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Ski-Boot Design Not Obvious

August 16, 2001

Decision icon Decision

Last Month at the Federal Circuit - September 2001

Judges: Michel (author), Mayer, and Linn

In Okajima v. Bourdeau, No. 01-1090 (Fed. Cir. Aug. 16, 2001), the Federal Circuit affirmed a holding of the Board that had found that claims 13-24 and 26-28 of Shinpei Okajima’s application were not obvious. The Federal Circuit found that the Board’s analysis was untainted by legal error and supported by substantial evidence.

Okajima argued to the contrary on appeal, urging (1) that the Board had committed reversible legal error for failing to make any findings of fact regarding the level of skill in the art at issue, and (2) that the Board’s finding that there was no motivation to combine the references Okajima had relied on below was not supported by substantial evidence. On the first issue, the Federal Circuit held that while specific findings as to the level of skill in the art are preferable, their absence is generally excusable where the prior art itself reflects an appropriate level and a need for
testimony is not shown. Okajima had urged below that there was no dispute that the level of skill was high. The Federal Circuit observed that had the Board disagreed with the parties and found the level of skill to be lower, this would only have reinforced the Board’s conclusion of nonobviousness. The Court accordingly found no harm in the Board’s failure to
set forth express findings as to the level of skill.

As to the second argument, the Federal Circuit found that the Board’s factual findings were readily sustainable under their deferential standard of review. The claims in question were directed to a snowboard boot. As with prior art boots, the front and rear portion of the boot was joined by a broad rounded pin called a “journal,” which permits the boot to pivot about an axis, permitting snowboarders to flex their legs within a certain range of motion. Generally, relocating the journal on the boot altered the permissible range of motion. The sole question raised before the Board and on appeal was whether Bourdeau’s single journal (located in the recessed area between the Achilles tendon and the bony protuberance of the ankle) would have been obvious in light of a European patent (“EP ‘400”) (disclosing two opposing laterally disposed journals atop the ankle) with a German patent (“DE ‘503”) and U.S. Patent No. 5,401,014 (“the ‘014 patent”) (disclosing a single journal atop the Achilles tendon).

The Board found that Bourdeau’s journal was not obvious because the prior art would not have motivated one of ordinary skill to place a journal in Bourdeau’s position to accomplish the range of motion Bourdeau discloses, which Bourdeau characterized as optimal forward and lateral bending capacity. EP ‘400 provided what the Board characterized as adequate swiveling action longitudinally, but appeared to hinder or obstruct most lateral movement by the wearer. The Board further found that DE ‘503 and the ‘014 patent teach the desirability of lateral movement by the wearer, as opposed to forward movement, as disclosed in EP ‘400. The Board accordingly found that there was no motivation to combine these three references to arrive at the journal placement of Bourdeau, which provides optimal forward and lateral bending capacity according to Bourdeau by placing the journal at an angle between 20 and 45 degrees with respect to the longitudinal median plane of the boot.

Noting that the Board’s decision was thorough and well supported, the Federal Circuit affirmed.