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In re Lakic

December 17, 1998


Before Mayer, Chief Judge, Archer, Senior Circuit Judge, and Clevenger, Circuit Judge.

The opinion of the court was delivered by: Per Curiam.

(Serial No. 07/922,570)

Nikola Lakic appeals the decision of the United States Board of Patent Appeals and Interferences rejecting claims 46-55, 58-60, and 62 under 35 U.S.C. § 112 para. 1 (1994), and claims 31-49 and 56-62 under 35 U.S.C § 103 (1994), of U.S. patent application Serial No. 07/922,570. We affirm.

Compliance with the written description requirement of section 112, paragraph 1 is a question of fact. See Hyatt v. Boone, 146 F.3d 1348, 1352, 47 USPQ2d 1128, 1130 (Fed. Cir. 1998). Similarly, obviousness under section 103 involves issues of fact, such as what a prior art reference teaches and whether a reference provides a motivation to combine its teachings with others. See In re Beattie, 974 F.2d 1309, 1311, 24 USPQ2d 1040, 1041-42 (Fed. Cir. 1992). The board's ultimate Conclusion regarding obviousness, however, is a question of law. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). We review the board's factual findings for clear error, see In re Zurko, 142 F.3d 1447, 1449, 46 USPQ2d 1691, 1693 (Fed. Cir.), cert. granted, 119 S. Ct. 401 (1998), and its legal Conclusions de novo, see Fine, 837 F.2d at 1073, 5 USPQ2d at 1598.

Section 112 Rejections

To comply with the written description requirement of section 112, the specification must "convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention." Hyatt, 146 F.3d at 1354, 47 USPQ2d at 1132 (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 19 USPQ2d 1111, 1117 (Fed. Cir. 1991)). Where the written description fails to disclose an element explicitly, "the applicant must show that [the] absent text is necessarily comprehended in the description provided and would have been so understood at the time the patent application was filed." Id. at 1354-55, 47 USPQ2d at 1132.

Independent claim 50 and claims 51-55 dependent from it each recite an athletic shoe including "an upper having a tongue[,] . . . a pump substantially permanently affixed to said upper, and . . . a bladder at least a portion of which is associated with said flexible tongue and in fluid communication with said pump." Although Lakic's application does not expressly disclose these elements, he relies on Figure 32, which shows an inflatable lining in a laceable shoe, and language in the written description explaining that the inflatable "lining would be very useful for any shoe, particularly for sporting shoes such as tennis, or basketball" shoes. The board found that these disclosures were insufficient to support the limitations because Figure 32 shows neither a tongue nor "a flexible tongue which is `associated with' the bladder (claim 50) or a bladder `disposed within' [it] (claim 51)." Lakic counters with a declaration from one skilled in the art, which states that a "conventional basketball shoe has a flexible upper and a tongue, [and] . . . the application teaches those of us who are skilled in the art that the lining described in the application would be useful with a conventional basketball shoe, which has a tongue." Lakic argues, therefore, that the application's disclosures combined with the knowledge in the art supports claims 50-55.

We agree that the application does not have to disclose a tongue explicitly because one of ordinary skill would know that basketball and tennis shoes have tongues, but this knowledge does not overcome the other deficiencies in the specification. Lakic has not proved that his written description discloses "a bladder at least a portion of which is associated with said flexible tongue." The affidavit does not state that one of ordinary skill would "necessarily comprehend" that the bladder of Figure 32 would be associated with the tongue. The claim itself indicates that for the bladder to be associated with the tongue, "at least one weld line [of the bladder] [must] extend[] in substantially the same direction as the longitudinal axis of said tongue." It appears, however, that a tongue could be positioned under the air pillows 114, 116 in Figure 32, without any alterations to the lining. In this configuration, the tongue would be separate from the bladder and the bladder's weld line would not run in substantially the same direction as the longitudinal axis of the tongue. Thus, the written description does not convey with reasonable clarity that the bladder would be associated with the tongue in the manner recited by claims 50-55.

The board also found that the written description does not support independent claim 46 and its dependent claims 47-49, 58-60, and 62 because it fails to disclose both an air pump and relief valve that are "accessible exteriorly" of the shoe. Although Lakic argues that Figure 32 shows this feature, our review of this figure leads us to conclude otherwise. The hidden line of Figure 32 can fairly be understood to be the most exterior surface of the shoe. As a result, we cannot say the board's findings are clearly erroneous, and we affirm the section 112 rejections.

Section 103 Rejections

With respect to claims 31-36 and 61, Lakic argues that the board erred in finding that U.S. Pat. Nos. 518,579 ("Annenberg") and 4,232,459 ("Vaccari") supply the claimed elements missing from U.S. Pat. No. 3,685,176 ("Rudy `176")-namely, "a chamber which is of the size and shape, as well as being received against, the sole" and "an air pump." In light of Annenberg's explicit disclosure that its air space "may extend . . . into the sole of the boot," and Vaccari's disclosure of an air pump 2 in Figure 3, we cannot say the board's Conclusions in this regard are clearly erroneous.

Lakic further argues that Rudy `176 and Vaccari teach away from their combination with Annenberg because they both discuss the need to hold the foot firmly within the boot. Lakic also argues that Vaccari teaches away from using its pump with a flexible upper because it discloses a rigid shell. Because an airspace in the sole would not prevent the foot from being either secured inside the boot or held to the sole, Lakic's first contention must fail. Furthermore, Vaccari neither teaches nor discloses that the boot's rigid surface is required to support the pump. Accordingly, it does not teach away from using a pump with a flexible upper.

The other claims recite additional limitations to the above combinations. In concluding that these other claims are also obvious, the board made the following factual findings: (1) U.S. Pat. No. 4,912,861 ("Huang") and Vaccari disclose the element of mounting an air pump to a footwear lining; (2) U.S. Pat. No. 4,183,156 ("Rudy `156") discloses discontinuous seams in an inflatable lining; and (3) published U.K. Patent Application No. 2,085,278 ("Bolla") discloses inflatable pillows that support portions of the foot. Lakic challenges each of these findings and the motivation to combine these elements in the manner recited by claims.

Lakic argues that because Huang's inflated cushion has a permanent thickness that does not change when inflated, it would prohibit a foot from moving and forcing air from one lining to another. The board applied Huang, however, for only the broad teaching of mounting the air pump on the lining, which Huang clearly shows. Huang itself provides motivation for putting the pump directly on the lining for improved convenience. Lakic also argues that Rudy `156 and Bolla do not disclose a seamed inflatable innersole with unseamed areas at the heel, arch, and instep, which form support pillows. Although he is correct that neither reference discloses both features, Rudy `156 discloses discontinuous seams and Bolla teaches an inflatable sole ...

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