Elisha George. Pierce et al.

Patent Trials and Appeals Board

Sep 4, 2019

13831347 - (D) (P.T.A.B. Sep. 4, 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.
13/831,347 03/14/2013 Elisha George Pierce 106073-5001-US 4863
43850 7590 09/04/2019
Morgan, Lewis & Bockius LLP (SF)
One Market, Spear Street Tower, Suite 2800
San Francisco, CA 94105
EXAMINER
NGUYEN, BAO-THIEU L
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
09/04/2019 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):
donald.mixon@morganlewis.com
sfipdocketing@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ELISHA GEORGE PIERCE and THOMAS JELMYER
____________

Appeal 2017-011818
Application 13/831,3471
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, TARA L. HUTCHINGS, and
MATTHEW S. MEYERS, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the
Examiner’s decision rejecting claims 1, 5–8, and 10. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).

1 “The real party of interest is 7EVEN DYNAMICS, Inc., Assignee of
record.” Appeal Br. 3.
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STATEMENT OF THE CASE
Subject Matter on Appeal
The Appellants’ “invention relates to systems and methods for
securely and comfortably fastening tongueless footwear having a canopy.”
Spec. ¶ 2.
Claims 1, 5, and 6 are the independent claims. Claim 5, reproduced
below, is illustrative of the subject matter on appeal.
5. A tongueless shoe comprising:
a sole;
a first side and a second side, wherein both the first side
and the second side are coupled to the sole;
a one-piece canopy, wherein
the first side, the second side and the one-piece
canopy collectively define an outer perimeter of the opening in
the shoe for receiving a foot,
the one-piece canopy is permanently coupled to the
first side,
a front portion of the one-piece canopy is beveled
and attached to both the first side and the second side and the
one-piece canopy is configured to extend over a portion of the
second side thereby providing substantially direct support for
ankle and instep,
the one-piece canopy is configured to replace and
eliminate a shoe tongue, and
the one-piece canopy is further configured to be
fastened to the second side and the one-piece canopy is further
configured to be unfastened from the second side;
a fastening system configured to securely fasten the one-
piece canopy rearward to the second side, below the outer
perimeter of the opening, wherein the fastening system includes
an adjustable hook attached to the canopy and a loop strap with
an adjustable buckle attached to the second side; and
an expandable toe box.
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Rejections
I. Claims 1, 5–8, and 10 are rejected under pre-AIA 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
II. Claim 5 is rejected under pre-AIA 35 U.S.C. § 112, second
paragraph, as incomplete for omitting essential structural cooperative
relationships of elements.
III. Claims 1, 6–8, and 10 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Davis et al. (US 2007/0277398 A1, pub.
Dec. 6, 2007) (“Davis”) and Borsoi et al. (US 6,560,898 B2, iss. May 13,
2003) (“Borsoi”).
IV. Claim 5 is rejected, to the degree of definite, under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Davis, Borsoi, and Steinberg
(US 3,258,820, iss. July 5, 1966).

ANALYSIS
Rejection I
The Examiner determines that “a fastening system configured to
securely fasten the canopy rearward to the second side,” as recited in
independent claim 1, fails to comply with the written description
requirement. Non-Final Act. 4. Independent claims 5 and 6 include a
similar recitation as claim 1 and are rejected for the same reason as claim 1.
Id.
The Appellants argue that the Specification at paragraph 19 and
Figures 2A–C support the claim limitation at issue. Appeal Br. 19.
Figure 2A and the Appellants’ annotated version of Figure 2A are
reproduced below:
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Figure 2A is a “perspective view[] of one embodiment of a canopied shoe, in
accordance with the present invention” (Spec. ¶ 14); and the Appellants’
annotated version of Figure 2A identifies structures of the canopied shoe
(e.g., one piece canopy, side fastener, canopy fastener, and second side) and
the direction of canopy when rearwardly fastened to the second side. The
Appellants assert that the limitation at issue concerns a well-known concept
that is not described in the Specification because the term has a notoriously
clear meaning in the art. See Reply Br. 6.
In response, the Examiner determines that the Appellants’ annotated
version of Figure 2A depicts a “fastener system [that] goes upward or
downward and not rearward.” Ans. 2. The Examiner explains that “the term
‘rearwardly’ is a relative term which should have to be measured by
direction and the [S]pecification and the figures do not provide, to one of
ordinary skill in the art, the direction to be considered as ‘rearwardly’.” Id.
It appears that the Examiner’s reasoning does not consider the entirety
of the claim language, i.e., “a fastening system configured to securely fasten
the canopy rearward to the second side.” Appeal Br., Claims App.
(emphasis added). Stated otherwise, the Examiner appears to read the term
“rearward” in isolation. We agree with the Examiner that the claimed term
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“rearward” offers a direction, however the claimed phrase “to the second
side” modifies that direction. We determine that one of ordinary skill in the
art, when reading the phrase “rearward to the second side” in light of the
Specification, would understand that Figure 2A shows canopy fastener 260
and side fastener 250 being configured to securely fasten one-piece canopy
280 rearward to the shoe’s second side. Accordingly, we determine that the
written description reasonably conveys to those skilled in the art that the
inventor (i.e., Appellants) had possession of the claimed subject matter as of
the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en banc).
Additionally, the Examiner appears to reject independent claim 5 for
an additional reason.2 See Non-Final Act. 4; Ans. 2. The relevant portion of
claim 5 recites, “wherein the fastening system includes an adjustable hook
attached to the canopy and a loop strap with an adjustable buckle attached to
the second side.” Appeal Br., Claims App. The basis for the Examiner’s
rejection appears to concern the adjustable hook and its alleged attachment
to the second side. See Non-Final Act. 4; Ans. 2. However, claim 5 does
not require the adjustable hook to be attached to the second side. Rather, the
claim recites that the “adjustable hook [is] attached to the canopy.”

2 The Examiner rejects claim 6 for an additional reason under pre-AIA
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. See Non-Final Act. 4. However, claim 6 does not
include the disputed claim language. See id. We note that claim 5 includes
a recitation that is similar to the limitation at issue in the rejection. See
Appeal Br., Claims App. Accordingly, we understand the rejection of
claim 6 to be a typographical error or minor oversight. And, we presume
that claim 5 is the rejected claim.
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Therefore, we determine that the Examiner’s additional reason for rejecting
claim 5 is inadequately supported. See also Reply Br. 7.
Thus, we do not sustain the Examiner’s rejection of claims 1, 5–8, and
10 (Rejection I).

Rejection II
The Examiner rejects claim 5 “as being incomplete for omitting
essential structural cooperative relationships of elements, such omission
amounting to a gap between the necessary structural connections.” Non-
Final Act. 4–5 (citing MPEP § 2172.01). The Examiner explains the reason
for the rejection as follows:
[The] Appellant[s] do[] not explain how “an adjustable
hook and a loop strap with an adjustable buckle attached to the
second side” and showing Fig. 7 for the limitations. However,
one of ordinary skill in the art could not be seen or understood
[sic] that an adjustable hook and a loop strap with an adjustable
buckle is only attached to the second side, instead, it looks like
the strap is on one side and an adjustable hook is on the other
side and it is very vague to say an adjustable buckle is attached
on what side.
Ans. 3; see also Non-Final Act. 5.
The Appellants argue that the Examiner misquotes that language of
claim 5. See Reply Br. 7. The Appellants point out that “claim 5 recites
‘wherein the fastening system includes an adjustable hook attached to the
canopy and a loop strap with an adjustable buckle attached to the second
side.’” See id. at 7–8 (citing Spec. ¶¶ 24, 25, Figs. 6–7); see also Appeal
Br. 20–21. The Appellants are correct. Accordingly, the Examiner’s
reasoning appears to be based on an incomplete recitation of claim 5 and is
not explained on the record in sufficient detail to support a rejection under
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pre-AIA 35 U.S.C. § 112, second paragraph. Thus, we do not sustain the
Examiner’s rejection of claim 5 (Rejection II).

Rejections III & IV
In view of our determination that claims 1, 5–8, and 10 are indefinite,
infra, it follows that the rejections of these claims under 35 U.S.C. § 103(a)
must fall because they are necessarily based on a speculative assumption as
to the meaning of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA
1962). Thus, we do not sustain the Examiner’s rejections of claims 1, 5–8,
and 10 (Rejection III & IV).
It should be understood, however, that our decision in this regard is
pro forma and based solely on the indefiniteness of the claimed subject
matter set forth below, and does not reflect on the adequacy of the prior art
evidence applied in support of the rejections.

New Ground of Rejection
Claims 1, 5–8, and 10 are rejected under pre-AIA 35 U.S.C. § 112,
second paragraph, as indefinite.
A claim is indefinite when its metes and bounds are unclear because
the claim contains words or phrases whose meaning is unclear. In re
Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (during prosecution a claim
is indefinite when it contains words or phrases whose meaning is unclear);
Ex parte McAward, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017)
(precedential) (explaining that the USPTO considers a claim indefinite
“when it contains words or phrases whose meaning is unclear”).
Independent claims 1, 5, and 6 call for a “tongueless shoe” having a
“one-piece canopy.” Appeal Br., Claims App. For the following reasons,
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we determine that the claim term “canopy” is indefinite for failing to
particularly point out and distinctly claim the subject matter which applicant
regards as the invention.
It is apparent from the record that the Examiner and the Appellants
disagree as to the metes and bounds of the claim term “canopy.” The
Examiner’s construction of the term “canopy” is implied through the
application of Davis’ flap 202 as corresponding to the claimed “canopy.”
Non-Final Act. 6 (citing Davis, Figs. 1–4). Figures 1 and 2 of Davis are
reproduced below:

Figure 1 is a top view of a preferred embodiment of a shoe in a closed
position and shows first flap (not numbered) covering a second flap (not
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numbered) to provide a generally asymmetrical upper 101; and Figure 2 is a
top view of a preferred embodiment of a shoe in an open position and shows
first flap 202 overlapping second flap 204, which eliminates the need for a
conventional tongue. See Davis ¶¶ 31–32, 47. Additionally, Davis
describes flap 202’s end portion 214 as extending beyond center line 220 of
the shoe. See id. ¶ 48.
The Appellants’ construction of the term “canopy” is best presented in
the Reply Brief. Reply Br. 9. The Appellants assert that “[o]n the basis of
Appellant[s’] [S]pecification, one of skill in the art would recognize a
canopy as an article within the upper of a shoe that substantially covers a
side of a shoe.” Id. The Appellants go on to assert that the canopy
“introduces substantial asymmetry to the upper of the shoe with respect to
the sides of the shoe.” Id. The Appellants argue that Davis’ flap 202 does
not correspond to the claimed “canopy” because it does not “substantially
cover second flap 204” and introduce a “substantial asymmetry with respect
to second flap 204.”3 Id.
At the outset, we note that the claims do not provide a meaningful
limitation which enlightens a skilled artisan as to the meaning of the term
“canopy”; the Specification of the present application does not provide an
explicit definition of the term “canopy”; and the Examiner and the
Appellants do not suggest that the term “canopy” is a well-known term in
the art of footwear.
We also note that the drawings of the present application illustrate
examples of the claimed “canopy.” See Spec. Figs. 2A–C (canopy 280), 4

3 The Examiner finds that the second side of Davis’ shoe is shown by
element 112, which is referenced as a “second side,” and not second flap
204. Non-Final Act. 5; Davis ¶ 36.
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(canopy 480), 5A (canopy 580), 5B (canopy 588), 6 (canopy 680), 7 (canopy
780), ¶¶ 19, 21–25; see also Appeal Br. 7–17. An example of one
embodiment of the claimed “canopy” is shown below in Figures 2A–2C:

Figures 2A, 2B, and 2C are perspective views of an embodiment of the
canopied shoe of the present invention. Spec. ¶ 14. Figure 2A shows the
canopy fastener 260 fastened to side fastener 250, thereby securing a user’s
foot (not shown); Figure 2B shows canopy fastener 260 detached from side
fastener 250; and Figure 2C shows canopy 280 in an uplifted position away
from shoe side 270 and exposing an upper portion 275 of shoe side 270. Id.
at ¶ 19.
Additionally, we note that dictionary definitions of the term “canopy”
include: “a covering, usually of fabric, supported on poles or suspended
above a bed, throne, exalted personage, or sacred object”; “an overhanging
projection or covering, as a long canvas awning stretching from the doorway
of a building to a curb”; and “an ornamental, rooflike projection or
covering.” Canopy def. 1–3, DICTIONARY.COM, https://www.dictionary.
com/browse/canopy (emphasis added) (last visited Aug. 21, 2019). The
foregoing definitions generally call for a covering, but otherwise fail to
provide proper context for the claimed “canopy” of a “tongueless shoe.”
However, the general meaning of the term “canopy” begs the
question, what the claimed “canopy” is being used to cover? In this case,
one of ordinary skill in the art would understand that the claimed “canopy”
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of the “tongueless shoe” may cover a user’s foot (e.g., the instep of the foot),
a portion of a shoe (e.g., the upper and/or side of the shoe), or both. See
Spec. ¶ 19. The Specification does not shed enough light on the issue for
one of ordinary skill in the art to definitively answer this question.
Consequently, we determine that the “canopy” is indefinite for this reason.
For the purposes of this appeal only, even if we were to agree with the
Appellants’ construction of the claim term “canopy as an article within the
upper of a shoe that substantially covers a side of a shoe” (Reply Br. 9), this
may answer the foregoing question, but begs another –– perhaps more
important –– question. Namely, what are the limits set forth by the term
“substantially” in “substantially covers a side of a shoe”? Although one of
one skill in the art may look to the drawings of the present application (e.g.,
Figures 2A–C) to obtain examples of a canopy that “substantially covers a
side of a shoe,” these examples are unclear as to the limits (i.e., the metes
and bounds) of what substantially covering a side of a shoe may entail.
Therefore, we determine that the claim term “canopy” is indefinite for this
reason.
Lastly, to the extent that the Appellants’ assertion that the claimed
“canopy” “introduces substantial asymmetry to the upper of the shoe with
respect to the sides of the shoe” (Reply Br. 9) is included in the definition of
the term, we disagree. Id. At best, an asymmetry that is created in the upper
of the shoe is an unclaimed characteristic of a canopy and not part of its
definition. Further, and for the purposes of this appeal only, even if we were
to consider the “substantial asymmetry” of the shoe upper as part of the
definition of the term “canopy,” the limits (i.e., the metes and bounds) of
what “substantial asymmetry” requires is not clearly shown in the figures
and not discussed in the written description of the present application.
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Therefore, we determine that the claim term “canopy” is indefinite for this
reason.
Thus, we reject claims 1, 5–8, and 10 under pre-AIA 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.

DECISION
We REVERSE the Examiner’s rejections of: claims 1, 5–8, and 10
under pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement (Rejection I); and claim 5 under pre-AIA
35 U.S.C. § 112, second paragraph, as incomplete for omitting essential
structural cooperative relationships of elements (Rejection II).
We REVERSE pro forma the Examiner’s rejections of claims 1, 5–8,
and 10 under § 103(a) (Rejections III & IV).
We enter a NEW GROUND OF REJECTION of claims 1, 5–8, and
10 under 35 U.S.C. § 112, second paragraph, as indefinite pursuant to our
authority under 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
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examiner, in which event the prosecution will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record.
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).

REVERSED; 37 C.F.R. § 41.50(b)