Ex Parte Frye

Patent Trial and Appeal Board

Jun 11, 2013

10790923 (P.T.A.B. Jun. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NANCY C. FRYE
____________

Appeal 2013-001300
Application 10/790,923
Technology Center 3700
____________

Before ALLEN R. MacDONALD, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Nancy C. Frye (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 1, 5-7, 11, 15, 16, 19, and 21-24,
which are all of the pending claims, and objecting to the drawing corrections
on the basis that they contain new matter. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
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Application 10/790,923

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THE INVENTION
Appellant’s claimed invention is a shoe having a forwardly inclined,
reverse wedge. Spec. 5, l. 6. Claims 1, 11, and 16 are independent.
Claim 1, reproduced below, is illustrative 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
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.
PROCEDURAL HISTORY
This application was the subject of a prior appeal. Ex parte Frye,
94 USPQ2d 1072 (Appeal 2009-006013) (BPAI, 2010) (precedential). In
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Application 10/790,923

3
the prior appeal, the Board issued a decision reversing the Examiner’s
decision rejecting claims 1, 5, 8, 11, 14-16, 19, and 20 based on prior art.
Id. at 1073. In our Prior Decision, we declined to reach the Examiner’s
objection to the drawings and refusal to enter proposed drawing corrections
because at the time of the prior appeal, the objection was “unrelated to any
rejection before the Board.” Id. at 1078. Following the Board’s decision,
the Examiner maintained the objection to the drawings under 37 C.F.R.
§ 1.83(a) as not showing every feature of the invention specified in the
claims and refused to enter drawing corrections on the basis that they
contained new matter. Ex parte Quayle Action dated May 19, 2010 and
Final Office Action dated Sep. 22, 2010.
Appellant then petitioned to the Director for review of the Examiner’s
refusal to enter the replacement sheet of figures, including corrected drawing
Figure 14. Petition to Review Examiner’s Holding of New Matter dated
Mar. 22, 2011. After filing of Appellant’s first petition, the Examiner
entered an Office Action rejecting the claims under 35 U.S.C. § 112, first
paragraph, for failing to comply with the enablement requirement. Non-
Final Office Action dated Apr. 21, 2011. Appellant’s petition was
subsequently dismissed because, according to the deciding official, “[a]
review of the record indicates that the drawing objection and claim rejection
are directed to the same issues.” Petition Decision dated May 2, 2011 at
p. 1. The Petition Decision stated that “[b]ecause there is both an objection
to the drawings under 37 CFR 1.83(a) and a rejection to claims under
35 USC 112, first paragraph, and both the correctness of the objection and
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Application 10/790,923

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the rejection depend on the same issue, the issue is an appealable one and
will not be decided by petition.” Petition Decision at 2; see also Decision on
Renewed Petition dated Sep. 6, 2011 at p. 2.
THE OBJECTION AND THE REJECTION
Appellant seeks review of the rejection of claims 1, 5-9, 11, 14-16,
and 19-24 under 35 U.S.C. § 112, first paragraph, for failing to comply with
the enablement requirement. Appellant also seeks review of the Examiner’s
refusal to enter drawing corrections on the basis that they contain new
matter. In light of the Petition Decisions, which determined that the review
of the objection and the rejection depend on the same issue, the Board’s
decision on the propriety of the enablement rejection is determinative of the
propriety of the refusal to enter the proposed drawing corrections.
PRINCIPLES OF LAW
When rejecting claims for lack of enablement “the PTO bears an
initial burden of setting forth a reasonable explanation as to why it believes
that the scope of protection provided by that claim is not adequately enabled
by the description of the invention provided in the specification of the
application [.]” In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993)
(citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)). The test for
compliance with the enablement requirement is whether the disclosure, as
filed, is sufficiently complete to enable one of ordinary skill in the art to
make and use the claimed invention without undue experimentation. In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). To evaluate whether a
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disclosure would require undue experimentation is a legal conclusion
reached by weighing many factual considerations including:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
Id. at 737 (citations omitted).
ANALYSIS
Enablement Rejection
The Examiner’s rejection, as set forth in the Office Action from which
this appeal is taken, states:
The specification and drawings are confusing and
inconsistent and therefore do not provide adequate basis to
enable one of ordinary skill in the art to make the claimed shoe
becuase [sic] it is not clear where the location of point 824 is to
be located. The specification states “approximately 1/2 the
length” however the drawings clearly show such a location to
be in the forefoot of the footwear. One of ordinary skill in the
art would not be able to determine which location is appropriate
for the invention. Also the drawings do not show a midsole and
one of ordinary skill in the art would not know what thickness,
shape, exact location etc. would be appropriate. Therefore the
specificastion [sic] lacks enablement for a midsole or the
location of the point which the forward toe section of constant
thickness of the insole meets the heel section of the insole with
a decreasing thickness.
Final Office Action dated Oct. 6, 2011, p. 4.
The Examiner’s rejection does not appear to make any assessment of
the level of experimentation that would be required for one of ordinary skill
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in the art to be able to make and use the invention. In other words, the
Examiner makes no explicit finding that “undue experimentation” would be
required for one of ordinary skill in the art to make and use the invention in
light of the disclosure. Further, the Examiner fails to explicitly address any
of the Wands factors or make findings that specifically pertain to undue
experimentation. To the extent the rejection obliquely addresses the Wands
factor concerning the amount of direction or guidance presented, we address
the Examiner’s findings infra. In particular, we examine whether the
amount of direction or guidance presented in the Specification as to the
location of point 824 and as to the thickness, shape, and exact location of the
midsole is adequate to enable the invention.
Location of Point 824
The Specification, as filed, describes with respect to the embodiment
shown in Figure 14:
Insole 816 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. Insole includes 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. Second portion has an increasing thickness from
rear periphery 828 to point 826 [sic, 824].”
Spec. 29, ll. 16-25. Figure 14, as originally filed, is reproduced below.
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Application 10/790,923

8
We disagree with the Examiner’s interpretation of “substantially
halfway” because it ignores the description provided in the Specification.
We determined in our Prior Decision that “substantially halfway” would be
understood by one of ordinary skill in the art in light of the Specification to
mean “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.” 94 USPQ2d at 1077. Based on this understanding, one of
ordinary skill in the art would recognize that the placement of point 824 in
Original Figure 14 is a typographical error. We find that it is clear from the
Specification quoted supra that point 824 should be placed in Figure 14 at
the location at which first portion 820 of substantially constant thickness and
second portion 826 of increasing thickness meet. As such, we disagree with
the Examiner’s determination that one of ordinary skill in the art would not
be able to make the claimed shoe because it is not clear where point 824 is to
be located.
Thickness, Shape, and Exact Location of Midsole
The Specification describes that “[i]nsole 816 may be in direct contact
with surface 818 of outsole 812 or may be separated therefrom by one or
more midsoles.” Spec. 29, ll. 11-13. The Specification describes that the
midsole is “to provide additional cushioning” and “would have substantially
planar surfaces in order to provide the benefits of the negative heel
configuration of [the] shoe.” Spec. 22, ll. 7-12. We agree with Appellant
(App. Br. 10) that this disclosure provides adequate guidance as to the
Appeal 2013-001300
Application 10/790,923

9
location, shape, and thickness of the midsole to one of ordinary skill in the
art to make and use the claimed shoe.1
Further, the Examiner found that the use of midsoles between an
insole and an outsole is well known and conventional in the footwear art2
and the Examiner has failed to show how, taking into consideration the
relative skill of those in the art and the predictability of the art, one of
ordinary skill in the shoe art would have to engage in undue experimentation
to make and use the claimed invention in light of the Specification.
In conclusion, the Examiner has not met the initial burden of showing
that the disclosure would require undue experimentation in order to enable
one of ordinary skill to make and use the claimed invention. In particular,
the Examiner has not set forth facts tending to show that one of ordinary
skill in the art, with some experimentation, would not be able to make and
use the claimed shoe. “Enablement is not precluded by the necessity for
some experimentation .... However, experimentation needed to practice the
invention must not be undue experimentation. The key word is ‘undue,’ not
‘experimentation.”’ In re Wands, 858 F.2d at 736-37 (internal citation
omitted.) Accordingly, we reverse the rejection of claims 1, 5-7, 11, 15, 16,
19, and 21-24 under 35 U.S.C. § 112, first paragraph.

1 Of the independent claims, only independent claim 16 includes a midsole.
Dependent claim 21-24 also recite “one or more midsoles.”
2 Final Office Action dated Dec. 26, 2007, p. 5 (Examiner took Official
notice that “the use of midsoles between insoles and outsole[s] is extremely
well known and conventional and since applicant has not shown such or
provided any detail of such, it is assumed that applicant is claiming a well[-]
known and conventional midsole(s).”).
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Appeal 2013-001300
Application 10/790,923

11
DECISION
We REVERSE the decision of the Examiner to reject claims 1, 5-7,
11, 15, 16, 19, and 21-24 under 35 U.S.C. § 112, first paragraph and the
decision of the Examiner refusing to enter the drawing corrections based on
new matter.

REVERSED

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