Ex Parte Ellis

Board of Patent Appeals and Interferences

Feb 19, 2004

09933821 (B.P.A.I. Feb. 19, 2004)

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not written for publication and is not binding precedent of the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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte FRAMPTON E. ELLIS III
__________
Appeal No. 2004-0253
Application 09/933,821
___________
ON BRIEF
___________
Before FRANKFORT, McQUADE, and NASE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 21 through 34, 36, 37, 39 through 42, 44
through 53, 55 through 57, 59 and 60. At the time of the final
rejection, claim 43 was objected to as being dependent upon a
rejected base claim, but was also indicated to be allowable if
rewritten in independent form, while claims 1 through 20, 35, 38,
54 and 58 were canceled. Subsequent to the final rejection, the
Appeal No. 2004-0253
Application 09/933,821
2
examiner has now indicated (answer, page 8) that the rejections
of claims 48, 51 and 52 have been withdrawn, and that these
claims (like claim 43) are also objected to and allowable. Thus,
the appeal as to claims 48, 51 and 52 is dismissed, leaving only
claims 21 through 34, 36, 37, 39 through 42, 44 through 47, 49,
50, 53, 55 through 57, 59 and 60 for our consideration on appeal.
Appellant’s invention relates to a shoe sole construction
and, more particularly, to a contoured sole structure that
conforms to the natural shape of the foot sole, including the
bottom and sides, when the foot sole deforms naturally during
locomotion, thereby permitting the foot to react naturally with
the ground as it would if the foot were bare, while continuing to
provide a cushioned stable support base for the foot and ankle.
In addition, appellant’s invention relates to the use of
deformation sipes or slits (e.g., 181, 182) in the shoe sole to
provide it with enhanced flexibility to parallel the frontal
plane deformation of the foot, which creates a stable base that
is wide and flat even when tilted sideways in natural pronation
and supination motion in extreme exercise. Figure 9D of the
application drawings best exemplifies the invention defined in
Appeal No. 2004-0253
Application 09/933,821
3
the claims presently on appeal. Independent claim 21 is
representative of the subject matter on appeal, and a copy of
that claim may be found in the Appendix to appellant’s brief.
The prior art references of record relied upon by the
examiner in rejecting the claims on appeal are:
Holcombe, Jr. (Holcombe) 3,964,181 Jun. 22, 1976
Landay et al. (Landay) 4,245,406 Jan. 20, 1981
Dassler 4,614,046 Sept. 30, 1986
Autry 4,624,062 Nov. 25, 1986
Claims 21 through 34, 36, 37, 39, 44 through 47, 49, 50, 53,
55 through 57, 59 and 60 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Landay in view of Dassler or, in the
alternative, as being unpatentable over Dassler in view of
Landay.
Claims 40 through 42 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the references as applied above, and
further in view of Autry or Holcombe.
Rather than reiterate the conflicting viewpoints advanced by
appellant and the examiner regarding the above-noted rejections,
Appeal No. 2004-0253
Application 09/933,821
4
we refer to the examiner's answer (Paper No. 16, mailed May 19,
2003) and to appellant’s brief (Paper No. 15, filed April 29,
2003) and reply brief (Paper No. 17, filed July 24, 2003) for a
full exposition thereof.
0PINION
Having carefully reviewed the obviousness issues raised in
this appeal in light of the record before us, we have made the
determinations which follow.
Before we specifically address the examiner’s prior art
rejections and appellant’s arguments thereagainst, we direct
attention to the marked-up version of Figure 9D shown on page 4
of appellant’s brief for a better understanding of the various
sole portions or sections and other relationships defined in the
claims on appeal, particularly the “at least one convexly rounded
portion of the inner midsole surface,” the “at least one
concavely rounded portion of the outer midsole surface” and the
“rounded portion of the midsole located between said convexly
Appeal No. 2004-0253
Application 09/933,821
5
rounded portion of the inner midsole surface and said concavely
rounded portion of the outer midsole surface,” as set forth in
claim 21.
Looking to the examiner’s rejection of claims 21 through 34,
36, 37, 39, 44 through 47, 49, 50, 53, 55 through 57, 59 and 60
under 35 U.S.C. § 103(a) as being unpatentable over Landay in
view of Dassler, the examiner directs us to Figures 1 and 9a of
Landay, urging (answer, page 3) that Landay shows a shoe
comprising a bottom sole (12) and a midsole (14) with rounded
side portions, and a cushioning means (formed by 34)
substantially as claimed except for the exact means for
cushioning. To account for this perceived difference the
examiner turns to Dassler, contending that this patent teaches
forming cushioning means by providing an insert (14) fit
into a recess (13) internal of a sole (see figures 5 and
column 3 lines 49-51) (or the entire structure of elements
1, 5, and 14 which is interior to the peripheral midsole 18)
which inherently forms slits between all of the surfaces of
the insert (14) and the other adjacent sole elements.
The examiner then concludes that it would have been obvious “to
provide cushioning means as taught by Dassler ‘046 in the shoe of
Appeal No. 2004-0253
Application 09/933,821
6
Landay to provide custom support for a specific wearer or
activity.”
In the alternative obviousness rejection based on Dassler in
view of Landay, the examiner contends that Dassler shows a shoe
having a bottom sole (20) and a midsole (19) which has a
plurality of slits therein (around element 14) “substantially as
claimed except for rounded side portions.” The examiner then
turns to Landay, urging that this patent teaches forming midsole
sides with rounded inner and outer surfaces (Figs. 1 and 9a).
From the collective teachings of the applied prior art, the
examiner concludes (answer, page 4) that it would have been
obvious “to make the sides rounded as taught by Landay in the
shoe of Dassler ‘046 to make the shoe better sealed, more
comfortable, and to increase the durability of the shoe.”
For the reasons aptly set forth by appellant in the brief
and reply brief, we will not sustain the examiner’s above-noted
rejections of claims 21 through 34, 36, 37, 39, 44 through 47,
49, 50, 53, 55 through 57, 59 and 60 under 35 U.S.C. § 103(a).
Like appellant, it is clear to us that the rubber outsole (12) of
Landay, in going from the flat condition seen in Figure 6 of that
Appeal No. 2004-0253
Application 09/933,821
7
patent to the somewhat compressed and curved configuration in the
lower mold half (48) as seen in Figure 9a, although not loaded by
a wearer’s foot, must of necessity be placed under a load and
that the examiner’s assertions to the contrary are without merit.
Moreover, we agree with appellant’s assessment that the
examiner’s statement on page 5 of the answer that the formed shoe
in Landay is “clearly shown in figure [sic] 9 and 9a which shows
that when the shoe is completed the outsole and midsole are
curved/rounded at the periphery,” is wholly based on speculation
and conjecture, since the final configuration of the outsole (12)
and midsole (14) in the completed shoe of Landay, as viewed in a
frontal plane cross-section, after removal of the shoe from the
mold, cannot be determined from either Figure 1 or Figures 9 and
9a of that patent.
In addition, from our perspective, the examiner’s proposed
wholesale modification of the midsole of Landay in view of the
totally different midsole of Dassler in an effort to create a
sole structure that purportedly will “inherently” be responsive
to the shoe sole construction as set forth in appellant’s claims
on appeal is without merit and represents a clear case of
impermissible hindsight reconstruction of the claimed invention
Appeal No. 2004-0253
Application 09/933,821
8
based on appellant’s own teachings. In that regard, we note, as
our court of review indicated in In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992), that it is
impermissible to use the claimed invention as an instruction
manual or "template" in attempting to piece together isolated
disclosures and teachings of the prior art so that the claimed
invention is rendered obvious.
As for the alternative obviousness rejection wherein the
examiner proposes a modification of Dassler’s shoe sole
arrangement in view of the teachings of Landay, that rejection
falls for the reasons already set forth above, i.e., that Landay
does not teach or suggest the rounded midsole surfaces and
portions, as urged by the examiner, in a completed shoe after
removal from the mold and as viewed in a shoe sole frontal plane
cross-section when the shoe is upright and in an unloaded
condition.
With respect to the rejection of dependent claims 40 through
42 under 35 U.S.C. § 103(a) as being unpatentable over Landay and
Dassler as applied above, and further in view of Autry or
Holcombe, we agree with appellant’s assessment (brief, page 31-
Appeal No. 2004-0253
Application 09/933,821
9
38) and, for those reasons, will not sustain the examiner’s
rejection of claims 40 through 42 under 35 U.S.C. § 103(a).
In summary: the examiner’s proposed rejections of claims 21
through 34, 36, 37, 39 through 42, 44 through 47, 49, 50, 53, 55
through 57, 59 and 60 under 35 U.S.C. § 103(a) have not been
sustained. Thus, the examiner’s decision in the application
before us on appeal is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
CEF:pgc
Appeal No. 2004-0253
Application 09/933,821
10
Finnegan, Henderson, Farabow, Garrett
& Dunner LLP
1300 I Street, NW
Washington, DC 20005