Ejnar Truelsen

Patent Trials and Appeals Board

Dec 14, 2020

2018005922 (P.T.A.B. Dec. 14, 2020)

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.
12/863,725 07/20/2010 Ejnar Truelsen 13900.0016-00000 9082
22852 7590 12/14/2020
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
PRANGE, SHARON M
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
12/14/2020 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EJNAR TRUELSEN
____________

Appeal 2018-005922
Application 12/863,725
Technology Center 3700
____________

Before JOHN C. KERINS, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.

WARNER, 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 15–32. Appeal Br. 1, 2. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral hearing was
held on January 16, 2020.
We AFFIRM.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Ecco Sko
A/S of Bredebro, Denmark. Appeal Br. 1.
Appeal 2018-005922
Application 12/863,725

2
CLAIMED SUBJECT MATTER
Appellant’s disclosed invention “concerns a sole for a shoe, in
particular for a running shoe.” Spec., p. 1, l. 3. Claim 15, reproduced
below, is the only independent claim and is representative of the subject
matter on appeal.
15. Sole for a shoe, in particular a running shoe, where the
sole comprises:
an outsole; and
a midsole,
wherein the midsole comprises:
a plurality of flex grooves on a side facing the
outsole where the flex grooves are indentations in a
surface of the midsole, and where the flex grooves
delimit pads in the midsole, and
an uninterrupted curved forefoot flex groove
emanating from a medial side of an arch and essentially
configured to follow an uninterrupted path over one or
more of cuneiform bones of a foot of a wearer and further
configured to continue between third and fourth
metatarsal phalanges of the wearer, said curved forefoot
flex groove creates a bending line in the longitudinal
direction between third and fourth metatarsal phalanges;
wherein the outsole comprises discrete outsole elements,
and
wherein the pads in the midsole and the discrete outsole
elements are arranged to follow continuously in an essentially
spiral curve around said curved forefoot flex groove.

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Application 12/863,725

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EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Clark US 6,205,683 B1 Mar. 27, 2001
Gross US 6,412,196 B1 July 2, 2002
Kozo US 7,096,605 B1 Aug. 29, 2006

REJECTIONS
The following rejections are before us for review:
I. Claims 15 and 31 stand rejected under 35 U.S.C. § 101 as being
directed to or encompassing a human organism. Non-Final
Act. 2–3.
II. Claims 15–26 and 28–32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gross and Clark. Id.
at 3–8.
III. Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gross, Clark, and Kozo. Id. at 8.

ANALYSIS
Rejection I – Claims 15 and 31 as encompassing a human organism
The Examiner determined that claims 15 and 31, which include
limitations referencing “a bending line in the longitudinal direction between
third and fourth metatarsal phalanges” (created by the flex groove), and the
bending line in the longitudinal direction “is disposed between the first three
metatarsal phalanges and the lateral two metatarsal phalanges such that the
bending line produces a 2-3 split of the metatarsal phalanges,” respectively,
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Application 12/863,725

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“encompass[] a part . . . of a human organism.” Non-Final Act. 3; see also
Ans. 2 (stating that the recitations define a “positive relationship” between
the bending line and part of a human organism).
On the record before us, however, we agree with Appellant that these
recitations in question do not encompass a part of a human organism, but
instead “define[] an area with respect to where the curved forefoot flex
groove extends in the context of a foot,” and “define[] an area with respect
to where the bending line would occur in the sole for a shoe.” Appeal Br. 6.
In other words, the identified references to metatarsal phalanges are recited
only for relative placement and positioning of portions of the claimed shoe
when on a wearer’s foot, but the claims do not actually encompass the foot
itself (or any other portion of human anatomy) as part of the claimed subject
matter. Accordingly, because the rejection under 35 U.S.C. § 101 is based
on an incorrect claim construction, we do not sustain it.

Rejection II – Claims 15–26 and 28–32 as unpatentable over
Gross and Clark
Appellant presents arguments against the rejection of independent
claim 15 (see Appeal Br. 7–11), and relies on the same arguments for the
dependent claims subject to this rejection, adding only an assertion for each
claim that the combination of Gross and Clark does not teach the recitations
of each claim (see id. at 11–21). We select independent claim 15 as
representative of the issues that Appellant presents in the appeal of this
rejection, with remaining claims 16–26 and 28–32 standing or falling
therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
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The Examiner determined that a combination of teachings from Gross
and Clark renders obvious the subject matter claimed. See Non-Final
Act. 3–5 (including an annotated reproduction of Clark, Fig. 8). Appellant
argues that the rejection is deficient because of alleged shortcomings with
Clark as to the curved forefoot flex groove “emanating from a medial side of
an arch and essentially configured to follow an uninterrupted path” over
certain bones of a wearer’s foot, continuing between certain metatarsal
phalanges of the wearer, and “creat[ing] a bending line in the longitudinal
direction between third and fourth metatarsal phalanges,” as claimed. See
Appeal Br. 7–11. Further, Appellant urges that Clark does not include
discrete sole elements that are “arranged to follow continuously in an
essentially spiral curve around said curved forefoot flex groove,” as claimed.
See id.
After careful consideration of the record before us, Appellant’s
arguments do not apprise us of error in the Examiner’s factual findings from
Gross and Clark, which are supported by a preponderance of the evidence,
or in the Examiner’s reasonable conclusion of obviousness, which is
rationally articulated based on prior art teachings. In short, we sustain the
Examiner’s rejection based on the reasoned positions set forth therein and in
light of the Examiner’s thorough responses to Appellant’s arguments. See
Non-Final Act. 3–5; Ans. 3–6.
In particular, we agree with the Examiner’s position that Clark teaches
discrete elements (defining grooves that extend within the bounded spaces
therebetween) that follow a variety of paths, including the “essentially spiral
curve” recited in the claim, as the Examiner correctly notes that “both the
spiral shape and the S-shape exist within the shoe sole” of Clark. Ans. 3.
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More specifically, the Examiner explains that “the S-shaped curve [of Clark]
is not ignored,” as Appellant alleges, “but rather is taken into consideration
as one pattern among many [patterns] present in the sole of Clark,” and that
“[t]he presence of additional patterns does not negate the existence of the
S-shaped curve” in Clark. Id. As shown in the annotated reproduction of
Clark’s Figure 8 (see Non-Final Act. 5), the Examiner is correct that Clark
teaches sole elements, defining a flex groove extending therebetween, whose
arrangement includes a continuous or uninterrupted path in a spiral curve in
the manner recited in claim 15. Ans. 4–6.
Further, because the Examiner’s finding that Figure 8 of Clark “shows
an uninterrupted curved forefoot flex groove which follows the path
described in claim 15” (id. at 5) is supported by the evidence, we also agree
with the Examiner’s position that longitudinal portions of Clark’s flex
groove sufficiently form a bending line in the longitudinal direction (about
which the sole element could flex) in the manner recited in claim 15. Id.
at 6. The identified flex groove of Clark, which the Examiner notes is
defined by the bounded “empty space [extending] between solid tread
elements,” thereby “creates a bending line” in a manner similar to
Appellant’s flex groove because the structurally defined space of the flex
groove “is more flexible than the [surrounding] portions of the sole
containing [the] solid tread elements.” Id. Thus, Appellant’s arguments do
not apprise us of error in the Examiner’s rejection.
We note that any other arguments not specifically addressed in detail
herein have been thoroughly considered by the panel but are not persuasive
for the reasons well expressed in the Examiner’s Answer.
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In conclusion, after careful consideration of the evidence of record
and for the foregoing reasons, Appellant’s arguments do not apprise us of
error in the Examiner’s findings or reasoning in support of the conclusion of
obviousness. Accordingly, we sustain the rejection of independent claim 15,
and claims 16–26 and 28–32 falling therewith, under 35 U.S.C. § 103(a) as
being unpatentable over Gross and Clark.

Rejection III – Claim 27 as unpatentable over Gross, Clark, and Kozo
Appellant relies on the arguments made previously with respect to
Rejection II, stating only that “Kozo fails to remedy the above-discussed
deficiencies of the Gross and Clark combination.” Appeal Br. 21–22. Thus,
for the same reasons explained supra in the context of Rejection II,
Appellant’s argument is not persuasive; hence, we sustain the rejection of
claim 27 under 35 U.S.C. § 103(a) as unpatentable over Gross, Clark, and
Kozo.

DECISION
We REVERSE the Examiner’s decision rejecting claims 15 and 31
under 35 U.S.C. § 101 as being directed to or encompassing a human
organism.
We AFFIRM the Examiner’s decision rejecting claims 15–26 and
28–32 under 35 U.S.C. § 103(a) as being unpatentable over Gross and Clark.
We AFFIRM the Examiner’s decision rejecting claim 27 under
35 U.S.C. § 103(a) as being unpatentable over Gross, Clark, and Kozo.
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Application 12/863,725

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

CONCLUSION
In summary:

Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
15, 31 101 Encompassing a human organism 15, 31
15–26,
28–32 103(a) Gross, Clark
15–26,
28–32
27 103(a) Gross, Clark, Kozo 27
Overall
Outcome
  15–32

AFFIRMED