Ex parte HANSEN

Board of Patent Appeals and Interferences

Apr 15, 1999

08264976 (B.P.A.I. Apr. 15, 1999)

Application for patent filed June 24, 1994. According to appellant, this application is a1
continuation of Application 07/616,613, filed November 21, 1990, now U.S. Patent No. 5,335,429,
granted August 9, 1994.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.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 ROSS HANSEN
_____________
Appeal No. 97-1315
Application 08/264,9761
______________
ON BRIEF
_______________
Before CALVERT, ABRAMS and McQUADE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally rejecting claims 1-20, which
Appeal No. 97-1315
Application 08/264,976
The portion of this rejection that was directed to claims 9, 11, 13 and 15 has been withdrawn2
in the Answer (page 2).
2
constitute all of the claims of record in the application.
The appellant's invention is directed to an outer sole for wearing over footwear. The subject
matter before us on appeal is illustrated by reference to claim 1, which reads as follows:
1. An outer sole for wearing over footwear having toe and heel portions, such outer sole being
flexible and having toe and heel regions corresponding to the toe and heel portions of the footwear
wherein the toe region of the outer sole is curled upwards in the absence of the footwear, to press
preferentially against the toe portion of the lower surface of the footwear when the outer sole is
attached thereto to resist the entry and accumulation of snow or dirt between the footwear and the
outer sole.
THE REFERENCES
The references relied upon by the examiner to support the final rejection are:
Smith 3,019,533 Feb. 6, 1962
Beneteau 5,077,916 Jan. 7, 1992
Shimada 2,140,273 Nov. 28, 1984
(UK Patent Application)
THE REJECTIONS
Claims 10, 12, 14 and 16-20 stand rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point put and distinctly claim the subject matter which the
appellant regards as the invention.2
Appeal No. 97-1315
Application 08/264,976
3
Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as being clearly anticipated by
Shimada.
Claims 3-6, 9-14 and 17-19 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Shimada in view of Beneteau.
Claims 7, 8, 15, 16 and 20 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Shimada in view of Beneteau and Smith.
The rejections are explained in the Examiner's Answer and in the final rejection (Paper No. 6).
The opposing viewpoints of the appellant are set forth in the Revised Brief.
OPINION
In reaching our decision on the issues raised in this appeal, we have carefully assessed the
claims, the prior art applied against the claims, and the respective views of the examiner and the
appellant as set forth in the Answer and the Revised Brief. Our conclusions follow.
The Rejection Under 35 U.S.C. § 112, Second Paragraph
There are two parts to this rejection. As we understand the first part, it is that indefiniteness
exists because it is unclear whether the upward curl of 50-60 degrees in the outer sole, which is recited
in claims 10, 12, 14 and 16-20, is present when the sole is free standing or when it is attached to the
shoe. We agree with the appellant that one of ordinary skill in the art
Appeal No. 97-1315
Application 08/264,976
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would understand from the specification and the claims that the upward curl applies to the sole when it
is in the free standing condition. It therefore is our view that indefiniteness does not exist on this basis.
The second part of this rejection pertains to claims 17-20, which the examiner asserts are
duplicates of claims 10, 12, 14 and 16. We agree. While the appellant has acknowledged that errors
in terminology appear in these claims and has suggested changes which in our view would cure the
problem (Revised Brief, page 3), the fact is that instances of indefiniteness stand uncorrected by
amendment, and therefore we have no choice but to sustain the Section 112 rejection of claims 17-20.
The Rejection Under 35 U.S.C. § 102(b)
It is the examiner’s position that claims 1 and 2 are anticipated by Shimada. We have
evaluated this rejection on the basis that anticipation is established only when a single prior art reference
discloses, either expressly or under the principles of inherency, each and every element of the claimed
invention. See In re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994).
Our conclusion is that the rejection cannot be sustained.
The essence of the appellant’s invention is that the outer sole has an upward curl, in its free
standing state, that is greater than that of the footwear over which it is to be worn, so that the toe (and
heel) of the outer sole press against the corresponding portions of the footwear to create a tight fit. This
provides resistance to the migration of snow or dirt in between the upper surface of the outer sole and
Appeal No. 97-1315
Application 08/264,976
5
the lower surface of the footwear, thereby solving a problem that existed in the field prior art
(specification, pages 2-4). This is manifested in independent claim 1 in the requirement that
the toe region of the outer sole is curled upwards in the absence of the footwear, to
press preferentially against the toe portion of the lower surface of the footwear when
the outer sole is attached thereto to resist the entry and accumulation of snow or dirt
between the footwear and the outer sole.
Shimada is directed to an outer sole for covering the downwardly protruding spikes of a golf
shoe, so that the wearer can walk across surfaces without imparting damage thereto. The problem to
which the appellant has directed his inventive efforts is not acknowledged in Shimada. More
importantly, however, Shimada does not explicitly disclose or teach, for whatever the reason, that there
should be any difference in upward curvature between the outer sole and the footwear over which it is
to be worn, much less that the upward curvature of the outer sole be greater than that of the footwear
when it is free standing. Nor, in our view, would such a relationship in curvatures appear to one of
ordinary skill in the art to be implicit from a review of the Shimada disclosure.
We therefore conclude that this requirement of claim 1 is not present in Shimada, and
anticipation does not exist with regard to claim 1 or dependent claim 2.
The Rejections Under 35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a
prima facie case of obviousness (see In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956
(Fed. Cir. 1993)), which is established when the teachings of the prior art itself would appear to have
Appeal No. 97-1315
Application 08/264,976
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suggested the claimed subject matter to one of ordinary skill in the art. (See In re Bell, 991 F.2d 781,
783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993)).
In the first rejection under Section 103, the examiner’s position is that the subject matter in
dependent claims 3-6,9-14 and 17-19 would have been obvious in view of the combined teachings of
Shimada and Beneteau. Shimada is relied upon for disclosing the subject matter recited in claim 1,
from which all of these claims depend, and Beneteau for teaching that the gripping properties of the sole
of a shoe can be improved by providing transverse ridges thereon. From our perspective, even
considering Shimada in the light of Section 103, this rejection fails at the outset for the same reason as
did the rejection of the independent claim, that is, Shimada’s failure to disclose or teach the claimed
upward curl of the outer sole in the free standing state. This deficiency is not cured by Beneteau, even
assuming, arguendo, that it would have been obvious to combine the teachings of the two references.
This being the case, it is our view that the combined teachings of Shimada and Beneteau fail to
establish a prima facie case of obviousness with regard to the subject matter of claims 3-6, 9-14 and
17-19, and we will not sustain this rejection.
We reach the same conclusion with regard to the Section 103 rejection of claims 7, 8, 15, 16
and 20, which is based upon the teachings of Shimada in view of Beneteau and Smith, the last being
cited for its showing of self tapping screws being used in the sole of a shoe to improve traction. As was
the case with Beneteau, the shortcoming in Shimada regarding the curvature of the outer sole is not
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Application 08/264,976
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cured by Smith, and thus a prima facie case of obviousness is lacking in this rejection also, and it
cannot be sustained.
SUMMARY
The rejection of claims 10, 12, 14 and 16 under 35 U.S.C. § 112, second paragraph, is not
sustained.
The rejection of claims 17-20 under 35 U.S.C. § 112, second paragraph, is sustained.
The rejection of claims 1 and 2 under 35 U.S.C. § 102(b) as being clearly anticipated by
Shimada is not sustained.
The rejection of claims 3-6, 9-14 and 17-19 under 35 U.S.C. § 103 as being unpatentable
over Shimada in view of Beneteau is not sustained.
The rejection of claims 7, 8, 15, 16 and 20 35 U.S.C. § 103 as being unpatentable over
Shimada in view of Beneteau and Smith is not sustained.
Appeal No. 97-1315
Application 08/264,976
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The decision of the examiner is affirmed-in-part.
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
) BOARD OF PATENT
) APPEALS AND
NEAL E. ABRAMS ) INTERFERENCES
Administrative Patent Judge )
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
NEA/dal
Appeal No. 97-1315
Application 08/264,976
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DAVID J. FRENCH
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