Ex Parte Hall

Board of Patent Appeals and Interferences

Jan 30, 2008

10266164 (B.P.A.I. Jan. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RODNEY R. HALL
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Appeal 2007-2588
Application 10/266,164
Technology Center 3700
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Decided: January 30, 2008
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Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and DAVID B.
WALKER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Rodney R. Hall (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-20, which are all of the pending
claims. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).
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Appellant’s claimed invention is a shoe cover for athletic shoes.
Claim 1, the only independent claim, reads as follows:
1. A cover for an athletic shoe having an upper
portion enclosing a wearer's foot and ankle, and a
sole provided with gripping surfaces for engaging
an athletic playing surface, the cover comprising:
an elastic fabric upper member sized to
snugly conformally fit over an athletic shoe having
elastic panels covering at least a top and an
inboard and outboard side of a mid-foot region of
the shoe upper portion, and extending above and
encircling the wearer's ankle;
an elastic lower member extending under at
least a portion of the shoe sole and spanning
between the inboard and outboard side panels of
the fabric upper member without inhibiting the
gripping surface of the sole from engaging the
athletic playing surface; and
a zipper cooperating with the fabric upper
member to form an openable seam which extends
from an ankle opening in the fabric upper member
along a sufficient length of the fabric upper
member to enable the wearer of the shoe to remove
the shoe from the wearer's foot when the zipper
seam is open without totally removing the cover
from the shoe, and closing the zipper seam causes
the elastic fabric upper member to snugly
conformally fit over the shoe upper member.
The Examiner relies upon the following as evidence of
unpatentability:
Hinchliff US 2,171,654 Sep. 5, 1939
Feinberg US 2,260,138 Oct. 21, 1941
Sidnam US 2,447,284 Aug. 17, 1948
Brough US 2,970,390 Feb. 7, 1961
Henderson US 3,875,687 Apr. 8, 1975
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Vallières US 4,713,895 Dec. 22, 1987
Hands US 5,845,416 Dec. 8, 1998
Falguere US 5,887,359 Mar. 30, 1999
Tsen US 5,950,333 Sep. 14, 1999

The following rejections under 35 U.S.C. § 103(a) are before us for
review.
Claim 1 stands rejected as unpatentable over Brough in view of
Hinchliff and Henderson.
Claims 2-4, 8, 12, and 13 stand rejected as unpatentable over Feinberg
in view of Hinchliff and Henderson.
Claims 5-7 stand rejected as unpatentable over Feinberg in view of
Hinchliff and Henderson, and further in view of Sidnam.
Claims 9-11 stand rejected as unpatentable over Feinberg in view of
Hinchliff and Henderson, and further in view of Vallières and Tsen.
Claims 14 and 15 stand rejected as unpatentable over Brough in view
of Hinchliff and Henderson, and further in view of Hands.
Claims 16-19 stand rejected as unpatentable over Brough in view of
Hinchliff, Henderson, and Hands, and further in view of Falguere.
Claim 20 stands rejected as unpatentable over Brough in view of
Hinchliff, Henderson, and Hands, and further in view of Vallières and Tsen.
The Examiner provides reasoning in support of the rejections in the
Answer (mailed June 26, 2006). Appellant presents opposing arguments in
the Appeal Brief (filed March 22, 2006).

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OPINION
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). It is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness. See
In re Fine, 837 F.2d, 1071, 1073 (Fed. Cir. 1988). In so doing, the examiner
is expected to make the factual determinations set forth in Graham v. John
Deere Co., 383 U.S. 1, 17 (1966), viz., (1) the scope and content of the prior
art; (2) the differences between the prior art and the claims at issue; and (3)
the level of ordinary skill in the art. In addition to these factual
determinations, the examiner must also provide “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 Int’l. Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007)).
Only if this initial burden is met does the burden of coming forward with
evidence or argument shift to the appellant. See Oetiker, 977 F.2d at 1445.
See also Piasecki, 745 F.2d at 1472. Obviousness is then determined on the
basis of the evidence as a whole and the relative persuasiveness of the
arguments. See Oetiker, 977 F.2d at 1445; Piasecki, 745 F.2d at 1472.
Claim 1, and thus all of the dependent claims involved in this appeal,
require “an elastic fabric upper member sized to snugly conformally fit over
an athletic shoe having elastic panels covering at least a top and an inboard
and outboard side of a mid-foot region of the shoe upper portion, and
extending above and encircling the wearer's ankle.” Neither of the two main
references Brough and Feinberg relied on by the Examiner discloses a shoe
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cover having an elastic fabric upper covering at least a top and inboard and
outboard side of a mid-foot region of the shoe upper portion and extending
above and encircling the wearer’s ankle as claimed. Brough’s overshoe is
made of “flexible waterproof and stretchable rubber or similar material”
(col. 2, ll. 48-49) and Feinberg’s overshoe “may be of all gum or rubber
construction or it may be made of laminations of rubber and textile material”
(p. 2, left col., ll. 24-26).1 The Examiner acknowledges that neither Brough
nor Feinberg discloses that the overshoe material is an elastic fabric (Ans. 3
and 5) and relies on Hinchliff for a reason to modify either Brough or
Feinberg to make the overshoe upper of an elastic fabric (Ans. 4 and 5).
Specifically, the Examiner contends it would have been obvious to make the
upper of the cover of either Brough or Feinberg “out of stretchable fabric to
allow it to be soft as well as stretchable” (Ans. 4 and 5). The Examiner does
not rely on any of the other applied references to remedy this acknowledged
deficiency of Brough and of Feinberg. For the reasons that follow, we
conclude that the combined teachings of Brough and Hinchliff and Feinberg
and Hinchliff are insufficient to have prompted a person of ordinary skill in
the art to modify either Brough’s overshoe or Feinberg’s overshoe to provide
an elastic fabric upper covering all of the portions recited in claim 1.
Accordingly, none of the rejections, which are all grounded in part on the
proposed combination of Hinchliff with Brough or Feinberg, can be
sustained.

1 While Feinberg discloses the possibility of laminations of rubber and
textile (fabric) material, Feinberg does not disclose that the textile material is
elastic or that laminations of such material cover the portions recited in
claim 1.
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First, we agree with Appellant (Br. 6-7) that Hinchliff does not teach
an upper member of a shoe cover made of an elastic fabric covering all of
the portions recited in claim 1 so that it can be stretchable. Like Appellant
(Br. 6-7), we find that Hinchliff teaches stitching an elastic strip or panel
insert, in an upper otherwise made of material no more elastic than ordinary
cotton stocking fabric, to provide the necessary stretchability to allow the
shoe protector to be slid over the heel without tearing. Specifically, we find
that the disclosure of Hinchliff at page 1, left column, lines 25-50 discussed
by both the Examiner (Ans. 11) and Appellant (Br. 6-7) makes clear that
most of the shoe protector should be made of “a soft, comparatively flexible
fabric but fabric at least no more elastic than ordinary cotton stocking
fabric,”2 with only an elastic insert or panel (9) comprising “a plurality of
courses or lines of stitches or elastic thread . . . or rubber thread with cotton
covering.” Thus, at best, Hinchliff teaches only a relatively small panel in
the shoe cover upper being made of an elastic fabric, to allow the shoe cover
to be stretched over the heel. Hinchliff does not teach a shoe cover upper
made of elastic fabric covering all of the portions recited in claim 1.
Moreover, the overshoes of both Brough and Feinberg are intended to
protect the shoe from moisture from wet ground caused by dew, artificial
watering, or rain (Brough, col. 1, ll. 15-19 and col. 2, ll. 16-19; Feinberg, p.
1, left col., ll. 6-39) and are thus made of waterproof material. Hinchliff, on
the other hand, gives no indication that the shoe protector described therein
is intended to protect the shoe from moisture from the elements or wet
ground. In fact, Hinchliff hints that the shoe protector does not protect the

2 Based on Hinchliff’s description, we understand this fabric not to be
considered “elastic” within the context of the shoe protector.
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shoe from moisture by mentioning use of the protector in connection with or
under galoshes (p. 2, left col., ll. 42-43 and right col., ll. 5-13). Therefore,
Hinchliff’s use of an elastic fabric to provide the necessary stretchability to
permit the shoe protector to stretch over the heel portion of the shoe does not
appear sufficient to prompt a person of ordinary skill in the art to substitute
an elastic fabric for the rubber materials of the overshoes of Brough and
Feinberg, especially in the absence of evidence of any recognition that the
rubber materials of Brough and Feinberg lack the necessary elasticity to
permit clearance over the heel portion of the shoe.
For the above reasons, we conclude that the Examiner has fallen short
in satisfying the initial burden of establishing a prima facie case of
obviousness of the subject matter of claims 1-20 so as to shift the burden to
Appellant to come forth with evidence. Therefore, even assuming that the
declaration evidence included in the Evidence Appendix of Appellant’s
Appeal Brief is insufficient to establish commercial success of Appellant’s
claimed invention or a nexus between any such commercial success and the
claimed attributes of the invention, the rejections cannot be sustained.

CONCLUSION
The decision of the Examiner to reject claims 1-20 under 35 U.S.C.
§ 103 is reversed.
REVERSED

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