Okajima v. Bourdeau

• Citation: 261 F.3d 1350
• Decision Date: 16 August 2001
• Docket Number: No. 104,193,104,193
• Parties: (Fed. Cir. 2001) SHINPEI OKAJIMA, Appellant, v. JOEL BOURDEAU, Appellee. 01-1090 (Interference) DECIDED:
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1350

261 F.3d 1350 (Fed. Cir. 2001)

SHINPEI OKAJIMA, Appellant, v. JOEL BOURDEAU, Appellee.

01-1090

(Interference No. 104,193)

United States Court of Appeals for the Federal Circuit

DECIDED: August 16, 2001

Appealed from: United States Patent and Trademark Office Board of Patent Appeals and Interferences

[Copyrighted Material Omitted] James A. Deland, Deland Law Office, of San Ramon, California, argued for appellant.

Michael J. Fink, Greenblum & Bernstein, of Reston, Virginia, argued for appellee.

Before MAYER, Chief Judge, MICHEL, and LINN, Circuit Judges.

MICHEL, Circuit Judge.

This is a patent interference case concerning the issue of obviousness. Shinpei Okajima appeals the August 30, 2000 Final Decision and Judgment of the Board of Patent Appeals and Interferences ("Board") of the United States Patent and Trademark Office ("PTO") which held that claims 13-24 and 26-28 of Joel Bourdeau's application are not unpatentable for obviousness. Because substantial evidence supports the Board's findings underlying its conclusion of nonobviousness, and the Board's decision was untainted by legal error, we affirm.

Background

On April 30, 1998, the PTO declared this interference between Okajima's U.S. patent application No. 08/665,679, filed June 18, 1996, and Bourdeau's U.S. patent application No. 08/676,928, filed July 8, 1996. By virtue of his earlier filing date, Okajima was initially designated the senior party. However, the Board accorded Bourdeau priority upon determining that he was entitled to a priority date of July 11, 1995, the filing date of Bourdeau's French application 95.08587. On appeal, Okajima does not contest priority.

Okajima filed a preliminary motion for judgment against Bourdeau's claims 13-24 and 26-28 on the ground that these claims are unpatentable over the prior art. The administrative patent judge ruled that these claims are not unpatentable under 35 U.S.C. § 103 in light of various combinations of prior art references, including European Patent Office Publication No. 356,400 (EP '400), published February 28, 1990; German Offenlegungsschift DE 4,333,503 (DE '503), published April 6, 1995; and U.S. Patent 5,401,041 (US '041), issued March 28, 1995. After a final hearing, the Board upheld the patentability of the subject matter of the count and Bourdeau's claims. This ruling is the subject of Okajima's appeal.

Bourdeau's claims are directed to a snowboard boot. The application, as depicted in the diagram below, discloses that a snowboarder typically bends his or her legs frontwardly and laterally, with the downhill foot inclined more sharply:¹

[Tabular or Graphical Material Omitted]

Bourdeau's claimed boot has a rigid shell surrounding the foot and a rigid back portion that cradles the back of the leg. The two pieces are joined by, among other things, a broad, rounded pin called a "journal," which permits the pieces thereby joined to pivot about an axis. The placement of the journal is key to Bourdeau's invention. Prior art boots (including DE '503 and US '041) had the journal in the back of the boot, on the boot's longitudinal median plane, such that the journal was positioned upon the snowboarder's Achilles tendon. This design allowed for substantial lateral movement, but restricted the skier's ability to bend his or her leg forward. The placement of the journal on the Achilles tendon also produced discomfort. Other prior art boots (including EP '400) had two journals, set atop the user's ankle bones, which primarily affords longitudinal flexibility. Bourdeau's allegedly nonobvious contribution to the snowboard boot art includes making a boot with a single journal that is offset from the medial plane of the boot, such that it rests in the recessed area between the Achilles tendon and the internal malleolus (i.e., the bony protuberance of the ankle) of the snowboarder.

In Bourdeau's claimed boot, the axis of the journal is disposed at an angle between 20 and 45 with respect to the longitudinal median plane of the boot (i.e., the plane running from toe to heel, and up and down through the boot). Bourdeau's claim 13, representative for present purposes, recites a "journal attachment journaling said back portion to said rear portion of said shell, said journal attachment being positioned on a medial side of the boot, along a journal axis forming an angle of between 20 and 45 with respect to the longitudinal median plane of the boot."

Bourdeau discloses that such a design improves not only the comfort of the boot, but also its mobility. As stated in his application, when the journal is placed too close to the Achilles tendon (i.e., at an angle less than 20 with respect to the longitudinal median plane of the boot), the user is afforded greater lateral mobility to the prejudice of the user's ability to bend forward. Contrarily, when the journal is placed too far towards the ankle (i.e., at an angle greater than 45 with respect to the longitudinal median plane of the boot) the user gains greater ability to bend forward, but loses lateral flexibility. Bourdeau discloses that placing the journal at an angle between 20~ and 45~ with respect to the longitudinal median plane of the boot provides optimal forward and lateral bending capacity.

Following is a diagram of the snowboard boot disclosed in EP '400, showing the use of two opposing journals 12 and 14, which the patent describes are located "in front of the outer ankle bone." EP '400, col. 4, ll. 3-4 (citation to original, translated from German).

[Tabular or Graphical Material Omitted]

Among its findings, the Board found that one of ordinary skill in the art would not have been motivated to combine the teachings of EP '400 (disclosing two opposing laterally-disposed journals atop the ankle) with DE '503 and US '041 (disclosing a single journal atop the Achilles tendon). Accordingly, the Board determined that Bourdeau's claimed boot was not unpatentable for obviousness in light of the prior art under 35 U.S.C. § 103. Okajima filed a timely notice of appeal to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4) and 35 U.S.C. § 141. We heard oral argument in this appeal on June 7, 2001.

Discussion

Whether a claimed invention is unpatentable as obvious under 35 U.S.C. § 103 is a question of law based on underlying findings of fact. In re Gartside, 203 F.3d 1305, 1316, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000). The underlying factual inquiries include: (1) the scope and content of the prior art; (2) the level of ordinary skill in the prior art; and (3) the differences between the claimed invention and the prior art. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 460 (1966). On appeal, the Board's ultimate determination of nonobviousness is reviewed de novo, but the Board's underlying factual findings are reviewed for substantial evidence. Gartside, 203 F.3d at 1316, 53 USPQ2d at 1776. Substantial evidence means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion. Id.

Okajima contends that the Board erred as a matter of law by failing to make any findings of fact regarding the level of skill in the art. As described in Al-Site Corp. v. VSI International, Inc....