Ex Parte Barteet

Patent Trial and Appeal Board

Dec 17, 2012

10263179 (P.T.A.B. Dec. 17, 2012)

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.
10/263,179 10/03/2002 Dominique M. Barteet 986.ONSO0002U 8220
44338 7590 12/18/2012
FELDMAN GALE, P.A.
1700 Market Street
Suite 3130
Philadelphia, PA 19103
EXAMINER
PATTERSON, MARIE D
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
12/18/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOMINIQUE M. BARTEET
____________

Appeal 2010-009536
Application 10/263,179
Technology Center 3700
____________

Before CHARLES N. GREENHUT, JAMES P. CALVE, and
LYNNE H. BROWNE, Administrative Patent Judges.

Opinion for the Board filed by JAMES P. CALVE.

Opinion dissenting in part, concurring in part filed by
CHARLES N. GREENHUT

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
8, 9, and 12-35. App. Br. 2-3. Claims 1-7, 10, and 11 have been cancelled.
App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
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CLAIMED SUBJECT MATTER
Claims 8, 9, 12, 17, 22, and 27 are the independent claims on appeal.
Claim 17 is illustrative of the claimed subject matter on appeal:
A shoe assembly comprising:
a detachable vamp, left and right attachment means, and a base
member;
said vamp further comprising a single flexible planar surface having
left and right peripheral edges, front and back edges, and a top and
bottom, said vamp further being substantially rectangular;
said left and right attachment means consisting of a single system of
inner and outer releasable interlocking attachment means, each said
outer releasable interlocking attachment means being affixed to said
vamp near said left and right peripheral edges said vamp respectively;
said base member having two sides extending longitudinally along at
least a portion of said base member and an upper surface and a lower
surface, each said side having an inner releasable interlocking
attachment means being affixed thereto.
REJECTIONS
Claims 13-15, 18-20, 23-25, and 28-30 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite.1
Claims 17-19 are rejected under 35 U.S.C. § 102(b) as being clearly
anticipated by Jneid (US 5,992,058, iss. Nov. 30, 1999).
Claims 18-20 and 33 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jneid.
Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Jneid and Davis (US 6,299,962 B1; iss. Oct. 9, 2001).

1 The Answer lists claims 13-15, 28-20, 23-25, and 28-30 as subject to this
ground of rejection. See Ans. 3. We treat this as a typographical error.
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Claims 12-15, 22-25, 27-30, 32, 34, and 35 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Jneid and either of Lin (US
5,896,684; iss. Apr. 27, 1999) or Bailey (US 4,887,369; iss. Dec. 19, 1989).
Claims 16, 26, and 31 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jneid and either of Lin or Bailey and Davis.
Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Jneid, Davis, and Marlowe (US 2,607,133; iss. Aug. 19, 1952).
ANALYSIS
Claims 13-15, 18-20, 23-25, and 28-30 as being indefinite
Dependent claims 13-15, 18-20, 23-25, and 28-30 each recite “said
inner and outer releasable interlocking attachment means” further consisting
of mechanical snaps, hook and loop fasteners, or button and slot fasteners.
The Examiner found that these limitations in claims 13-15 lack antecedent
basis because claims 13-15 depend from claim 12, which recites that “said
left and right attachment means consisting of a single system of inner and
outer releasable interlocking components.” Ans. 3.2 Appellants argue that
the claimed “attachment means” could more correctly read “components” as
in the independent claims but the meaning of these limitations is sufficiently
clear because the Specification identifies snaps, hooks and loops, or buttons
and slots as the attachment means. App. Br. 12.

2 Independent claims 17, 22, and 27, from which claims 18-20, 23-25, and
28-30 respectively depend, recite “said left and right attachment means
consisting of a single system of inner and outer releasable interlocking
attachment means” and therefore appear to provide antecedent basis for the
“inner and outer releasable interlocking attachment means” recited in claims
18-20, 23-25, and 28-30. The Examiner did not make any separate findings
in this regard. Ans. 3.
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Lack of antecedent basis is not a sufficient basis for rejecting a claim
as indefinite unless one of ordinary skill in the art would not understand the
bounds of the claim as a whole when read in light of the Specification. See
Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370-71
(Fed. Cir. 2006); see also MPEP § 2173.05(e), 8th ed. (Rev. 9, Aug. 2012).
We agree with Appellants that a skilled artisan would understand what is
claimed when claims 13-15 (and claims 18-20, 23-25, and 28-30) are read in
light of Appellant’s Specification, which discloses that a detachable vamp is
releasably interlocked to a base member by interlocking attachment means
or components such as snaps, hook and loop fasteners, and button and slot
fasteners. Spec. 7-9, paras. [022]-[024]. The use of different terms implies
that they have different meanings, but the evidence indicates that Appellant
has used the terms “interlocking attachment means” and “interlocking
components” interchangeably. See Baran v. Medical Device Techs., 616
F.3d 1309, 1316 (Fed. Cir. 2010). We cannot sustain the rejection of claims
13-15, 18-20, 23-25, and 28-30 as being indefinite.
Claims 17-19 as clearly anticipated by Jneid
Appellant argues claims 17-193 as a group. App. Br. 13-17. We
select claim 17 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner found that Jneid discloses a sandal comprising a base member
12, an upper member (flexible straps 20-22) and left and right attachment
means that are of a single system of inner and outer releasable interlocking
components (snap fasteners 24, 25, hook and loop fasteners 28, 29). Ans. 4.

3 Claim 19 apparently should have also been corrected for reasons similar to
those expressed in the Order Returning Undocked Appeal to the Examiner of
Sept. 16, 2009.
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Appellant argues that the “the claims at issue herein, however, employ
a single method of fastening consisting of either mechanical snaps, or hooks
and loop fasteners or buttons and slots but not more than one.” Reply Br. 3.
Appellant argues that Jneid requires the use of both mechanical snaps and a
hook and loop system to affix a vamp (shoe strap) to a shoe base as is clear
from claims 1-4 of Jneid and Jneid’s prosecution history. App. Br. 14-15;
Reply Br. 2-3. Appellant also argues that Jneid uses multiple flexible straps
on each shoe. App. Br. 15-16; Reply Br. 3-4. These arguments are not
persuasive because claim 17 recites “[a] shoe assembly comprising: a
detachable vamp, left and right attachment means, and a base member.”
(Emphasis added). The use of “comprising” means that the named elements
are essential but other, unrecited elements such as additional vamps and
attachment means fall within the scope of claim 17. In re Skvorecz, 580
F.3d 1262, 1267-68 (Fed. Cir. 2009); In re Crish, 393 F.3d 1253, 1257 (Fed.
Cir. 2004). Jneid includes a vamp with a single flexible planar surface (any
of flexible straps 20, 21, 22). Figs. 1, 2. Jneid also discloses a single system
of inner and outer releasable interlocking attachment means such as snaps
24, 25 and hook and loop fasteners 28, 29. Appellant argues that Jneid treats
this as a single system. App. Br. 14-15; Reply Br. 2-3. Claims 18 and 19,
which depend from claim 17, recite inner and outer releasable interlocking
attachment means further consisting of mechanical snaps (claim 18) or hook
and loop fasteners (claim 19), indicating that the claimed system includes
multiple fasteners. Because claim 17 recites “A shoe assembly comprising:
a detachable vamp, left and right attachment means, and a base member,”
claim 17 covers a shoe with more than one left and right attachment means
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consisting of a single system of inner and outer releasable interlocking
attachment means. Therefore, even if Jneid’s snaps and hook and loop
fasteners are considered to be two systems, Jneid shoe still falls within the
scope of claim 17 because claim 17 reads on a shoe assembly with more
than one system of attachment means.4 See Ans. 8. We sustain the rejection
of claims 17-19.
Obviousness rejections of claims 8, 9, 12-16, and 18-35
Appellant argues the rejections of claims 8, 9, 12-16, and 18-35 as a
group. App. Br. 17-20; Reply Br. 1-5. Appellant argues that “Jneid does not
disclose that his invention may be practiced by eliminating one of the two
distinct fastening methods and instead requires both hook and loop fasteners
and snaps to be used”; therefore “Jneid expressly teaches away from such a
modification.” App. Br. 18; Reply Br. 2-3. Appellant also asserts that
“Jneid requires a ‘plurality’ of straps,” “[n]othing in the disclosure suggests
that anything less than a plurality of straps is required for the invention to
function,” and “every claim requires that a plurality of straps is needed”;
therefore “Jneid teaches away from the use of a single vamp/strap.” App.
Br. 19; Reply Br. 3-4. These arguments are not persuasive. Disclosure of a

4 In re Skvorecz, 580 F.3d 1262 (Fed. Cir. 2009) also stands for the non-
controversial proposition that the use of “comprising” as a transitional
phrase is not a license to disregard or erase a claim limitation or feature. In
that case, the claim at issue required that “each wire leg” has an offset and
the Examiner relied on the use of “comprising” to read the claim on prior art
that did not have an offset on each wire leg. Id at 1268. Here, the Examiner
has not ignored any claimed feature. To the contrary, the Examiner has
found prior art that includes all of the claimed features with some features
disclosed in duplicate or triplicate, which the use of “comprising” does not
prohibit or exclude.
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preferred embodiment does not teach away from non-preferred embodiments
absent clear discouragement of that combination. E.g., In re Mouttet, 686
F.3d 1322, 1333-34 (Fed. Cir. 2012). Mere disclosure of alternative designs
does not teach away from any of the alternatives. E.g., In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). Jneid discloses that preferably a plurality
of fasteners detachably couple the ends of the straps 20, 21, 22 to the side
wall 15 of the sole member 12 and the fasteners comprise snap fasteners in a
preferred embodiment. Col. 4, ll. 25-26. Jneid discloses that the fasteners
may further comprise a hook and loop fastener in a preferred embodiment.
Col. 4, ll. 42-43. Similarly, Jneid discloses that the system includes a
plurality of flexible straps 20, 21, 22. Col. 4, ll. 15-16. This disclosure does
not criticize, discredit, or discourage the use of only snap fasteners (Ans. 8)
or only a single vamp, particularly where Jneid also discloses that:
With respect to the above description then, it is to be
realized that the optimum dimensional relationships for the
parts of the invention, to include variations in size, materials,
shape, form, function and manner of operation, assembly and
use, are deemed readily apparent and obvious to one skilled in
the art, and all equivalent relationships to those illustrated in the
drawings and described in the specification are intended to be
encompassed by the present invention.
Therefore, the foregoing is considered as illustrative only
of the principles of the invention. Further, since numerous
modifications and changes will readily occur to those skilled in
the art, it is not desired to limit the invention to the exact
construction and operation shown and described, and
accordingly, all suitable modifications and equivalents may be
resorted to, falling within the scope of the invention.
Col. 4, l. 65 to col. 5, l. 12.

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Appellant also argues that it would not have been obvious to combine
Davis’s silk-screening with Jneid because “Jneid makes no mention of
providing any decorative indicia on the shoe upper” and “Jneid’s straps do
not provide an appropriate shape or sufficient size for decorating with
indicia, and there is no suggestion that such can be, or should be, done.”
App. Br. 19. This argument does not persuade us of error in the Examiner’s
finding that Davis teaches the use of silk screening to provide indicia on a
footwear upper and determination that it would have been obvious to use
silk screening as taught by Davis in Jneid’s shoe to provide ornamentation or
indicia on the sandal upper. Ans. 5 (citing Davis, col. 3, ll. 45-55).
Appellant also argues that the commercial success and copying of the
invention provide independent evidence of non-obviousness. Reply Br. 4.
Appellant argues that “although competitors’ interchangeable shoes existed
at the time the inventor launched the instant invention, none had achieved
any significant commercial success or notoriety.” Reply Br. 4-5; App. Br.
19-20. Appellant also asserts that the commercial success of the shoes has
caused numerous competitors to market knock-off imitations. Reply Br. 5;
App. Br. 20. Appellant also argues that the commercial success occurred
with no formal marketing and no advertising budget. App. Br. 20.
Appellant’s evidence of commercial success includes sales revenues
from 2004-2007, media publicity, written testimonials, and interests in the
OneSole® shoe by celebrities and the U.S. Postal Service. Barteet Decl.
(Sep. 12, 2007), ¶¶ 5-7. Sales revenues are weak evidence of commercial
success because Appellant has not provided any evidence of market share,
growth of market share, or sales to replace prior art shoes. See In re Huang,
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100 F.3d 135, 139-40 (Fed. Cir. 1996) (absent evidence that sales are a
substantial quantity in the relevant market, bare sales numbers are a weak
showing of commercial success); In re Baxter Travenol Labs., 952 F.2d 388,
392 (Fed. Cir. 1991) (information based solely on numbers of units sold is
insufficient to establish commercial success); Kansas Jack, Inc. v. Kuhn, 719
F.2d 1144, 1150-51 (Fed. Cir. 1983) (same).
To the extent sales resulted from an interchangeable vamp, Appellant
admits that interchangeable vamps were known in the art when the shoe was
developed. Barteet Decl. (Sep. 12, 2007), ¶ 4. Appellant attributes success
of the shoe to a snap fastening system that allows a single interchangeable
vamp to be quickly and easily attached or removed and replaced with other
interchangeable vamps. Id. ¶¶ 4, 9. However, mechanical snaps are only
recited in claims 8, 13, 18, 23, and 28. Moreover, Jneid discloses that snaps
are used to attach an upper member to a base member of a shoe. If a feature
that creates commercial success was known in the prior art, no nexus exists.
E.g., Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir.
2011). Objective evidence of non-obviousness also must be reasonably
commensurate in scope with the claims. See In re Tiffin, 448 F.2d 791, 792
(CCPA 1971); In re Hiniker Co., 150 F.3d 1362, 1368-69 (Fed. Cir. 1998).
The testimonials indicate that the snap feature is popular because it “can
withstand 70 mph winds to stay on the shoe making them secure while
wearing them” and “[t]he inventor used the same technology they use on
boats (You know, the heavy duty snaps that you use to attach the cover?
Same thing.).” Barteet Decl. (Mar. 25, 2008), Exh. A, pp. 3, 4. Claims 8,
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13, 18, 23, and 28 merely recite a mechanical snap, not a particular type of
snap commensurate with this feature on the commercial product.
Other testimonials tout the fashion advantages of using different shoe
bottom styles (black, brown, and cork) with dozens of different tops so the
shoe can be worn pretty much everywhere, color coordinate with any outfit
and holiday, and make customers’ feet look great. Barteet Decl. (Mar. 25,
2008), Exh. A. Customers praise how comfortable the shoes are and how
easy it is to travel with a single shoe bottom and multiple vamps. Objective
evidence of secondary considerations of non-obviousness should be tied to
the functional aspects of a claimed invention for a utility patent application.
See Cable Elec. Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1027 (Fed.
Cir. 1985) (“[F]or commercial success of a product embodying a claimed
invention to have true relevance to the issue of non-obviousness, that
success must be shown to have in some way been due to the nature of the
claimed invention, as opposed to other economic and commercial factors
unrelated to the technical quality of the patented subject matter”).
Increased sales also may have resulted from media coverage of the
shoe. See Barteet Decl. (Sep. 12, 2007), ¶ 6. However, Appellant has not
established that the media coverage and praise relates to claimed features of
the shoe. For example, a DVD submitted at Exhibit B of Appellant’s March
25, 2008 Declaration includes reports on Dallas NBC 5 and San Antonio
Living News 4 that tout the versatility and stylishness of the shoe that comes
in every color and design and can include a durable neoprene top, comfort of
the sole, and a low cost for a shoe sole and three tops where additional soles
and tops can be purchased. The DVD also includes an advertisement for the
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OneSole that emphasizes the versatility of styles and comfort of the shoe to
choose a design that suits your personality and lifestyle. Appellant has not
established these features as commensurate with the scope of the claims.
Appellant’s bare allegations of copying are of little probative value
because Appellant has not provided evidence of actual products offered by
competitors or how such competitors copied features of Appellant’s design
that embody the claimed subject matter.
Weighing all of the evidence and arguments including evidence of
secondary considerations, Appellant has not provided sufficient evidence of
non-obviousness that is commensurate in scope with the claimed subject
matter and that has a sufficient nexus thereto to overcome the strong
obviousness findings and determination of the Examiner.
DECISION
We AFFIRM the prior art rejections of claims 8, 9, and 12-35 and
REVERSE the rejection of claims 13-15, 18-20, 23-25, and 28-30 for
indefiniteness.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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GREENHUT, concurring in part, dissenting in part.

I respectfully dissent from the majority’s decision to reverse the Examiner’s
rejection under 35 U.S.C. § 112, second paragraph.
In Energizer Holdings, Inc. v. Int’l Trade Comm’n, supra, upon which
the majority relies, reference to “said zinc anode” to refer to the previously
recited “anode gel comprised of zinc as the active anode” was held not to
render the scope of the claim indefinite. The lack of explicit antecedent basis
did not create any ambiguity and, as the question of indefiniteness arose in
the litigation context, the claim avoided condemnation for indefiniteness
because it was amenable to construction. Neither of these conditions is
present in the case before us.
“[S]aid inner and outer releasable interlocking attachment means”
could reasonably be interpreted to refer to the inner and outer components,
essentially meaning “attachment means” was mistakenly used in place of
“interlocking components”—an error which Appellant appears to
acknowledge. App. Br. 12. However, the phrase could also be reasonably
interpreted as referring to the “left and right attachment means,” essentially
meaning that “inner and outer releasable interlocking” was mistakenly used
in place of “left and right.” While I do not propose a bright line rule that the
lack of express antecedent basis for a claim element necessarily renders the
claim indefinite, in this instance such an omission results in an ambiguity as
to the meaning of the phrase and therefore the scope of the claim. This
ambiguity renders it unclear whether the claims at issue place further
limitation on one or both of the left and right attachment means and/or one
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or both of the inner and outer components of each attachment means. The
majority contends that the claims are not indefinite but the majority does not
resolve this ambiguity.
In prosecution before the PTO “it is the applicants’ burden to
precisely define the invention, not the PTO’s.” In re Morris, 127 F. 3d 1048,
1056 (Fed. Cir. 1997). The purpose of this requirement is to provide the
public with adequate notice of the boundaries of protection involved. In re
Hammack, 427 F.2d 1378, 1382 (CCPA 1970). The time to do so is during
prosecution where an applicant has the ability to amend the claims to more
precisely define the metes and bounds of the claimed invention. See Ex
Parte Miyazaki, 89 USPQ2d 1207, 1210-12 (PTAB 2008). It is not our
province to speculate as to what the Appellant intended to claim, nor should
we burden the public with that task.
Accordingly, I would affirm the Examiner’s rejection under 35 U.S.C.
§ 112, second paragraph.

I concur in the majority’s decision to affirm the rejection of claim 17 as
anticipated by Jneid.
The majority contends that “[e]ven if Jneid’s snaps and hook and loop
fasteners are considered to be two systems, Jneid shoe still falls within the
scope of claim 17 because claim 17 reads on a shoe assembly with more
than one system of attachment means.” Opinion at 3. The basis for the
majority’s determination in this regard appears to be the use of the
transitional phrase “comprising” in the claim’s preamble. The use of
comprising in the preamble is not carte blanche to ignore exclusionary-type
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limitations such as “consisting” in the body of the claim. In re Skvorecz and
In re Crish, supra, contravene the majority’s position rather than support it.
In Skvorecz where the claim required each wire leg to have an offset, it was
held that the term comprising did not allow for the presence of wire legs not
having offsets. In Crish “[t]he reasonable interpretation of the claims
containing both of the terms ‘comprising’ and ‘consists’ [was] that the term
‘consists’ limits the ‘said portion’ language to the subsequently recited
numbered nucleotides, but the earlier term ‘comprising’ means that the claim
can include that portion plus other nucleotides.” Claims 18 and 19, being
alternatives further defining, presumably, the attachment means, have no
bearing on whether it is reasonable to interpret the single system of claim 17
as including a system including both snaps and hook and loop fasteners.
Contra Opinion at 3.
While I disagree with the majority’s express construction of claim 17
in this regard, I fully join in my colleagues conclusion that the phrase “single
system” does not exclude a system that employs two different types of
fasteners such as snaps and hook-and-loop-type fasteners. Thus, I concur
with the majority’s decision to affirm the rejection of claim 17 as being
anticipated by Jneid.

I join in the remainder of the majority opinion.

mls