any subsequent
examination (see 37 CFR 1.113). It therefore follows that if a
patent applicant has been given a final rejection, his or her
"claim" or demand/request for a patent has been rejected at least
twice. If 35 USC 134 had been intended to be construed as the
majority has construed it, there never would have been any need
for the foregoing provision in 37 CFR 1.191(a) since an applicant
would have had a statutory right to appeal to this Board upon any
second or subsequent rejection of his or her demand/request for a
patent irrespective of whether such rejection was a "final"
rejection.
Finally, the majority has relied on the principles that
related statutory provisions should be interpreted in pari
materia and that statutes giving the right of appeal should be
liberally construed to support their position on the jurisdic-
tional issue. Neither of these principles, however, justifies

Appeal No. 94-0216
Application 07/884,875
44
interpreting 35 USC 134 in a manner which is completely incon-
sistent with the plain and unambiguous meaning of the language
therein. That it might be desirable from a policy standpoint to
expand the right of appeal to this Board to cover fact situations
similar to that here involved is of no moment. Moreover, the
implementation of such a policy is better left to the rule making
authority of the Commissioner, rather than to dubious statutory
constructions of the type engaged in by the majority.
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)

Application for patent filed May 18, 1992. According3
to applicant, the application is a continuation of Serial
No. 07/639,095, filed January 9, 1991, abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision below (1) was
not written for publication in a law journal or reporter and (2)
is not binding precedent of the Board. The decision was entered
March 25, 1995.
Paper No. 49
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte PHILIPPE LEMOINE
________________
Appeal No. 94-0216
Application 07/884,875 3
________________
HEARD: March 23, 1994 and June 20, 1994
________________
Before McKELVEY, Chief Administrative Patent Judge, and STONER,
MEISTER, McQUADE and SCHAFER, Administrative Patent Judges.
DECISION ON RECONSIDERATION
Per curiam

Appeal No. 94-0216
Application 07/884,875
2
Pursuant to 37 C.F.R. § 1.197(b), applicant has requested
reconsideration of the decision dated December 27, 1994. Applicant
asks reconsideration of (1) Judge McQuade's dissent on jurisdiction
and (2) the majority's decision on the merits.
The panel has considered the request with the following
effect.
None of the panel members has been persuaded to change
their respective views on jurisdiction as expressed in the various
opinions. Applicant's jurisdictional points are addressed in this
per curium opinion.
By a vote of 4-0, the rejection of claims 24-33, 36,
42-45, 54 and 55 is reversed. Judge Stoner concurs.
By a vote of 3-1, the rejection of claims 56-58 is
affirmed. Judge Stoner dissents.
Judge McQuade continues to decline to participate on the
merits.
Judge Schafer's majority opinion on the merits, and Judge
Stoner's and Judge McQuade's opinions follow.
JURISDICTION
Applicant requests Judge McQuade to reconsider his
"decision" on jurisdiction. Section 1.197(b) of 37 C.F.R. provides
for a single request for reconsideration or modification of "the

Appeal No. 94-0216
Application 07/884,875
3
decision" of the Board. The only decisions in this appeal are
those of the majority. The concurrences and dissents are opinions
not decisions. Accordingly, requesting reconsideration of a
dissenting opinion is inappropriate. We will, however, construe
applicant's request as a request to modify the basis of the
majority's decisions.
Applicant urges that the Commissioner, through the
decision of a Group Director that a notice of appeal was timely
filed, has already decided that the Board has jurisdiction. In
effect, applicant asserts that, under the circumstances of this
case, we are without authority to address the jurisdiction issue.
The jurisdictional issue raised sua sponte by this Board
related to our statutory jurisdiction. In the Decision Ordering
Rehearing, mailed May 6, 1994, we stated the jurisdictional issue
as follows:
Does the Board of Patent Appeals and
Interferences have jurisdiction (35 U.S.C.
§ 134) under the circumstances of this case,
including the fact that the appeal in this
continuing case was taken from a first Office
action which was not designated by the Primary
Examiner as a final rejection.
Our authority to decide an appeal is set out in 35 U.S.C.
§ 7(b). That section mandates that the Board

Appeal No. 94-0216
Application 07/884,875
4
shall, on written appeal of an applicant,
review adverse decisions of examiners upon
applications for patents . . . . Each appeal
shall be heard by at least three members of
the [Board] . . . .
Thus, our statutory authority to review adverse decisions flows
directly from the statute. Our statutory jurisdiction does not
depend on a delegation of the Commissioner's statutory
responsibilities. In acting under our statutory authority we must
determine whether our statutory authority has been properly
invoked. See, Federal Power Comm'n v. Louisiana Power & Light, 406
U.S. 621, 647, 92 S.Ct. 1827, 1842 (1972) (While an agency's
determination of it's jurisdiction is not the last word, it must be
the first); Equal Employment Opportunity Comm'n v. South Carolina
Nat'l Bank, 562 F.2d 329, 332 (4th Cir. 1977) (The administrative
agency is responsible in the first instance for determining the
coverage of the statutes it administers); California v. Fed. Trade
Comm'n, 549 F.2d 1321, 1324 (9th Cir. 1977) (As a general rule, the
agency should make the initial determination of its own
jurisdiction); Marshall v. Able Contractors, Inc., 573 F.2d 1055,
1057 (9th Cir. 1978) (Generally an agency should make the initial
determination of its own jurisdiction). To decide whether we have
statutory jurisdiction, we must determine whether the appellant is
an applicant "any of whose claims have been twice rejected."

Appeal No. 94-0216
Application 07/884,875
5
35 U.S.C. § 134. On the matter of the jurisdiction placed on this
Board by statute, the decision of a Group Director, while worthy of
serious consideration, is not, and can not be, binding. The effect
of the Group Director's decision, in this case, was merely to
overrule the examiner's decision not to transmit the application to
the Board because the application was abandoned.
We recognize that 37 C.F.R. § 1.191(e) provides that
jurisdiction over an application vests in the Board when the
application is transmitted to the Board. However, this provision
does not create jurisdiction, it merely specifies timing.
Normally, jurisdiction over a matter transfers to an appellate
tribunal upon the filing of an appeal. Our jurisdiction does not
attach until the examining corps has finished its job and transfers
the application file to the Board. This permits, inter alia,
examiners to allow the application to issue or enter new grounds of
rejection without requesting a remand from the Board. While under
appropriate circumstances, an examiner or a Group Director may
refuse to transmit an application to the Board (see, 37 C.F.R.
§ 1.193(a)), they can not create jurisdiction where none exists.
All panel members adhere to the views on jurisdiction
expressed in their original opinions.

Appeal No. 94-0216
Application 07/884,875
Construing the claims as required by 35 U.S.C. § 112, ¶ 6, was	4
not raised in applicant's brief (which was filed prior to the
Donaldson decision) or during either oral argument. Because of
the particular circumstances of this case we have exercised our
discretion to address a belatedly raised issue.
6
SCHAFER, Administrative Patent Judge
THE MERITS
Applicant asks us to reconsider our decision on
patentability in light of 35 U.S.C. § 112, ¶ 6 as construed by In
re Donaldson Co. Inc., 16 F.3d 1189, 29 USPQ2d 1845 (in banc) (Fed.
Cir. 1994). Applicant states at page 9 of the request for
reconsideration:
Appellant respectfully submits that the
interpretation of certain claim limitations in
accordance with the provisions of §112, sixth
paragraph, have been overlooked by the
majority in its decision in affirming the
rejection under §103.
Applicant points out (page 9) that the last two subparagraphs of
claims 54 and 55 and the last subparagraph of claim 56 use means
plus function format. Applicant argues that these limitations must
be interpreted as required by 35 U.S.C. § 112, ¶ 6, and as so
interpreted the rejection based on Kuchler should be reversed.
In our original decision, we did not apply 35 U.S.C.
§ 112, paragraph 6, to the means clauses in the claims. Applicant	4

Appeal No. 94-0216
Application 07/884,875
7
specifically argues that Kuchler and the other references do not
have
any disclosed structure or equivalent
structure that corresponds to appellant's
c l a i m e d "means of longitudinally
displacing . . ." and "means for
immobilizing . . .", in claim 54; "means for
selectively adjusting . . ." and "means for
immobilizing . . .", in claim 55; or "means
for mounting said at least one support element
with respect to said boot-supporting device
for selective longitudinal positioning . . .",
in claim 56.
Recon., p. 9, lines 13-20. Applicant states that Kuchler "does not
evidence a teaching or suggestion of the structure described by
appellant or the equivalent thereof . . . ." (Recon., p. 10, lines
2-6, (emphasis original)) and that in "Kuchler, there is no
disclosure of appellant's specifically disclosed means or
equivalent(s) thereof" (Recon. p. 10, lines 16-17).
In Donaldson, the Federal Circuit gave the following
guidance with respect to the application of paragraph 6 of § 112:
For the foregoing reasons, the PTO was
required by statute to look to [the]
specification and construe the "means"
language recited in the last segment of claim
1 as limited to the corresponding structure
disclosed in the specification and equivalents
thereof.
16 F.3d at 1195, 29 USPQ2d at 1850 (emphasis added). See also,
Valmont Indus. Inc. v. Reinke Mfg. Co. Inc., 983 F.2d 1039, 1042,

Appeal No. 94-0216
Application 07/884,875
8
25 USPQ2d 1451, 1454 (Fed. Cir.) (Paragraph 6 of Section 112
"limits the applicant to the structure, material, or acts in the
specification and their equivalents."). Thus, we first look to the
specification to determine the structure which corresponds to the
recited means.
Applicant directs us to two specific embodiments which
correspond to the "means of longitudinally displacing . . ." and
"means for immobilizing . . ." set forth in claim 54. Thus,
applicant states:
Specifically, in the embodiment shown in
appellant's Figs. 2 and 3, e.g., described on
page 6, lines 9-23, of the specification,
there is a means for displacing and for
immobilizing the support slide 13 in the form
of lever 17 having a cam 18 for securing same
against the support plate 5. In the
embodiment of Fig. 5, appellant has provided,
for this purpose, a screw 24 having a head 25
to permit turning the turning screw and the
displacement of the support 23 which is
positioned along the screw.
Recon., p. 10, lines 8-15. Applicant has not informed us of the
structure which corresponds to the "means for selectively
adjusting . . ." and "means for immobilizing . . ." of claim 55;
or the "means for mounting said at least one support element with
respect to said boot-supporting device for selective longitudinal
positioning . . ." of claim 56.

Appeal No. 94-0216
Application 07/884,875
9
After reviewing the specification, we find that the
specification describes two structures corresponding to the "means
of longitudinally displacing . . ." and "means of
immobilizing . . ." of claim 54 and "means for selectively
adjusting . . ." and "means of immobilizing . . ." of claim 55.
The first is the structure shown in Figures 2, 3 and 7 and the
related description appearing at page 6, lines 9-23 of the
specification. The second is the structure shown in Figures 5 and
6 and the related description appearing at page 7, lines 18-33 and
page 8, lines 9-18. As noted by applicant (Recon. p. 10, lines 8-
15), these two structures are a slide and cam mechanism and a slide
and screw mechanism.
According to 35 U.S.C. § 112, ¶ 6, as construed by our
reviewing court, the means clauses are limited to these two
structures and equivalent structures. Donaldson, 16 F.3d at 1197,
29 USPQ2d at 1850; Valmont, 983 F.2d at 1042, 25 USPQ2d at 1454.
A structure is an "equivalent" if it differs from the disclosed
structure by an insubstantial change which adds nothing of
significance. Valmont, 983 F.2d at 1042, 25 USPQ2d at 1455. We
recognize that applicant's specification indicates that the
specific structures disclosed are "non-limiting examples." E.g.,
specification, p. 2, line 33 to p. 3, line 3. However, the

Appeal No. 94-0216
Application 07/884,875
While not apparent from the court's opinions, the patents5
involved in both Donaldson and Valmont included language which
indicated that the structure disclosed in the specification was
also "non-limiting." Thus, the Schuler patent involved in the
reexamination before the court in Donaldson indicated that the
disclosure was "but illustrative" of the invention. U.S. Patent
No. 4,395,269, col. 8, lines 29 to 33. The Seckler et al. patent
involved in Valmont indicated that the specific control means
described in the specification was merely a "preferred
embodiment." U.S. Patent No. 3,802,627, col. 5, line 64 to col.
6, line 5.
10
language of paragraph 6, is unequivocal in mandating that means
plus function "shall be construed to cover the corresponding
structure, materials or acts described in the specification and
equivalents thereof." Our reviewing court has instructed that
means claims are limited to the structures disclosed by the
specification and equivalents. Donaldson, 16 F.3d at 1197, 29
USPQ2d at 1850; Valmont, 983 F.2d at 1042, 25 USPQ2d at 1454. 5
We must now compare the structures disclosed in the
specification with the reference disclosures. The references do
not teach either the slide and cam or the slide and screw
structures or a structure that differs only insubstantially from
applicant's structures. Nor do we see a basis for concluding that
applicant's structures or their equivalents would have been
obvious. The record before us provides no basis for modifying
Kuchler's teachings by the addition of the cam or screw structures
or structures which are insubstantially different from the cam and

Appeal No. 94-0216
Application 07/884,875
11
screw structures. The subject matter of these claims would not,
therefore, have been prima facie obvious. Accordingly, we reverse
the rejection of claims 54 and 55 and dependent claims 24-33, 36,
and 42-45.
We reach a different result with respect to the broadest
claim, claim 56. It claims:
56. An apparatus for mounting a boot upon a
ski, said apparatus comprising:
(a) a boot-supporting device for
supporting at least one ski binding for
engagement of the at least one ski binding
with the boot;
(b) at least one supporting element
located between said boot-supporting device
and an upper surface of said ski, when said
apparatus is mounted upon a ski; and
(c) means for mounting said at least one
support element with respect to said boot-
supporting device for selective longitudinal
positioning of said at least one support
element relative to said boot-supporting
device.
Kuchler describes an apparatus, a torsion-resistent box,
for mounting a boot on a ski. The box may be manufactured as a
finished part for attachment to a ski (Fig. 1 and col. 2, lines 61-
63) or incorporated as part of the ski itself (Fig. 5). The box
has an upper portion or surface 2. The upper portion can be used,
totally or partially, as a binding plate for the ski bindings.
Col. 4, lines 63-66. Thus, the upper portion 2, is a "boot-

Appeal No. 94-0216
Application 07/884,875
12
supporting device" as required by part (a) of the claim. The box
includes torsion-resistant connections, spacers 6 and 7. E.g.,
col. 3, lines 49-55. These spacers are located between the "boot-
supporting device and an upper surface of said ski, when said
apparatus is mounted upon a ski." E.g., Figs. 1 and 6. Thus
Kuchler teaches element (b). According to Kuchler (Col. 2, lines
20-32):
Preferably, these spacers are displaceable,
and namely in the longitudinal direction of
the body portion. Thus, a simple, individual
adjustment of the gliding device is possible.
The spacers can be detachably connected to the
body portions. Through the modification of the
distance between the displaceable spacers or of the
height of the spacers, by corresponding replacing
thereof, the damping characteristics can also be
modified. This is of particular importance in the
case of an alpine ski, since the ski can be
adjusted optimally according to the weight and the
skill of the skier. [Emphasis added.]
Thus, we find that Kuchler teaches the "selective longitudinal
positioning of said at least one support element relative to said
boot-supporting device."
Looking to applicant's specification for the structure
corresponding to the "means for mounting," we find that the
specification discloses five structures which correspond to this
means. The first two are the cam and slide and cam and screw
structures discussed above. The third is the slide and guidance

Appeal No. 94-0216
Application 07/884,875
13
shaft structure shown in Figures 9 and 10 as described at page 9,
line 26 to page 10, line 5 of the specification. The fourth is the
slide and support plate structure shown in Figure 1 and described
at page 5, line 21 to page 6, line 8. The last is the slide and
support plate structure shown in Figure 11 and described at page
10, lines 10-14.
As we indicated above, the references do not teach or
render obvious the slide and cam or the slide and screw or
equivalent structures. We also hold that Kuchler does not teach or
render obvious the slide and guidance shaft structure, the slide
and support plate structure of the type shown in Figure 11 or
equivalent structures. The references provide no suggestion to
modify Kuchler's disclosed structure by including these features.
However, we do find that the mounting structure shown in
Kuchler's Figure 5 is very similar to that shown by applicant's
Figure 1. In both figures the support elements are shown secured
to the ski by their respective support plates. We find that the
only difference between the structure shown in Figure 1 as
described at page 5, line 21 to page 6, line 8, is in the manner of
attaching the support plate to the ski. Applicant attaches the
support plate 5 to a ski by means of screws 6 and 8. Kuchler's
Figure 5 shows a single-piece ski and support plate 2. Kuchler,

Appeal No. 94-0216
Application 07/884,875
Applicant has not separately argued the limitations of dependent	6
claims 57 and 58. Accordingly, those claims fall with claim 56.
37 C.F.R. § 1.192(c)(5); In re Goodman, 11 F.3d 1046, 1053, 29
USPQ2d 2010, 2013 (Fed. Cir. 1993).
14
however, also teaches that the torsion box may be manufactured as
a finished part for attachment to existing skis. Col. 2, lines 61-
63. Thus, one having ordinary skill in the art would know that a
single-piece ski and support plate and an attachable support plate
are workable alternatives. Accordingly, we conclude that it would
have been prima facie obvious to substitute a separate support
plate, attached to a ski by screws or other conventional attachment
means, for Kuchler's combined ski and support plate. The rejection
of claims 56-58 is affirmed. 6

Appeal No. 94-0216
Application 07/884,875
15
CONCLUSION
The request for reconsideration is granted to the extent
that the rejection of claims 24-33, 36, 42-45 and 54 to 55 is
reversed. The request for reconsideration is denied to the extent
the affirmance of claims 56 to 58 is not changed.
GRANTED-IN-PART
FRED E. McKELVEY, Chief )
Administrative Patent Judge )
)
)
)
JAMES M. MEISTER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS
) AND
) INTERFERENCES
)
RICHARD E. SCHAFER )
Administrative Patent Judge )

Appeal No. 94-0216
Application 07/884,875
16
STONER, Administrative Patent Judge, concurring-in-part and
dissenting-in-part.
I welcome the modification of the view formerly expressed
by the majority with regard to the correctness of the rejection of
independent claims 54 and 55 and claims 24 through 33, 36 and 42
through 45 dependent therefrom under 35 U.S.C. § 103. As to the
rejection of independent claim 56 and claims 57 and 58 dependent
therefrom, I remain of the view expressed in my dissenting opinion
to the decision entered December 27, 1994. With the majority's
modification of its earlier view, I need now dissent only from the
determination that claims 56 through 58 are unpatentable under 35
U.S.C. § 103 based on the teachings of Kuchler and Smolka.
For reasons which should be clear from my earlier
opinion, I do not find it necessary to engage in the sort of
analysis under In re Donaldson Co., 16 F.3d 1189, 29 USPQ2d 1845
(Fed. Cir. 1994) (in banc) which the majority has performed. The
references upon which the examiner and the majority have relied
fail to teach or make obvious the functions associated with the
several "means plus function" clauses of independent claims 54, 55
and 56. A reference which in the first instance fails to respond
to the functional portion of a "means plus function" limitation
does not, without more, teach or make obvious that limitation.
See, e.g., Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 4
USPQ2d 1737 (Fed. Cir. 1987). The references plainly do not

Appeal No. 94-0216
Application 07/884,875
17
contain any structure which necessarily performs the same functions
as those recited in the claims. It is fundamental that a Donaldson
"equivalents" analysis is unnecessary where the references relied
upon fail to teach or make obvious any element performing the
identical function specified in the claim.
)
) BOARD OF PATENT
BRUCE H. STONER, JR ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)

Appeal No. 94-0216
Application 07/884,875
18
McQuade, Administrative Patent Judge.
The appellant requests that I reconsider my position on
jurisdiction as set forth in the decision dated December 27, 1994
(Paper No. 47) and join in the decision on the merits of this
appeal. This request is based on the proposition that
... the issue of jurisdiction under 35 USC 134
of the instant appeal has already been raised
by the examiner and the Commissioner has
already decided, in the decision of June 10,
1993, that jurisdiction is proper [request,
page 3].
The decision of June 10, 1993 (Paper No. 29) was a
decision on petition by the Director of Examining Group 3100
granting the appellant's request to withdraw a holding of
abandonment made by the examiner. Thus, the point of contention
involved an action taken by the examiner and the exercise of
supervisory authority by the Group Director to reverse such action.
The Group Director's exercise of supervisory authority over the
examiner in this regard is clearly not binding on this Board
insofar as the issue of our jurisdiction under 35 USC 134 is
concerned.

Appeal No. 94-0216
Application 07/884,875
19
I therefore decline to make any changes in my position as
set forth in the decision dated December 27, 1994.
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)