CHALK, F N et al.

Patent Trials and Appeals Board

Dec 6, 2019

14678570 - (D) (P.T.A.B. Dec. 6, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/678,570 04/03/2015 F N CHALK JR. 821413-1010 1006
24504 7590 12/06/2019
THOMAS | HORSTEMEYER, LLP
3200 WINDY HILL ROAD, SE
SUITE 1600E
ATLANTA, GA 30339
EXAMINER
HALL, FORREST G
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
12/06/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@thomashorstemeyer.com
ozzie.liggins@tkhr.com
uspatents@tkhr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte F N CHALK JR., STEPHEN DAVID OPIE, and JAMES TSEN
__________

Appeal 2018-009172
Application 14/678,570
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, JAMES A. WORTH, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 2, and 4–20, which are all the claims pending in
the application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as “NFINITY IP,
LLC.” Appeal Br. 3.
2 Claims 3 and 21 have been cancelled. Id. at 24 (Claims App.); see also
Advisory Act. (mailed Feb. 23, 2018).
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CLAIMED SUBJECT MATTER
Appellant’s disclosure “relate[s] generally to an athletic shoe, and
more particularly, to a shoe sole assembly having an energy return system.”
Spec. ¶ 2. Sole independent claim 1, reproduced below, is representative of
the subject matter on appeal.
1. A shoe sole assembly having a vertical axis extending
therethrough, comprising:
a midsole having an upper midsole surface, a lower
midsole surface, a midsole forefoot portion, and a midsole heel
portion;
at least one stabilizer plug having an upper stabilizer plug
surface, a lower stabilizer plug surface, at least one trampoline
recess disposed in the upper stabilizer plug surface, and at least
one projection extending outwardly from the lower stabilizer
plug surface relative to the vertical axis, wherein the at least one
trampoline recess does not protrude the lower stabilizer plug
surface and each projection of the at least one projection
substantially underlies at least a portion of the at least one
trampoline recess; and
at least one outsole member having an upper outsole
surface and a lower outsole surface, wherein the upper outsole
surface of each outsole member is adapted to complementarily
receive the at least one projection of a corresponding stabilizer
plug;
wherein the lower midsole surface defines at least one
stabilizer plug recess, wherein each of the at least one stabilizer
plug recesses is sized and shaped to receive a corresponding
stabilizer plug of the at least one stabilizer plug; and
wherein, when a force is applied to the lower outsole
surface during a foot strike, the at least one trampoline recess
receives underlying portions of the stabilizer plug to
accommodate elastic deformation of the underlying portions of
the stabilizer plug and the outsole member relative to the
vertical axis.

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REFERENCES
The prior art relied upon by the Examiner:
Name Reference Date
Gross US 6,412,196 B1 July 2, 2002
Oorei et al. (“Oorei”) US 2002/0148142 A1 Oct. 17, 2002
Young-Chul US 7,523,566 B2 Apr. 28, 2009

REJECTIONS
1. Claims 1, 2, and 4–20 are rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement.
2. Claims 1, 2, and 4–20 are rejected under 35 U.S.C. § 112(b) as being
indefinite.
3. Claims 1, 2, 4, 5, 7–10, 15, and 18 are rejected under 35 U.S.C.
§ 102(a)(1) as being anticipated by Gross.
4. Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over
Gross and Young-Chul.
5. Claims 11–14, 16, and 17 are rejected under 35 U.S.C. § 103 as being
unpatentable Gross.
6. Claims 19 and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Gross and Oorei.
OPINION
Written Description Rejection
Appellant contends that the rejection of independent claim 1 under 35
U.S.C. § 112(a) as to the limitation “at least one trampoline recess does not
protrude the lower stabilizer plug surface,” is improper in view of
paragraphs 41, 48, and Figures 11A and 11B of the disclosure as originally
filed. Appeal Br. 11–12.
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The Examiner disagrees and maintains the rejection as failing to
comply with the written description requirement because
Figs. 11A-11D do not provide sufficient clarity to support the
negative limitation recited above. It is unclear from Figs. 11A-
11D at least whether the recesses (406) are throughhole or
blind-hole recesses and it is therefore unclear from the figures
which structures are/are not being shown regarding the
relationship between the trampoline recess(es) and the lower
stabilizer plug surface.
Answer 3. We agree with Appellant.
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v. Faulding
Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter
(i.e., using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellant was in
possession of the claimed invention. See id.
Here, although the Specification does not explicitly describe “at least
one trampoline recess does not protrude the lower stabilizer plug surface,” a
person of ordinary skill in the art reviewing Appellant’s disclosure,
including the claim language and the drawings would have known that
Appellant was in possession of the claimed subject matter as of the filing
date. Claim 1 recites “at least one stabilizer plug having an upper stabilizer
plug surface, a lower stabilizer plug surface, at least one trampoline recess
disposed in the upper stabilizer plug surface . . . wherein the at least one
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trampoline recess does not protrude the lower stabilizer plug surface.”
Claim 1 supra. Figures 11A and 11B of Appellant’s disclosure are
reproduced below:

Figure 11A shows a top perspective of a forefoot stabilizer plug (Spec. ¶ 21)
410 with an upper stabilizer plug surface 402 “and at least one trampoline
recess 406 disposed in the upper stabilizer plug surface.” Id. ¶ 41. Figure
11B shows a bottom perspective view of the forefoot stabilizer plug of
Figure 11A (id. ¶ 21), wherein recesses 406 are distinguished from bores
414, which are shaded in black, such that “the stabilizer plug [410] further
comprises at least one bore 414 extending from the upper stabilizer plug
surface 402 to the lower stabilizer plug surface 404.” Id. ¶ 48.
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When an artisan considers Figure 11A (top view of the stabilizer plug
410, showing recesses 406 and bores 414) against Figure 11B (bottom view
of the stabilizer plug 410, showing bores 414 and projections 408), it is
ostensibly clear that shaded bores 414 are through-hole bores shown in
Figure 11B as extending beyond the lower stabilizer surface 404, whereas
recesses 406 are blind-hole indentations that are not shown to extend beyond
the lower stabilizer plug surface 404. Reply Br. 3. In other words, recesses
406 are only shown in the upper stabilizer plug surface 402 of stabilizer plug
410 (see Fig. 11A), and also described in the claim and the Specification as
being placed or “disposed in the upper stabilizer plug surface.” Spec. ¶ 41.
On the other hand, shaded bores 414 are shown in the upper and the lower
stabilizer plug surface (see Fig. 11A and 11B), and also described as
“extending from the upper stabilizer plug surface 402 to the lower stabilizer
plug surface 404.” Id. ¶ 48.
Moreover, claim 1 further recites “at least one projection extending
outwardly from the lower stabilizer plug surface relative to the vertical axis
. . . the at least one projection substantially underlies at least a portion of the
at least one trampoline recess.” Claim 1 supra. The relationship between
projections 408 relative to recesses 406 is depicted in Figures 11A and 11B,
such that each projection 408 is only shown in Figure 11B as extending
outwardly from the lower stabilizer surface 404, and described as underlying
at least a portion of recess 406. See Spec. ¶ 41. Therefore, we find the
description of recesses 406, projections 408, and bores 414 in paragraphs 41
and 48 of the Specification, and the positioning of these structures as recited
in the claim and shown in Figures 11A and 11B relative to each other,
demonstrate at least one trampoline recess 406 disposed in the upper
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stabilizer plug surface, such that the at least one trampoline recess 406 does
not protrude, i.e., “extend beyond”,3 to the lower stabilizer plug surface 404.
Thus, Appellant’s disclosure as originally filed conveys with reasonable
clarity to an artisan that the limitation “at least one trampoline recess does
not protrude the lower stabilizer plug surface,” defines a blind-hole recess
that does not extend beyond the lower stabilizer plug surface.
Accordingly, we do not sustain the rejection of claim 1, and
dependent claims 2 and 4–20, as failing to comply with the written
description requirement.

Indefiniteness Rejection
We also do not sustain the rejection of claims 1, 2, and 4–20 under 35
U.S.C. § 112(b) as to the disputed limitation “at least one trampoline recess
does not protrude the lower stabilizer plug surface,” because the Examiner
relies on the same erroneous reasoning discussed above in maintaining that
this limitation is indefinite. See Answer 3–4 (“It is unclear what structures
Figs. 11A and 11B depict at least regarding which the bore(s) and/or
trampoline recess(es) are through-hole bore(s) and/or trampoline recess(es)
or blind-hole bore(s) and/or trampoline recess(es). These Figures therefore
provide insufficient information from which to draw a conclusion as to the
meaning of the recited claim limitation.”).

3 https://www.lexico.com/en/definition/protrude (“Extend beyond or above a
surface.”) (last visited Nov. 20, 2019).
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Anticipation Rejection
Claims 1, 2, 3, 5, 7–10, 15, and 18
Independent claim 1 requires, in part,
at least one stabilizer plug having an upper stabilizer plug
surface, a lower stabilizer plug surface, at least one trampoline
recess disposed in the upper stabilizer plug surface, and at least
one projection extending outwardly from the lower stabilizer
plug surface relative to the vertical axis, wherein the at least one
trampoline recess does not protrude the lower stabilizer plug
surface and each projection of the at least one projection
substantially underlies at least a portion of the at least one
trampoline recess.
Claim 1 supra.
In rejecting this contested limitation of claim 1 as being anticipated by
Gross, the Examiner finds Gross’s contoured platform 110, as shown in
Figure 9, corresponds to stabilizer plug 410, the contoured platform 110
having a contoured inner surface 112 corresponds to the upper stabilizer
plug surface 402, and the bottom surface of platform 110 facing outsole 152
corresponds to the lower stabilizer plug surface 404. See Final Act. 8.
Further, the Examiner finds each of cavities 186 defined by contoured inner
surface 112 of contoured platform 110 correspond to trampoline recesses
406 disposed in the upper stabilizer plug surface. Id. The Examiner finds
“[t]he opposite surface of the stabilizer plug 110 that comprises the
trampoline recess comprises the projection.” Answer 4. According to the
Examiner, “Claim 1 does not recite any limitations that prevent the
trampoline recess and the projection from being coaxial. Further, in the case
where cavity 186 is a recess without cavity bottom 187, at least the
perimeter around cavity 186 would comprise a projection.” Id.
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Appellant disagrees and argues that the ordinary meaning of the term
“protrude” in the context of the limitation “is ‘not extend beyond,’” such that
“the recess does not extend beyond the lower surface of the stabilizer plug.
Any interpretation contrary to this ordinary meaning and contrary to the
specification is inherently unreasonable.” Reply Br. 4. According to
Appellant:
Claim 1 further recites that at least one projection
underlies the at least one trampoline recess. In the case of
Gross there is no projection underlying element 186, as seen in
Fig. 11 thereof. The Examiner attempts to bolster the lack of
teaching in Gross of a projection on the lower surface
underlying element 186 by arguing that claim 1 “does not recite
any limitations that prevent the trampoline recess and the
projection from being coaxial.” However, such argument
ignores that claim 1 recites the projection underlies the
trampoline recess, and further ignores that such interpretation
removes the benefit of the cooperative function of the
projection in conjunction with the trampoline recess of claim 1
that is provided by the projection underlying the trampoline
recess. Lastly, the Examiner seems to argue that a cavity, in the
case of the cavity around element 186 of Gross, can constitute a
projection underlying the lower surface of the stabilizer plug.
However, a cavity is not a projection. It is contrary to a
projection.
Id. We are persuaded of Examiner error.
Having construed the disputed trampoline recess limitation in light of
the Specification as part of our analysis under the written description
requirement, we now compare the claim to the prior art to determine if the
prior art anticipates the claim. In re Cruciferous Sprout Litig., 301 F.3d
1343, 1349 (Fed. Cir. 2002). As interpreted above, and consistent with
Appellant’s position, the limitation “at least one trampoline recess does not
protrude the lower stabilizer plug surface,” requires that Gross’s cavity 186
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does not extend beyond the lower surface of contoured platform 110, such
that cavity 186 is disposed within the inner surface 112 forming a blind-bore
recess. Figure 9 of Gross is reproduced below:

Figure 9 is a “top left side perspective view of a midsole/contoured
platform/outsole sole assembly manufactured from a second alternative
embodiment of a contoured platform.” Gross 6:64–67. Gross describes two
different configurations of cavity 186 as part of this embodiment shown in
Figure 9. In the first configuration, Gross’s cavity 186 (shown in Figure 9
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with hash lines) extends from inner surface 112 beyond its lower surface
forming a through-hole bore, such that projection 184 of midsole 160 fits
into corresponding cavity 186. Id. 12:26–27. This configuration fails to
meet the claim language as construed because that through-hole cavity
extends beyond the lower surface of contoured platform 110. In the second
configuration, however, Gross describes “a cavity 186, having a cavity
bottom 187 . . . defin[ing] an aperture, or alternatively, maybe an integral
continuous surface formed of the same material” as the contoured platform
110. Id. 8:55–59. We find this second configuration meets the claim
limitation “at least one trampoline recess does not protrude the lower
stabilizer plug surface” because in this configuration at least one cavity 186
(trampoline recess) with cavity bottom 187 forming an integral continuous
surface with platform 110, defines a blind-hole recess that does not protrude
or extend beyond the bottom surface of platform 110 (the lower stabilizer
plug surface).
Claim 1 further requires “at least one projection extending outwardly
from the lower stabilizer plug surface relative to the vertical axis . . . the at
least one projection substantially underlies at least a portion of the at least
one trampoline recess.” Claim 1 supra. As mentioned above, the Examiner
asserts that claim 1 “does not recite any limitations that prevent the
trampoline recess and the projection from being coaxial.” Answer 4.
Relying on the first configuration of Gross’s cavity 186 discussed supra, the
Examiner states that “in the case where cavity 186 is a recess without cavity
bottom 187, at least the perimeter around cavity 186 would comprise a
projection.” Id. However, we agree with Appellant that this proffered
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interpretation by the Examiner is unreasonable in light of the Specification
and the recited claim language.
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, [ ] and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Bond, 910 F.2d 831,
833 (Fed. Cir. 1990) (internal citation and quotations omitted). First, as
discussed above, the Examiner’s reliance on the first configuration of
Gross’s cavity 186 fails to meet the claimed at least one trampoline recess.
Second, even if we accept that the perimeter of cavity 186 comprises a
projection, it would be unreasonable to interpret that perimeter as
substantially underlying a portion of itself. The claim language recites two
different structures, a “trampoline recess disposed in the upper stabilizer
plug surface” and a “projection extending outwardly form the lower
stabilizer plug surface.” Claim 1 supra. The claim further defines the
relationship between these structures, such that the “projection substantially
underlies at least a portion of the at least one trampoline recess.” Id.
Figures 11A and 11B, reproduced above, depict the distinction between
trampoline recesses 406 and projections 408. Paragraph 41 of the
Specification describes these different elements in relation to each other, and
paragraph 47 describes projections 408 as having a cross-sectional shape,
“for example, a circle, an oval, any regular or irregular polygon, a diamond,
a peanut, a trefoil, a quatrefoil, a teardrop, one or a series of arcuate portions,
any irregular cross-section and the like.” And, as Appellant points out, the
Examiner’s erroneous “interpretation removes the benefit of the cooperative
function of the projection in conjunction with the trampoline recess of claim
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1 that is provided by the projection underlying the trampoline recess.”
Reply Br. 4; see Spec. ¶¶ 8, 44 (describing the purported benefit).
Consequently, we find the Examiner’s interpretation of these two
differing structures as being one and the same is inconsistent with the plain
language of the claim when read in light of the Specification. As such, the
Examiner has not shown that Gross discloses “at least one trampoline recess
disposed in the upper stabilizer plug surface, and at least one projection
extending outwardly from the lower stabilizer plug surface relative to the
vertical axis, wherein the at least one trampoline recess does not protrude the
lower stabilizer plug surface and each projection of the at least one
projection substantially underlies at least a portion of the at least one
trampoline recess,” as called for in claim 1. “[A]bsence from the reference
of any claimed element negates anticipation.” Kloster Speedsteel AB v.
Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986).
Accordingly, we do not sustain the rejection of independent claim 1,
and claims 2, 3, 5, 7–10, 15, and 18 which depend therefrom, as being
anticipated by Gross.
Obviousness Rejections
Claims 6, 11–14, 16, 17, 19, and 20
The obviousness rejections of dependent claims 6, 11–14, 16, 17, 19,
and 20 are predicated on the Examiner’s erroneous finding as to independent
claim 1 discussed above. See Final Act. 12–16. Accordingly, we do not
sustain the rejections of dependent claims 6, 11–14, 16, 17, 19, and 20 under
35 U.S.C. § 103 because the Examiner’s further reliance on Gross, Young-
Chul, or Oorei fails to remedy that deficiency.
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CONCLUSION
The rejection under 35 U.S.C. § 112(a) is reversed.
The rejection under 35 U.S.C. § 112(b) is reversed.
The rejection under 35 U.S.C. § 102(a)(1) is reversed.
The rejections under 35 U.S.C. § 103 are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
1, 2, 4–20 112(a) Written
Description
1, 2, 4–20
1, 2, 4–20 112(b) Indefiniteness 1, 2, 4–20
1, 2, 4, 5, 7–
10, 15, 18
102(a)(1) Gross 1, 2, 4, 5, 7–
10, 15, 18
6 103 Gross, Young-
Chui
6
11–14, 16,
17
103 Gross 11–14, 16,
17
19, 20 103 Gross, Oorei 19, 20
Overall
Outcome
1, 2, 4–20

REVERSED