Cole Haan LLC

Patent Trials and Appeals Board

Feb 24, 2022

2021002126 (P.T.A.B. Feb. 24, 2022)

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. 15/997,651 06/04/2018 Kyle Jenkins 56503-174524 2730 21888 7590 02/24/2022 Thompson Coburn LLP One US Bank Plaza SUITE 3500 St. Louis, MO 63101 EXAMINER NGUYEN, UYEN T ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 02/24/2022 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): ipdocket@thompsoncoburn.com ipdocket@thompsoncoburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KYLE JENKINS and KRISTAFER COUTURE Appeal 2021-002126 Application 15/997,651 Technology Center 3700 Before JILL D. HILL, CARL M. DEFRANCO, and LEE L. STEPINA, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 4, 7-15, and 17-20.2 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 Cole Haan LLC. Appeal Br. 2. 2 Claims 1, 4-15, and 17-20 are pending, with claims 5 and 6 withdrawn from consideration. Final Act. 2. Appeal 2021-002126 Application 15/997,651 2 BACKGROUND Appellant’s invention relates to shoes having a spring element. Independent claims 1 and 15, reproduced below with certain limitations emphasized, illustrate the claimed subject matter: 1. A shoe comprising: an upper; a sole coupled to the upper, the sole extending longitudinally from a sole heel end to a sole toe end and extending transversely from a sole lateral edge to a sole medial edge, the sole including a heel end region, a heel region, a midfoot region, a ball region, a toe region, a toe end region, a lateral edge region, and a medial edge region, the heel end region extending longitudinally from the sole heel end to the heel region, the heel region extending longitudinally from the sole heel end region to the midfoot region, the midfoot region extending longitudinally from the heel region to the ball region and having a lateral midfoot region and a medial midfoot region, the lateral midfoot region extending transversely from the lateral edge to the medial midfoot region, the medial midfoot region extending transversely from the medial edge to the lateral midfoot region, the ball region of the sole extending longitudinally from the midfoot region to the toe region, the toe region extending longitudinally from the ball region to the toe end region, the toe end region extending longitudinally from the toe region to the sole toe end, the lateral edge region extending from the lateral edge toward the medial edge, and the medial edge region extending from the medial edge toward the lateral edge, the sole comprising a sole member and a spring element, the sole member having a footbed surface, a bottom surface opposite the footbed surface, a heel side surface, a toe side surface, a medial side surface, and a lateral side surface, the sole member extending longitudinally from the heel end region to the toe end region, the sole member extending longitudinally from the lateral edge region to the medial edge region, the spring element being in contact with the toe side surface of the sole member, the lateral side surface of the sole member, the heel side surface of the sole member, and a portion of the medial side Appeal 2021-002126 Application 15/997,651 3 surface of the sole member, wherein the spring element is adapted and configured to support the sole member by resisting deflection due to one or more of lateral deformation of the sole member and longitudinal deformation of the sole member, wherein the spring element is pre-loaded such that the spring element is in a deformed state even when the shoe is not being worn. 15. A shoe comprising; an upper; a sole coupled to the upper, the sole extending longitudinally from a sole heel end to a sole toe end and extending transversely from a sole lateral edge to a sole medial edge, the sole including a heel end region, a heel region, a midfoot region, a ball region, a toe region, a toe end region, a lateral edge region, and a medial edge region, the heel end region extending longitudinally from the sole heel end to the heel region, the heel region extending longitudinally from the sole heel end region to the midfoot region, the midfoot region extending longitudinally from the heel region to the ball region and having a lateral midfoot region and a medial midfoot region, the lateral midfoot region extending transversely from the lateral edge to the medial midfoot region, the medial midfoot region extending transversely from the medial edge to the lateral midfoot region, the ball region of the sole extending longitudinally from the midfoot region to the toe region, the toe region extending longitudinally from the ball region to the toe end region, the toe end region extending longitudinally from the toe region to the sole toe end, the lateral edge region extending from the lateral edge toward the medial edge, and the medial edge region extending from the medial edge toward the lateral edge, the sole comprising a sole member and a spring element, the sole member having a footbed surface, a bottom surface opposite the footbed surface, a heel side surface, a toe side surface, a medial side surface, and a lateral side surface, the sole member extending longitudinally from the heel end region to the toe end region, the sole member extending longitudinally from the lateral edge region to the medial edge region, the spring element having a ground contacting portion and a side wall Appeal 2021-002126 Application 15/997,651 4 portion, the side wall portion extending upwardly from the ground contacting portion, the side wall portion of the spring element overlapping at least a portion of the sole member toe side surface, a portion of the sole member lateral side surface, a portion of the sole member heel side surface, and a portion of the sole member medial side surface, at least a portion of the sole in the medial midfoot region being devoid of the spring element, the portion of the sole comprising a portion of the medial side surface of the sole member extending from the sole member footbed surface to the sole member bottom surface and a portion of the bottom surface of the sole member adjacent the portion of the medial side surface of the sole member. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Auger US 2013/0067774 A1 Mar. 21, 2013 Dodge US 2014/0325876 A1 Nov. 6, 2014 REJECTIONS I. Claims 1, 4, 7-13, 15, and 17-19 stand rejected under 35 U.S.C. § 103 as unpatentable over Dodge. II. Claims 14 and 20 stand rejected under 35 U.S.C. § 103 as unpatentable over Dodge and Auger. Rejection I; Obviousness based on Dodge Claims 1, 4, and 7-13 In rejecting claim 1 as obvious over Dodge, the Examiner finds that Dodge discloses each of the limitations of claim 1, including a spring element, but finds that Dodge does not teach that the spring element is preloaded such that the spring element is in a deformed state even when the Appeal 2021-002126 Application 15/997,651 5 shoe is not being worn. Final Act. 3-5. The Examiner considers that, because Dodge teaches that the spring element is made of a flexible material, one of ordinary skill in the art would “recognize that the outsole of Dodge is in a deformed state when there is a load of the upper and midsole fitted on the surface of the outsole.” Id. at 5. Appellant argues that the Examiner improperly construes the “pre- load” limitation by applying a post-load analysis. Appeal Br. 6. According to Appellant, the Examiner’s analysis “ignores that the pre-loaded limitation requires that the spring element exert a spring force on the sole member even when no external forces are present in the shoe.” Id. at 7. In response, the Examiner asserts that an ordinary artisan would “recognize that the outsole 40 (together with the sole assembly) to some extent is deformed in joining the upper with the sole assembly using the method of molding as there are stressed points at the outsole 40 in using molding in joining the upper with the sole assembly.” Ans. 3. In reply, Appellant asserts that the Examiner’s contentions are unsupported, because the Examiner has not established that Dodge’s sole assembly methods necessarily results in a pre-loaded spring element. Appeal Br. 5-6. Appellant has the better position. It appears that the Examiner is relying on inherency to establish that molding induces stress, i.e., creates pre-loading. The Examiner has not, however, provided any evidence that molding introduces “stressed points” when the sole and upper are joined. For this reason, we do not sustain the Examiner’s rejection of claim 1, or claims 4 and 7-13 depending therefrom. Appeal 2021-002126 Application 15/997,651 6 Claims 15 and 17-19 Independent claim 15 differs from claim 1 by, rather than requiring the pre-loading of claim 1, requiring that at least a portion of the sole in the medial midfoot region is devoid of the spring element. The sole portion that is devoid of the spring element includes “a portion of the bottom surface of the sole member adjacent the portion of the medial side surface of the sole member.” Appeal Br. 16-17 (Claims App.). The Examiner finds that this limitation would have been obvious to an ordinary artisan based on what is depicted in Figure 10 of Dodge “for the benefit of providing reduced fatigue over extended periods of running or other activity.” Final Act. 8 (citing Dodge ¶ 51). Appellant argues that the portion of Dodge’s Figure 10 upon which the Examiner relies is the medial side surface, not the bottom surface. Appeal Br. 10. According to Appellant, in Dodge, “the bottom surface of the sole member is entirely covered by the outsole,” which the Examiner finds to be the claimed spring element. Id. at 11. The Examiner responds that Dodge discloses plural projections 45A, 45B, 45C that extend upwardly along an exposed underside 32 of the midsole. Ans. 5 (citing Dodge ¶ 66). According to the Examiner, an ordinary artisan would recognize that the sole at the midfoot region is thus exposed or lacks an outsole in this region. Id. at 5-6 (citing Dodge ¶ 52). In reply, Appellant argues that the Examiner misconstrues Dodge, because although part of underside 32 of Dodge is exposed, this exposed part corresponds to the medial side surface of the present application, not the bottom surface. Reply Br. 4-5. Appeal 2021-002126 Application 15/997,651 7 Appellant has the better position. As noted by the Examiner and Appellant, whether Dodge discloses that a portion of the sole is devoid of the spring element is resolved based on how an ordinary artisan would construe Figure 10 of Dodge, reproduced below. Figure 10 is a section view of the sole assembly taken along line 10- 10 of Figure 4. Dodge ¶ 27. Figure 10 depicts a substantially U-shaped portion of sole assembly 20 having a two-piece construction including midsole 30 and outsole 40, which the Examiner considers is the spring element. See Dodge ¶ 35; see also Final Act. 8. Midsole 30 has a thicker center portion 36 tapering on the left-hand side of the “U” to midsole web 38 on the medial side M of sole assembly 20, and tapering on the right-hand side, or lateral side L of the “U” to lateral sidewall 39. Outsole 40 is “disposed below the midsole 30” (Dodge ¶ 37) and includes “ground contacting portion 62 [that] can transition to a plurality of projections 45A, 45B and 45C, which extend upwardly along an exposed underside 32 of the midsole 30.” Id. ¶ 66. As this language suggests, the “exposed” portion 32 of Dodge’s midsole 30 is covered by projections 45A, 45B, and 45C, Appeal 2021-002126 Application 15/997,651 8 because they extend along exposed underside 32, and are “integrally formed” as part of outsole 40 (Examiner’s spring). See Dodge ¶ 66, Fig. 4. We agree with Appellant that the portion of sole 20 that remains exposed is midsole web 38, which is on medial side surface M. The Examiner has not established adequately that a portion of the bottom surface of Dodge’s sole member adjacent the portion of the medial side surface of the sole member is devoid of the spring element. Accordingly, we do not sustain the rejection of independent claim 15, and claims 17-19 depending from claim 15. Rejection II; Claims 14 and 20 -- Dodge and Auger Claims 14 and 20 depend directly or indirectly from claim 1. The Examiner does not rely on the disclosure of Auger in any manner that would remedy the shortcomings of Dodge discussed above in Rejection I. For the same reasons, we do not sustain the rejection of claims 14 and 20. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 7-13, 15, 17-19 103 Dodge 1, 4, 7-13, 15, 17-19 14, 20 103 Dodge, Auger 14, 20 Overall Outcome 1, 4, 7-15, 17-20 Appeal 2021-002126 Application 15/997,651 9 REVERSED