Ex Parte Ellis

Board of Patent Appeals and Interferences

Sep 6, 2002

08162373 (B.P.A.I. Sep. 6, 2002)

1 Claims 93, 103, 122, 128, 130 and 135 have been amended subsequent
to final rejection in Paper No. 77, filed March 16, 2001.
1
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 87
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte FRAMPTON E. ELLIS, III
_____________
Appeal No. 2002-0363
Application No. 08/162,373
______________
ON BRIEF
_______________
Before FRANKFORT, McQUADE and NASE, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
Frampton E. Ellis, III, appeals from the final rejection of claims 93, 103, 122-124
and 126-141.1 Claims 67-81 and 83 stand allowed. Claims 125 and 142-158, the only
other claims pending in the application, stand withdrawn from consideration as not
being directed to the elected species.
THE INVENTION
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Application No. 08/162,373
2
The invention involves “the use of the theoretically ideal stability plane concept to
provide stability in negative heel shoe soles that are less thick in the heel area than in
the rest of the shoe sole” (specification, page 1). The appellant explains that “the
concept of the theoretically ideal stability plane is that the thickness of the contoured
stability sides of the shoe soles, typically measured in the frontal plane, should equal
the thickness of the shoe sole underneath the foot (specification, page 2).
Representative Claim 93 reads as follows:
93. An athletic shoe sole for a shoe, the athletic shoe sole comprising:
a sole heel area of the athletic shoe sole at a location substantially
corresponding to the location of a heel of an intended wearer’s foot when inside the
shoe;
a sole forefoot area at a location substantially corresponding to the
location of a forefoot of an intended wearer’s foot when inside the shoe;
a sole midtarsal area located between the sole heel area and the sole
forefoot area;
the sole heel, midtarsal, and forefoot areas each having a sole medial
side, a sole lateral side, and a sole middle part located between the sole sides, as
viewed in a shoe sole frontal plane during a shoe unloaded, upright condition;
a sole inner surface adjacent an intended wearer’s foot location inside the
shoe having at least a first concavely rounded portion, said concavity being determined
relative to an intended wearer’s foot location inside the shoe, as viewed in a frontal
plane located in the sole forefoot area, during an unloaded, upright shoe condition;
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the sole lateral side including a sidemost lateral section at a location
outside of a straight vertical line extending through the sole lateral side at the sidemost
extent of the sole inner surface of the sole lateral side, as viewed in a shoe sole frontal
plane during an unloaded, upright shoe condition;
the sole medial side including a sidemost medial section at a location
outside of a straight vertical line extending through the sole medial side at the sidemost
extent of the sole inner surface of the sole medial side, as viewed in a shoe sole frontal
plane during an unloaded, upright shoe condition;
a sole outer surface extending from the sole inner surface and defining
the outer boundary of each shoe sole side, as viewed in a frontal plane;
a second concavely rounded portion forming a part of the sole outer
surface of the sole side that extends through a lowermost portion of the sole outer
surface of one of the lateral and medial sole sides, the concavity being determined
relative to an intended wearer’s foot location inside the shoe, as viewed in the frontal
plane during an unloaded, upright shoe condition;
the sole forefoot area including the following combined components: a
forefoot lift, a midsole component and an outsole component, the inner and outer
boundaries of the combined components being formed by said sole inner and outer
surfaces, as viewed in a shoe sole frontal plane in the sole forefoot area, during an
unloaded, upright shoe condition;
the sole forefoot area of the shoe sole having a greater thickness than the
sole heel area, as viewed in a sagittal plane during an unloaded, upright shoe condition;
the thickness of the shoe sole being defined as the distance between the
sole inner surface and the sole outer surface, as viewed in the sagittal plane during an
unloaded, upright shoe condition;
at least the midsole extending into the sidemost section of at least the
sole side of the sole forefoot area having the concavely rounded inner and outer
surface portions, as viewed in a shoe sole frontal plane during an unloaded, upright
shoe condition, and
at least an upper part of the midsole of the sidemost section of the sole
side of the sole forefoot area having the concavely rounded inner and outer surface
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portions extending up the sole side at least to the height of a lowest point of the sole
inner surface of the same shoe sole side, as viewed in the shoe sole frontal plane
during an upright, unloaded shoe condition.
THE PRIOR ART
The references relied on by the examiner to support the final rejection are:
Holcombe, Jr. (Holcombe) 3,964,181 Jun. 22, 1976
Bergmans 4,455,767 Jun. 26, 1984
Robinson 4,934,073 Jun. 19, 1990
THE REJECTIONS
Claims 93, 103, 122-124 and 126-141 stand rejected under 35 U.S.C. § 112, first
paragraph, as containing subject matter which was not described in the specification in
such a way as to reasonably convey to one skilled in the relevant art that the appellant,
at the time the application was filed, had possession of the claimed invention.
Claims 93, 103, 122-124 and 126-141 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and distinctly
claim the subject matter the appellant regards as the invention.
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2 The statements of the 35 U.S.C. § 112 rejections in the answer mistakenly
include claim 125 which, as indicated above, stands withdrawn from consideration.
Also, the accompanying explanations of these rejections do not carry forward all of the
reasons set forth in the final rejection (Paper No. 63). To the extent that the omitted
reasons have not been explicitly withdrawn (see page 9 in the answer), we assume that
they have been implicitly withdrawn (see Ex parte Emm, 118 USPQ 180, 181 (Bd. App.
1957)).
5
Claim 93 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Holcombe.
Claims 93, 103, 122-124 and 126-141 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Robinson in view of Bergmans.
Attention is directed to the appellant’s main and reply briefs (Paper Nos. 78 and
81) and to the examiner’s answer (Paper No. 79) for the respective positions of the
appellant and the examiner with regard to the merits of these rejections.2
DISCUSSION
I. Petitionable matter
The examiner (see pages 3 and 4 in the answer) raises as an issue in the appeal
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the objection in the final rejection to the specification under 37 CFR § 1.75(d)(1) and
MPEP § 608.01(o) as lacking proper antecedent basis for the term “outsole component”
in the appealed claims. This objection, however, is not directly connected with the
merits of issues involving a rejection of claims and is therefore reviewable by petition to
the Director rather than by appeal to this Board. See In re Hengehold, 440 F.2d 1395,
1403-1404, 169 USPQ 473, 479 (CCPA 1971). Accordingly, it will not be reviewed or
further discussed in this decision.
II. The 35 U.S.C. § 112, first paragraph, rejection
This rejection is based upon the examiner’s determination that the subject matter
on appeal is not described in the specification in such a way as to reasonably convey to
one skilled in the relevant art that the appellant, at the time of the application was filed,
had possession thereof. Specifically, the examiner finds no support in the original
specification for the various limitations in the appealed claims pertaining to the midsole
(see pages 4-5 and 8 in the examiner’s answer).
The appellant contends that Figures 7A-7C and 9A-9C show a combined
midsole and outersole as element 39 and that the specification supports this structure.
In this vein, the appellant, referencing Webster’s Encyclopedic Unabridged Dictionary of
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the English Language (Gramercy Books 1996), submits that “the skilled person is
aware that midsole and outersole are two separate elements of a shoe sole and that
outersole forms an outer part of the shoe sole” (main brief, page 12). The appellant
also refers to highlighted copies of figures 7A-7C in the main brief (see pages 6-8 and
13) as support for the midsole limitations at issue, and additionally notes (see pages 4-
5 in the reply brief) that the instant specification incorporates by reference the
disclosure of related Application No. 07/239,667, filed September 2, 1988, which
describes element 39 as a combined midsole and outersole.
The issue here is whether the appellant’s specification complies with the written
description requirement of 35 U.S.C. § 112, first paragraph. The test for compliance
with this requirement is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that time of the
latter claimed subject matter, rather than the presence or absence of the literal support
in the specification for the claim language. In re Kaslow, 707 F.2d 1366, 1375, 217
USPQ 1089, 1096 (Fed. Cir. 1983). The content of the drawings may also be
considered in determining compliance with the written description requirement. Id.
Upon careful review of the disclosure in the instant application as originally filed,
including the incorporation by reference to prior Application No. 07/239,667, we are
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satisfied that such disclosure would reasonably convey to the artisan that the appellant
had possession at that time of a shoe sole comprising a combined midsole and
outersole (collectively shown as element 39 in, for example, Figures 7A-7C). However,
in our opinion, this broad disclosure of a combined midsole and outsole would not
reasonably convey to the artisan that the appellant had possession at that time of a
shoe sole comprising the particular midsole configuration set forth in the appealed
claims. By way of example, the disclosure lacks original support for the limitations in
representative claim 93 requiring “at least the midsole extending into the sidemost
section of at least the sole side of the sole forefoot area having the concavely rounded
inner and outer surface portions, as viewed in a shoe sole frontal plane during an
unloaded, upright shoe condition” and
at least an upper part of the midsole of the sidemost section of the sole
side of the sole forefoot area having the concavely rounded inner and
outer surface portions extending up the sole side at least to the height of a
lowest point of the sole inner surface of the same shoe sole side, as
viewed in the shoe sole frontal plane during an unloaded, upright shoe
condition.
The other independent claims on appeal, claims 103, 122, 128 and 135, contain similar
limitations lacking the requisite support (see page 4 in the answer), as do dependent
claims 123, 124, 130-132 and 137-139. Although the original disclosure does describe
a combined midsole and outersole element 39, it does not describe the midsole
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component of this element with the specificity set forth in these claims.
Therefore, we shall sustain the standing 35 U.S.C. § 112, first paragraph,
rejection of claims 93, 103, 122-124 and 126-141.
III. The 35 U.S.C. § 112, second paragraph, rejection
In large part, this rejection is based on the alleged lack of support in the
specification for the midsole limitations in the appealed claims. While these limitations
do lack such support to the extent indicated above, they nonetheless set out and
circumscribe the midsole element of the claimed invention with a reasonable degree of
precision and particularity, and thus do not pose indefiniteness problems under § 112,
¶ 2.
Also unfounded are the examiner’s concerns that claims 122 and 123 are
indefinite because “the sole heel area doesn’t have a midsole” (answer, page 6), that
claims 126, 134 and 141 are unclear “as to what the ‘horizontal plane’ is” (answer, page
6), and that claim 129 is inaccurate in that “[t]he middle part of the forefoot area doesn’t
have an indentation” (answer, page 6). The limitations pertaining to the sole heel area
having a midsole and to the horizontal plane are readily understandable on their face.
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3 Although not indefinite, the appealed claims are rather unartfully
composed. Deserving of correction in the event of further prosecution are the following
informalities:
a) in claim 122 “the sole outer surface” lacks a proper antecedent basis; and
b) in claims 130 and 137 “the sole heel area having the concavely rounded inner
and outer surface portions” (emphasis added) lacks a proper antecedent basis.
10
The limitations relating to the indentation also are understandable when read in light of
Figure 4 which shows such an indentation.
Hence, we shall not sustain the standing 35 U.S.C. § 112, second paragraph,
rejection of claims 93, 103, 122-124 and 126-141.3
IV. The 35 U.S.C. § 103(a) rejection of Claim 93 as being unpatentable over
Holcombe
Holcombe, the sole reference applied in this rejection, is directed to a shoe
construction for improving the posture of the wearer (abstract). According to Holcombe:
[m]y shoe construction improves posture through the use of an
upwardly inclined surface for the sole of the foot so that the ball of the foot
as well as the toes are slightly elevated above the heel, the angle of
inclination being about 2-10° with a preferred angle of about 5°. This is
accomplished without substantial change in the exterior appearance of the
shoe by hollowing out the shoe heel to accommodate the heel of the foot
and by raising the inner shoe sole surface in the toe region, with a gradual
transition therebetween (column 1, lines 52-61).
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The examiner asserts that Holcombe teaches a shoe sole substantially as
claimed except for a midsole and concludes that, as it is old and conventional to
provide a midsole, it would have been obvious to provide Holcombe with a midsole to
provide better cushioning characteristics (see pages 6 and 7 in the answer).
The appellant responds that Holcombe fails to teach any midsole, let alone a
midsole as particularly claimed, and that even if a midsole were added to Holcombe, it
would not respond to the specific midsole configuration required by claim 93.
Rejections based on 35 U.S.C. § 103(a) must rest on a factual basis. In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-78 (CCPA 1967). In making such a
rejection, the examiner has the initial duty of supplying the requisite factual basis and
may not, because of doubts that the invention is patentable, resort to speculation,
unfounded assumptions or hindsight reconstruction to supply deficiencies in the factual
basis. Id.
In this case, the examiner has not advanced any factual basis which justifies a
conclusion that it would have been obvious to provide Holcombe’s sole with the midsole
specifically defined in claim 93. The examiner’s apparent position (see page 10 in the
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answer) that the midsole limitations in the claim can be dismissed in determining
patentability over the prior art because they are “new matter” has no basis in law. Such
limitations cannot be ignored, but rather must be considered and given weight, when
evaluating the claims so limited with regard to patentability over the prior art. See Ex
parte Grasselli, 231 USPQ 393, 394 (Bd. App. 1983); and Ex parte Pearson, 230 USPQ
711, 712 (Bd. Pat. App. & Int. 1991).
Accordingly, we shall not sustain the standing 35 U.S.C. § 103(a) rejection of
claim 93, as being unpatentable over of Holcombe.
V. The U.S.C. § 103(a) rejection of Claims 93, 103, 122-124, and 126-141 as being
unpatentable over Robinson in view of Bergmans
Robinson, the examiner’s primary reference in this rejection, relates to: “[a]
walking shoe . . . provided between its outer and inner soles, and substantially hidden
by the [vamp] at the instep and toe, with a reverse wedge, i.e., one which increases in
thickness in the forward direction” (column 1, lines 25-28). Of this shoe, Robinson
teaches that:
[a]n insole 30 is applied on the upper side 32 of the composite of
the outsole and reverse wedge. Again, the connection of the parts is
made by conventional means, such as convention shoe adhesive and/or
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sewing.
An upper 34, including a toe box, vamp and heel quarters may be
conventionally mounted, e.g., by adhesive and/or stitching, to the
composite formed of the outsole, reverse wedge and insole. The vamp
and toe box of the upper 34 preferably include lateral and medial lower
edge portions 36 which overlap most or all of the side edges 38 of the
reverse wedge, are all but a substantially uniform-thickness exposed
portion of the composite reverse wedge/outsole structure.

Accordingly, to a casual observer, the shoe 10 looks very much like
a conventional shoe, albeit one that is somewhat taller across the instep
and toe box.
For the wearer, a feeling of reasonable self-confidence in
appearance is preserved, because the shoe, when worn, does not look
‘odd’. Yet, in walking, the wearer is provided with enhanced exercise, due
to the fact that, when standing on a level, horizontal surface, the wearer's
heels are lower than the wearer's toes [column 2, lines 11-33].
According to the examiner, Robinson’s shoe embodies a sole comprising a
midsole/lift substantially as claimed except for the sidemost lateral and medial sections
having a first inner and second outer concavely rounded portions (see page 7 in the
answer). To remedy this deficiency, the examiner turns to Bergmans.
Bergmans “relates to an improved shoe construction and particularly to an
improved shoe construction especially designed for extraordinary comfort and
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handsome appearance” (column 1, lines 6-10). The reference states the following:
As can be seen in FIGS. 2 through 5, the sole member further
includes a peripheral side wall 64, extending upwardly at the periphery of
the sole member, that defines an inwardly facing surface 66 which
extends upwardly and continuously from the foot bed surface 62. In the
assembled shoe construction, this side wall is bonded using known
adhesives, to outer surfaces of the toe section 26, side sections 28 and
heel section 30 immediately adjacent the lower edges 46, 50 and 52 of
these respective components of the outer covering and over the juncture
of these lower edges and the periphery 48 and 54 of the inner sole.
Accordingly, stitching 47 about the periphery 48 between the toe section
26 and the forward portion 36 of the inner sole, is hidden by the peripheral
side wall 64 as can be seen in FIG. 2 and as depicted in FIGS. 3, 4 and 5.
Further, the juncture of the lower edges 50 and 52 with the periphery 54 of
the inner sole 34 is also hidden whether or not the two components are
stitched together at this juncture.
The continuity between the inwardly facing surface 66 of the
peripheral side wall 64 and the foot bed surface 62 of the sole member
improves the support and hence the comfort for the lower surfaces of the
foot on which the shoe is worn. Further, the bonding of the peripheral
side wall to outwardly facing surfaces immediately adjacent the lower
edges of the components of the outer covering also improves the
resistance of the stitching to wear and failure (column 4, line 52 to column
5, line 11).
The examiner finds that Bergmans discloses the first inner and second outer
concavely rounded portions found to be lacking in Robinson, with the outer rounded
portions extending beyond the vertical line as claimed and extending upwards beyond
the lowest most point of the inner surface as claimed (see page 7 in the answer). The
examiner goes on to conclude that it would have been obvious to provide the shoe sole
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of Robinson with the concavely rounded portions, as taught by Bergmans, so that the
sole extends up over the sides of the upper to provide a very pleasing appearance (see
page 7 in the answer).
In response, the appellant argues that the modification to Robinson by the
application of Bergmans, as proposed by the examiner, is contradictory to the teaching
of Robinson to cover the sole with the vamp (see pages 23-25 in the main brief).
A prior art reference must be considered in its entirety, i.e., as a whole, including
portions that would lead away from the claimed invention. See W.L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1550, 220 USPQ 303, 311 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984).
In this case, Robinson, considered in its entirety, would have led one of ordinary
skill in the art away from the modification proposed by the examiner in view of
Bergmans. Robinson explicitly teaches that it preferable to make the vamp lower edge
portions overlap most or all of the side edges of the reverse wedge (see column 2, lines
19-24). The stated purpose of this construction is to hide the reverse wedge and
provide the appearance of a conventional shoe (see column 1, lines 25-29 and column
2, lines 25-33). To extend the sole up over the sides of the upper to provide a pleasing
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appearance as suggested by the examiner in view of the teachings of Bergmans would
undermine this objective. In this light, we are constrained to conclude that the only
motivation for combining Robinson and Bergmans in the manner proposed stems from
hindsight knowledge impermissibly derived from the appellant’s own disclosure.
Accordingly, we shall not sustain the 35 U.S.C. § 103(a) rejection of Claims 93,
103, 122-124, and 126-141 as being unpatentable over Robinson in view of Bergmans.
VI. Additional issue for further consideration
Upon return of this application to the technology center, the examiner should
review Paper Nos. 7 and 8 for compliance with the signature requirement set forth in 37
CFR § 1.4.
SUMMARY
The decision of the examiner:
a) to reject claims 93, 103, 122-124, 126-141 under 35 U.S.C. § 112, first
paragraph, is affirmed;
b) to reject claims 93, 103, 122-124, 126-141 under 35 U.S.C. § 112, second
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paragraph, is reversed;
c) to reject claim 93 under 35 U.S.C. § 103(a) as being unpatentable over
Holcombe is reversed; and
d) to reject claims 93, 103, 122-124 and 126-141 under 35 U.S.C. § 103(a) as
being unpatentable over Robinson in view of Bergmans is reversed.
Since at least one rejection of each of the claims on appeal is sustained, the
overall decision of the examiner to reject these claims is affirmed.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
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Application No. 08/162,373
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