Ex Parte Darby

Board of Patent Appeals and Interferences

Jun 28, 2006

10019669 (B.P.A.I. Jun. 28, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte H. DARREL DARBY
____________

Appeal No. 2006-1408
Application No. 10/019,669
____________

HEARD: June 6, 2003
____________

Before FRANKFORT, CRAWFORD and BAHR, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's rejection of claims 1, 2, 4, 5, 7,
8, 10, 11, 31, 32, 41 and 42. Claims 3, 6, 9, 12-30 and 35-40 stand allowed and claims
33 and 34 stand withdrawn from consideration.
We REVERSE.
Appeal No. 2006-1408 Page 2
Application No. 10/019,669

BACKGROUND
The appellant's invention relates to a healing shoe or sandal designed to aid in
reducing pressure or weight from specific areas of the feet. The invention utilizes
alterable insole layers of varying densities and degrees of firmness that fit into an area
surrounded by a circumferential counter of the out sole in order to hold the insole layers
in position. A copy of the claims under appeal is set forth in the appendix to the
appellant's brief.
Applied Prior Art

Grim et al. (Grim) 5,329,705 Jul. 19, 1994
Darby et al. (Darby ‘133) 5,370,133 Dec. 6, 1994
Darby (Darby ‘909) 5,491,909 Feb. 20, 1996
Kellerman 5,799,414 Sep. 1, 1998

The Rejections
Claims 1, 2, 4, 5, 7, 8, 10, 11, 31, 41 and 42 stand rejected under 35 U.S.C. §
103 as being unpatentable over Darby ‘909 in view of Darby ‘133 and Grim and claim
32 stands rejected under 35 U.S.C. § 103 as being unpatentable over Darby ‘909 in
view of Darby ‘133, Grim and Kellerman.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding this appeal, we make reference to the examiner's answer
(mailed August 26, 2005) for the examiner's complete reasoning in support of the
Appeal No. 2006-1408 Page 3
Application No. 10/019,669

rejections and to the appellant's brief (filed August 3, 2005) and reply brief (filed
October 26, 2005) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art, and to the respective
positions articulated by the appellant and the examiner. As a consequence of our
review, for the following reasons, both of the examiner’s rejections must be reversed.
Darby ‘909 is directed to a medical shoe designed to accommodate forefoot
deformities and bulky dressings and more particularly to such shoes which are capable
of being adjustably contoured for cradling the bone structure of the foot during healing
(col. 1, ll. 5-10). The objective of the invention of Darby ‘909 is to provide a more stable
and protective shoe that supports the traumatized foot and accommodates the foot
when standard footwear cannot be worn due to dressing size, swelling, forefoot
deformities, or the use of bulky forefoot splints or insoles (col. 1, ll. 30-35). The Darby
‘909 shoe includes a rocker design outer sole 16 having an insole 18 bonded to the
upper surface 16A thereof by a thin layer of adhesive 20, with a metatarsal shank 22
molded integrally into the outer sole 16. The shoe also includes an upper 14 bonded to
the upper surface 16A of the outer sole and includes an open toe opening 31.
As conceded by the examiner, Darby ‘909 lacks the out sole having a
circumferential counter portion and a plurality of separably removable insole layers
Appeal No. 2006-1408 Page 4
Application No. 10/019,669

stacked on top of one another and being capable of being rearranged so as to be
stacked in different orders, wherein the out sole circumferential counter prevents each
of the plurality of insole layers from shifting within the out sole cavity when the insole
layers are stacked in each of the different orders as called for in independent claims 1
and 31.
Darby ‘133 discloses a lower leg, ankle and foot immobilization brace having a
walking sole (outer sole 22) which minimizes rocker effect; a foam insole 24 bonded to
the outersole; a boot portion 18 with a heel counter 34 and a lip portion (designated 16A
in Figure 1 but described as 18A in col. 5); and an upper portion 12. The lip portion of
the boot forms a semi-circular vertical wall portion “providing significant protection to the
exposed toes of the user” and “rises well above the upper surface of insole 24 which
resides in the recess of the boot portion 18” (col. 5, ll. 5-8). Darby ‘133 further teaches
use of a single-piece, heat molded or heat and pressure molded insole as an addition to
or substitute for the foam insole 24 (col. 8, ll. 54-59).
Grim discloses footgear having orthopedic soles providing pressure relief areas
for the foot. The footgear comprises a walker frame 12, including an outer sole 14 and
side struts 16. Within the frame is a soft goods type support member 20 for enclosing a
lower leg, ankle and foot of the user. The support member 20 may be held in place
within the frame by pads of hook and loop material on the inner surface of the struts and
by straps 28 extending around the struts. The footgear is further provided with an inner
Appeal No. 2006-1408 Page 5
Application No. 10/019,669

sole assembly 52 mounted within the support member 20. The rear portion 58 of the
inner sole assembly may extend up behind the heel of the user to cushion this area of
the foot. The inner sole assembly includes a lower air bladder 64, which may contain a
layer of foam material, and an upper resilient layer 66 constituting several removable
sections 68 which together form a normally substantially smooth surface for
engagement by the foot, the removable sections having hook and loop securing
material on their lower surfaces for engagement with mating hook and loop material on
the upper surface of the bladder 64.
Given the disparate functions and objectives of the three types of footwear
described by Darby ‘909 (a shoe with a rocker design sole), Darby ‘133 (an
immobilization brace designed for minimal rocker effect which provides uniform
compression over the leg, foot and ankle area) and Grim (footgear with removable
resilient elements to provide varying degrees of pressure relief for different zones of the
foot), it is not readily apparent that one of ordinary skill in the art would have viewed the
teachings with regard to insoles on any one of the applied shoes or braces as being
applicable to either of the other types of footwear of the applied references.
In any event, as stated in In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313,
1316-17 (Fed. Cir. 2000),
[m]ost if not all inventions arise from a combination of
old elements. Thus, every element of a claimed invention
may often be found in the prior art. However, identification in
the prior art of each individual part claimed is insufficient to
Appeal No. 2006-1408 Page 6
Application No. 10/019,669

defeat patentability of the whole claimed invention. Rather,
to establish obviousness based on a combination of the
elements disclosed in the prior art, there must be some
motivation, suggestion or teaching of the desirability of
making the specific combination that was made by the
applicant [citations omitted].

In this case, the only motivation for modifying Darby ‘909 by arranging the
various features of the applied references to provide a circumferential counter on the
outer sole of Darby ‘909 and a plurality of separably removable insole layers stacked on
top of one another and prevented by the circumferential counter from shifting is found in
the luxury of hindsight gleaned from appellant’s disclosure, inasmuch as none of the
references teaches or suggests providing a plurality of separably removable insole
layers contained within an out sole cavity formed by a circumferential counter of the out
sole of footwear so as to be prevented, when being stacked in any order upon one
another, by the circumferential counter from shifting within the cavity, as called for in
independent claims 1 and 31. It follows that the rejection of these claims, as well as
claims 2, 4, 5, 7, 8, 10, 11, 41 and 42 depending therefrom, cannot be sustained.
The examiner’s application of Kellerman provides no cure for the deficiency in the
combination of Darby ‘909, Darby ‘133 and Grim discussed above. The rejection of
claim 32 as being unpatentable over Darby ‘909, Darby ‘133, Grim and Kellerman thus
also cannot be sustained.
Appeal No. 2006-1408 Page 7
Application No. 10/019,669

CONCLUSION
To summarize, the decision of the examiner to reject claims 1, 2, 4, 5, 7, 8, 10,
11, 31, 32, 41 and 42 under 35 U.S.C. § 103 is REVERSED.
REVERSED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )

JDB/lg
Appeal No. 2006-1408 Page 8
Application No. 10/019,669

SUGHRUE, MION PLLC
2100 PENNSYLVANIA AVE., N.W.
SUITE 800
WASHINGTON, DC 20037

M/BM TEAM

APPEAL NO. 2006-1408
APPLICATION NO. 10/019,669

Copies:

______ APJ BAHR

______ APJ CRAWFORD

______ APJ FRANKFORT

DECISION: REVERSED

PREPARED: Aug 1, 2006

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