Ex Parte Frye

Board of Patent Appeals and Interferences

Feb 26, 2010

10790923 (B.P.A.I. Feb. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NANCY C. FRYE
____________

Appeal 2009-006013
Application 10/790,923
Technology Center 3700
____________

Decided: February 26, 2010
____________

Before DAVID J. KAPPOS, Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and Trademark Office,
SHARON R. BARNER, Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of the United States Patent and
Trademark Office, MICHAEL R. FLEMING, Chief Administrative Patent
Judge, ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
and WILLIAM F. PATE III, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Nancy C. Frye (Appellant) seeks our review under 35 U.S.C. § 134
(2006) of the Examiner’s decision rejecting claims 1, 5, 8, 11, 14-16, 19, and
20. We have jurisdiction under 35 U.S.C. § 6(b) (2006).

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellant’s claimed invention is a shoe having a forwardly-inclined,
reverse wedge. Spec. 5:6. Claim 1, reproduced below, is representative of
the subject matter on appeal.
1. A shoe, comprising:
an upper;
an insole enclosed by the upper, the insole being a single
piece layer of the shoe, the insole having a forward toe section
and a rear heel section;
an outsole supporting the insole, the outsole having a
planar support surface directly supporting the forward toe
section and the rear heel section of the insole, the outsole having
a planar walking surface;
wherein the rear heel section of the insole has a surface
closer to the planar walking surface of the outsole than a surface
of the forward toe section of the insole to place a wearer's foot
in a position where the wearer's heel is closer to a walking
surface than the wearer's toes during normal wearing conditions;
wherein the forward toe section of the insole has a
substantially constant thickness from a forward periphery edge
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of the shoe to the rear heel section, the rear heel section of the
insole having a decreasing thickness from the forward toe
section of the insole to a rear periphery edge of the shoe,
wherein the rear heel section of the insole and the forward toe
section of the insole meet at a point substantially halfway with
respect to the upper surface.

THE EVIDENCE
The Examiner relies upon the following evidence:
Borgeas US 3,990,159 Nov. 9, 1976
Snabb US 5,491,912 Feb. 20, 1996

THE REJECTIONS
Appellant seeks review of the following rejections:
1. The Examiner rejected claims 1, 5, and 11 under 35 U.S.C. § 102(b)
as being anticipated by Snabb.
2. The Examiner rejected claims 8, 14, 16, 19, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Snabb.
3. The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as being
unpatentable over Snabb and Borgeas.

ISSUE
The Examiner found that Snabb discloses an insole 24 with the
claimed shape and found that the location where the rear heel section and the
forward toe section meet appears to be the same location as shown in
Appellant’s figure 14 and is considered to be “substantially halfway” as
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claimed. Ans. 5, 8. This same finding of fact as to the scope and content of
Snabb underlies both the Examiner’s ultimate finding of anticipation of
claims 1, 5, and 11 and the Examiner’s final conclusions of obviousness of
claims 8, 14-16, 19, and 20.
Appellant contends that the location at which Snabb’s insole
transitions from a section having a rearwardly decreasing thickness to a
section having a constant thickness would never be considered to be at a
halfway point of the shoe. App. Br. 12.1
The issue presented by this appeal is:
Has the Examiner erred in finding that Snabb discloses a shoe having
an insole with a forward toe section of substantially constant thickness and a
rear heel section having a decreasing thickness that meet at a point
“substantially halfway” with respect to the upper surface or outsole, as
called for in independent claims 1, 11, and 16?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Appellant’s Specification describes figure 14 as “an alternate shoe
embodiment incorporating features of the present invention” and

1 “App. Br.” refers to Appellant’s Supplemental Appeal Brief, filed
September 22, 2008.
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having: an “[i]nsole 816 [which] includes a first portion 820 of
substantially constant thickness that extends rearward from a
forward periphery 822 of outsole 812 and shoe upper 814 to a
point 824 approximately halfway across a length of shoe 810” and
“a second portion 826 that extends forwardly from a rear periphery
828 of outsole 812 and shoe upper 814 to meet the first portion 820
at point 824” where “[s]econd portion 826 has an increasing
thickness from rear periphery 828 to point 826 [sic 824].” Spec.
29:6-7 and 16-25.
2. Figure 14, as originally filed, is reproduced below:

Figure 14 depicts a shoe with an outsole affixed to a shoe upper
and an insole which lies over a surface of the outsole enclosed by
the shoe upper.
3. The Examiner admits that the placement of element number 824 in
figure 14, as originally filed, is inconsistent with Appellant’s
description of the location of point 824 in the Specification as
being the point where portions 820 and 826 meet:
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The shape shown in figure 14 of the original drawings
shows an insole with a shape in which the location of
the meeting of the portions 820 and 826 is considered to
be “approximately halfway” (emphasis added) as
recited in the specification originally filed. It would be
admissible if applicant were to file drawings in which
only number 824 is moved to the location shown in
originally filed drawings as the point where the portions
820 and 826 meet.
Ans. 7.
4. When referring to the “substantially halfway” limitation, the
Specification uses the word “approximately” as a substitute for the
word “substantially,” connoting a term of approximation. Spec.
29:20 (“approximately halfway”). An ordinary meaning of
“approximately” includes “Reasonably close to: nearly, almost,
about.” Webster’s Third New International Dictionary,
Unabridged (1996).
5. An ordinary meaning of “halfway” includes “equally distant from
the extremes of a space or course: midway between two points: a
halfway point.” Webster’s Third New International Dictionary,
Unabridged, defn. 1 (1996).
6. Snabb discloses a shoe with an outer sole 20, an upper 22 attached
to the outer sole 20, and an inner sole 24 “sloped upwardly relative
to the horizontal from the heel 26 toward the ball of the foot at 28.”
Snabb, col. 3, ll. 42-45; fig. 2.
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7. Snabb further discloses that “[t]he slope [of the insole] is
preferably changed to 0° under the toes as indicated at 29.” Snabb,
col. 3, ll. 49-50; fig. 2.
8. In particular, Snabb teaches:
[T]he applicants have determined from the testing that
braking and cutting in explosive sports is enhanced by
the negative slope, in particular, the negative slope
shown in FIG. 2 wherein the slope is flat and constant
from the center of pressure of the heel 26 to the ball
centers of pressure of the foot 28. Forward of the ball
28 centers of pressure the negative slope is decreased to
0° under the toes at 29. The change in slope occurs
beyond the ball centers of pressure as shown.
Snabb, col. 4, ll. 32-40.
9. Figure 2 of Snabb is reproduced below:

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Figure 2 of Snabb depicts a shoe with an inner sole sloped
upwardly relative to the horizontal from the heel toward the ball of
the foot where the slope is decreased to zero degrees under the
toes.

PRINCIPLES OF LAW
Standard of Review
The Examiner has the initial burden to set forth the basis for any
rejection so as to put the patent applicant on notice of the reasons why the
applicant is not entitled to a patent on the claim scope that he seeks – the so-
called “prima facie case.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the initial
burden of proof is on the USPTO “to produce the factual basis for its
rejection of an application under sections 102 and 103”). (quoting In re
Warner, 379 F.2d 1011, 1016 (CCPA 1967)). As the Federal Circuit has
observed, “[t]he term ‘prima facie case’ refers only to the initial examination
step.” Oetiker, 977 F.2d at 1445; see also Oetiker, 977 F.2d at 1449 (“The
process of patent examination is an interactive one.”) (Plager, J.,
concurring). The “prima facie case” serves as a procedural mechanism that
shifts the burden of going forward to the applicant, who must produce
evidence and/or argument rebutting the case of unpatentability. See Oetiker,
977 F.2d at 1445; Piasecki, 745 F.2d at 1472. Applicant’s rebuttal evidence
“may relate to any of the Graham factors including the so-called secondary
considerations.” Piasecki, 745 F.2d at 1472 (citations omitted). The
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examiner then determines patentability “on the totality of the record, by a
preponderance of the evidence with due consideration to the persuasiveness
of argument.” Oetiker, 977 F.2d at 1445.
The Board’s role in any subsequent appeal is to, “on written appeal of
an applicant, review adverse decisions of examiners upon applications for
patents.” 35 U.S.C. § 6(b) (2006) (emphasis added). An appellant may
attempt to overcome an examiner’s obviousness rejection on appeal to the
Board by submitting arguments and/or evidence to show that the examiner
made an error in either (1) an underlying finding of fact upon which the final
conclusion of obviousness was based, or (2) the reasoning used to reach the
legal conclusion of obviousness. Similarly, the applicant may submit
evidence of secondary considerations of non-obviousness. See Kahn, 441
F.3d at 985-86 (“On appeal to the Board, an applicant can overcome a
rejection by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998), overruled in part on other grounds, KSR, 550 U.S. at 422).
The panel then reviews the obviousness rejection for error based upon
the issues identified by appellant, and in light of the arguments and evidence
produced thereon. See Oetiker, 977 F.2d at 1445 (“In reviewing the
examiner’s decision on appeal, the Board must necessarily weigh all of the
evidence and argument.”) (emphasis added); see also 37 C.F.R.
§ 41.37(c)(1)(vii) (appeal brief must include “the contentions of appellant
with respect to each ground of rejection presented for review in paragraph
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(c)(1)(vi) of this section, and the basis therefor, with citations of the statutes,
regulations, authorities, and parts of the record relied on”). Specifically, the
Board reviews the particular finding(s) contested by an appellant anew in
light of all the evidence and argument on that issue.
Filing a Board appeal does not, unto itself, entitle an appellant to de
novo review of all aspects of a rejection. If an appellant fails to present
arguments on a particular issue – or, more broadly, on a particular rejection
– the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection. See, e.g., Hyatt v. Dudas, 551 F.3d
1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant
failed to make for a given ground of rejection as waived); In re Watts, 354
F.3d 1362, 1368 (Fed. Cir. 2004) (declining to consider the appellant's new
argument regarding the scope of a prior art patent when that argument was
not raised before the Board); In re Schreiber, 128 F.3d 1473, 1479 (Fed. Cir.
1997) (declining to consider whether prior art cited in an obviousness
rejection was non-analogous art when that argument was not raised before
the Board). Thus, the Board will generally not reach the merits of any issues
not contested by an appellant. Cf. In re Baxter Travenol Labs, 952 F.2d 388,
391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant . . . .”). For example, if
an appellant contests an obviousness rejection only on the basis that a cited
reference fails to disclose a particular limitation, the Board need not review
the other, uncontested findings of fact made by the examiner underlying the
rejection, such as the presence of uncontested limitations in the prior art.
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Cf. In re Reuning, 276 Fed. Appx. 983, 986 (Fed. Cir. 2008)
(nonprecedential) (rejecting Reuning’s argument that the Board erred in
affirming the obviousness rejection by failing to “explain how each and
every element of the rejected claims is taught by the cited references” as
“premised on a mistaken assignment of burdens between the PTO and an
applicant-appellant” and citing applicant’s obligations to respond to a prima
facie case with “some argument or evidence”).
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). To establish anticipation, every element and
limitation of the claimed invention must be found in a single prior art
reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf
Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art,
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(3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 550 U.S. at 406-07 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR, 550 U.S. at 418.

ANALYSIS
Appellant contends that the Examiner erred in finding that Snabb’s
forward section of substantially constant thickness, i.e., the section of the
insole having a slope of zero degrees, meets the rearward section of the
insole “at a point substantially halfway” with respect to the upper surface or
the outsole as called for in independent claims 1, 11, and 16. Appellant
contends that this erroneous underlying finding of fact pervades the
Examiner’s finding of anticipation of claims 1, 5, and 11 and the Examiner’s
ultimate conclusions of obviousness of claims 8, 14-16, 19, and 20.
Appellant’s Specification describes a point 824 on insole 816 of
figure 14 as being the point at which a first portion 820 of substantially
constant thickness and a second portion 826 of increasing thickness meet
(Fact 1). Figure 14, as originally filed, shows that first portion 820 and
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second portion 826 meet at a point approximately where the end of the arrow
for number 816 is located (Fact 2). This location is consistent with the
description in the Specification of this meeting point as being
“approximately halfway across a length of shoe 810” (Fact 1). Original
figure 14, however, places the number 824 and its associated lead line
considerably forward of a halfway point across the length of the shoe and
considerably forward of the point at which first portion 820 and second
portion 826 meet (Fact 2). The Examiner admits that the placement of
element number 824 in figure 14, as originally filed, is inconsistent with
Appellant’s description of the location of point 824 in the Specification (Fact
3). The Examiner further states that she would admit a drawing in which
only number 824 is moved to the location shown in originally filed drawings
as the point where the portions 820 and 826 meet (Fact 3). Appellant also
agrees to submit this drawing change. App. Br. 10. Since the Appellant is
agreeable to correct the mistaken placement of element number 824, and the
Examiner is agreeable to the correction, the mistaken placement of element
number 824 and its correction is not in contention for purposes of deciding
the issue presented on appeal.
Snabb discloses a shoe with an inner sole 24 sloped upwardly relative
to the horizontal from the heel 26 toward the ball of the foot at 28, and then
forward of the ball 28 the slope changes so that it becomes zero degrees at a
point marked as 29 in figure 2 (Facts 6-9). As such, the point at which the
section of Snabb’s insole having an increasing thickness meets the section of
Snabb’s insole having a constant thickness is depicted in figure 2 of Snabb
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as the point marked 29. (Id.) This point 29 is described in Snabb as being
under the wearer’s toes and is forward of the point of the insole on which the
ball of the wearer’s foot would rest. (Id.)
The Examiner’s finding that Snabb discloses a meeting point located
“substantially halfway” (Ans. 5) as claimed rests on an unreasonably broad
interpretation of “substantially halfway”. Depending on its usage, the word
“substantially” can denote either language of approximation or language of
magnitude. Deering Precision Instruments, L.L.C. v. Vector Distribution
Sys., Inc., 347 F.3d 1314, 1323 (Fed. Cir. 2003) (recognizing the “dual
ordinary meaning of th[e] term [“substantially”] as connoting a term of
approximation or a term of magnitude”). Here, when referring to the
“substantially halfway” limitation, the Specification uses the word
“approximately” as a substitute for the word “substantially” (Fact 4). Thus,
consistent with its usage in the Specification, the ordinary and customary
meaning of “substantially” includes “reasonably close to: nearly, almost,
about”, connoting a term of approximation (Fact 4). The ordinary meaning
of “substantially halfway” is thus reasonably close to or nearly at the
midpoint between the forwardmost point of the upper or outsole and the
rearwardmost point of the upper or outsole (Facts 4, 5). As such, we
disagree with the Examiner’s finding that the point at which the section of
Snabb’s insole having an increasing thickness meets the section of Snabb’s
insole having a constant thickness is “substantially halfway” with respect to
the upper surface or outsole of the shoe. Rather, we find that this point,
marked with the number 29 in figure 2 of Snabb, is too far forward of a
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halfway point with respect to the upper surface or outsole of Snabb’s shoe to
be the “substantially halfway” point as claimed.
Our decision is limited to the finding before us for review. The Board
does not “allow” claims of an application and cannot direct an examiner to
pass an application to issuance. Rather, the Board’s primary role is to
review adverse decisions of examiners including the findings and
conclusions made by the examiner. See 37 C.F.R. § 41.50(a)(1) (“The
Board, in its decision, may affirm or reverse the decision of the examiner in
whole or in part on the grounds and on the claims specified by the
examiner”).2 The Examiner in the present case has not based any of the
rejections for our review on a theory that locating the claimed point
“substantially halfway” as claimed would have been obvious to a person
having ordinary skill in the art at the time of Appellant’s invention in view
of the prior art, and thus we take no position on this issue in the present
opinion.

PETITIONABLE MATTERS
Appellant also seeks our review of the Examiner’s objection to the
drawings under 37 C.F.R. § 1.83(a) and the Examiner’s refusal to enter

2 The Board also has discretion to enter a new ground of rejection of a claim
should the Board have knowledge of any grounds not involved in the appeal
for rejecting any pending claim. 37 C.F.R. § 41.50(b). See also Manual of
Patent Examining Procedure (MPEP), 8th ed., rev. July 2008, § 1213.02
(“Since the exercise of authority under 37 C.F.R. § 41.50(b) is discretionary,
no inference should be drawn from a failure to exercise that discretion”).
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Appellant’s proposed amended drawings because they contain new matter.
App. Br. 8, Issue 1, and App. Br. 9-10. In particular, the Examiner objected
to the drawings because they do not show the claimed midsole and because
the point 824 in figure 14 is in the wrong position. Ans. 3-4. Appellant
submitted a drawing with proposed drawing corrections to figure 14 to add a
midsole and to move point 824 to the correct location. App. Br. 9. The
Examiner refused to enter the proposed drawing. Ans. 3. As noted supra,
the Examiner states that she would admit a drawing in which only number
824 is moved to the correct location (Fact 3), but she refuses to enter the
proposed drawing because the midsole is considered to be new matter. The
Examiner’s refusal to enter the proposed drawing showing the midsole is
unrelated to any rejection before the Board. We take this opportunity to
direct the Appellant’s attention to MPEP § 1201, which states:
The line of demarcation between appealable matters for
the Board of Patent Appeals and Interferences (Board) and
petitionable matters for the Director of the U.S. Patent and
Trademark Office (Director) should be carefully observed. The
Board will not ordinarily hear a question that should be decided
by the Director on petition, and the Director will not ordinarily
entertain a petition where the question presented is a matter
appealable to the Board.
MPEP § 1201, 8th ed., rev. July 2008. In the present case, Appellant has not
filed a petition to resolve either the Examiner’s objections to the drawings or
the Examiner’s refusal to enter proposed drawing amendments prior to the
matter reaching the Board. The Examiner’s objections to the drawings and
refusal to enter an amendment are reviewable by petition under 37 C.F.R.
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§ 1.181 and are thus not within the jurisdiction of the Board. 37 C.F.R.
§ 1.127 (2009); In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In
re Hengehold, 440 F.2d 1395, 1403-1404 (CCPA 1971) (stating that there
are a host of various kinds of decisions an examiner makes in the
examination proceeding – mostly matters of a discretionary, procedural or
nonsubstantive nature – which have not been and are not now appealable to
the board when they are not directly connected with the merits of issues
involving rejections of claims, but traditionally have been settled by petition
to the Commissioner and holding that “the kind of adverse decisions of
examiners which are reviewable by the board must be those which relate, at
least indirectly, to matters involving the rejection of claims”)) and In re
Mindick, 371 F.2d 892, 894 (CCPA 1967) (holding that the refusal of an
examiner to enter an amendment after final rejection of claims is a matter of
discretion, and any abuse of discretion is remedied by a Rule 181 petition to
the Commissioner of Patents, and not by appeal to the Board of Appeals)).
See also MPEP § 1002.02(c), 8th ed., rev. July 2008, Petitions and Requests
Decided by the Technology Center Directors (delegating the Director’s
authority to the Technology Center Directors to decide certain petitions,
including petitions invoking the supervisory authority of the Director of the
USPTO under 37 C.F.R. § 1.181 involving any ex parte action or
requirement in a patent application by the examiner which is not subject to
appeal, including refusal to enter an amendment under 37 C.F.R. § 1.111 or
37 C.F.R. § 1.115). See also MPEP § 1002, 8th ed., rev. July 2008, which
states:
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37 C.F.R. 1.181(f) provides that any petition under that rule
which is not filed “within two months of the mailing date of the
action or notice from which relief is requested may be
dismissed as untimely.” Often, the “action or notice from
which relief is requested,” for example, a requirement for a
new drawing, is included in the same letter as an action on the
merits of the claims, the latter having a 3-month period for
reply. Under such circumstances, if applicant requests
reconsideration, under 37 C.F.R. 1.111(b), of the requirement
for a new drawing, the examiner’s action on this request, if
adverse, establishes the beginning of the 2-month period for
filing the petition. The petition must be filed within this period
even though the period for reply to the rejection of the claims
may extend beyond the 2-month period.
In general, since petitions should be made within two months of the
mailing date of the action or notice from which relief is requested, 37 C.F.R.
§ 1.181(f), petitionable matters should be addressed before an appeal reaches
the Board. In the present case, it would have been desirable for the
Appellant to have resolved the objections to the drawings and refusal to
enter proposed drawing amendments by petition prior to the matter reaching
the Board.

CONCLUSION
The Examiner erred in finding that Snabb discloses a shoe having an
insole with a forward toe section of substantially constant thickness and a
rear heel section having a decreasing thickness that meet at a point
substantially halfway with respect to the upper surface or outsole, as called
for in independent claims 1, 11, and 16.
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DECISION
The decision of the Examiner to reject claims 1, 5, 8, 11, 14-16, 19,
and 20 is REVERSED.

REVERSED

Vsh

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