Ex Parte Henderson et al

Patent Trial and Appeal Board

Jan 25, 2018

14051092 (P.T.A.B. Jan. 25, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/051,092 10/10/2013 Jeff Henderson 56503-124298 3163
21888 7590 01/29/2018
THOMPSON OORT TRN T T P
EXAMINER
ONE US BANK PLAZA WU, JOCELYN MARY
SUITE 3500
ST LOUIS, MO 63101 ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
01/29/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDOCKET@THOMPSONCOBURN.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFF HENDERSON
and GEORGE CHIOU1
Appeal 2017-002958
Application 14/051,092
Technology Center 3700
Before JAMES P. CALVE, GEORGE R. HOSKINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 2—25. Appeal Br. I.2 Claims 1 and 26—28 are
cancelled. Id. at 17, 23 (Claims Appendix). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Cole Haan LLC is the applicant as provided for in 37 C.F.R. § 1.46 and
identified as the real party in interest in the Appeal Brief. Appeal Br. 2.
2 Refers to Amended Appeal Brief of the Appellant filed April 12, 2016.
Appeal 2017-002958
Application 14/051,092
CLAIMED SUBJECT MATTER
Claim 2, the sole independent claim, is reproduced below.
2. A shoe comprising a sole and an upper operatively
secured to the sole, the sole comprising a lower sole member
and an upper sole member, the lower sole member including a
sole heel region, a sole midfoot region, a sole forefoot region, a
medial side, a lateral side, a bottom surface, a top surface, a
plurality of sipes, and a longitudinal cavity, the longitudinal
cavity being at least in the sole midfoot region and extending
downwardly from the top surface of the lower sole member, the
longitudinal cavity extending from the sole heel region to the
sole forefoot region of the lower sole member, the plurality of
sipes extending upwardly from the bottom surface of the lower
sole member and intersecting the longitudinal cavity such that
the plurality of sipes and the longitudinal cavity combine to
define a plurality of through openings, the upper sole member
being within the cavity and covering the plurality of through
openings.
Appeal Br. 17 (Claims Appendix).
REJECTIONS
Claim 28 is rejected under 35U.S.C. § 112, second paragraph, as
being indefinite.3
Claims 2—18 and 20-24 are rejected under 35 U.S.C. § 102(a)(2) as
anticipated by Borel (US 2013/0019505 Al, pub. Jan. 24, 2013).4
3 In view of Appellants’ Amendment After Filing of an Appeal Brief, filed
Nov. 16, 2015, which cancelled claims 1 and 26—28, this rejection is moot.
4 The final rejection of claims 1 and 28 (Final Act. 7—10 ,17—18) is mooted
by the amendment cancelling those claims, but we consider the Examiner’s
findings for claim 1 in our review of the rejection of independent claim 2,
which was rewritten to include the limitations of claim 1. Amendment, filed
Nov. 16, 2015, at 8 ; see Appeal Br. 17, 23 (Claims Appendix) (noting claims
1 and 28 are cancelled and claim 2 was previously presented).
2
Appeal 2017-002958
Application 14/051,092
Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable over Borel
and Schindler (US 2013/0232821 Al, pub. Sept. 12, 2013).
Claim 25 is rejected under 35 U.S.C. § 103 as unpatentable over Borel
and Hazenberg (US 2011/0126428 Al, pub. June 2, 2011).5
ANALYSIS
Claims 2—18 and 20—24
Rejected As Anticipated By Borel
Appellants argue claims 2, 3, 12, 13, 16—18, and 20 as a group. See
Appeal Br. 3—15. We select claim 2 as representative, with claims 3, 12, 13,
16—18, and 20 standing or falling with claim 1 (37 C.F.R. § 41.37(c)(l)(iv)),
and we address Appellants’ arguments for claims 4—11, 14, 15, and 21—24.
Claims 2, 3, 12, 13, 16—18, and 20
The Examiner finds that Borel discloses a shoe as recited in claim 2,
with a longitudinal cavity extending downwardly from a top surface of the
heel region to the forefoot region of the lower sole. Final Act. 7—11. The
Examiner relies on Figure 2 of Borel to show damping layer 45 extending
longitudinally along the entire wear layer 21 of outer sole 2 from rear end 3
to front end 4, and Figure 4 to show damping layer 45 with a cavity in the
midfoot region to receive reinforcing layer 41 and comfort layer 110 therein.
Final Act. 8. The Examiner also finds that wear layer 21, damping layer 45,
reinforcing layer 41, and comfort layer 110 extend for the entire length of
the shoe as does the cavity to make the behavior of outer sole assembly 2
uniform over the entire contact surface. Final Act. 2, 8, 10; Ans. 2—3.
5 The final rejection of claims 26 and 27 on this ground (Final Act. 22—24) is
mooted by the amendment cancelling those claims. Amendment, filed Nov.
16, 2015, at 8 ; see Appeal Br. 23 (Claims Appendix).
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Appeal 2017-002958
Application 14/051,092
The Examiner relies on Figure 5 of Borel to show damping member
45 in a related embodiment with cavities of the same shape as comfort layers
110 and reinforcing layers 121, 122, so a skilled artisan would understand
that damping layer 45 in Figures 1—4 includes a cavity of the same shape as
reinforcing layer 41 and comfort layer 110 to receive the layers completely
within the cavity along the entire longitudinal length of the sole. See Ans. 3.
Appellants argue that Borel fails to show a longitudinal cavity that
extends downwardly from the top surface of damping layer 45 and extends
longitudinally from the heel to the forefoot region of the sole. Appeal Br. 4—
5. Appellants argue that Figures 3 and 4 are section views through forefoot
and midfoot regions of damping layer 45 and do not disclose a cavity along
the entire length of damping layer 45. Id.', Reply Br. 2. Appellants argue
that, at most, Borel discloses a cavity in the forefoot or midfoot regions but
does not discloses a cavity extending to the heel region. Reply Br. 3.
The Examiner’s finding that Borel discloses a cavity in damping layer
45, extending downwardly from the top surface and longitudinally from a
sole heel region to a sole forefoot region is supported by a preponderance of
evidence. Figures 3 and 4 are section views showing a cavity in damping
layer 45 that receives comfort layer 110 and reinforcing layer 41 therein to
cover opening 52. Damping layer 45 and these layers 110, 41 extend along
the entire length of outer sole 2 to optimize damping and align with openings
31—37 of wear layer 21 for good grip. Borel Tflf 49-50, 54, 55, Figs. 1—4.
The Examiner finds that the cavity in Figure 4 extends along the length of
damping layer 45 to receive the entire comfort layer 110 and reinforcing
layer 41 so outer sole assembly 2 provides uniform behavior over the entire
length of contact area 20, as Borel teaches. Borel 1 55; Ans. 2—3 (citing id.).
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Appeal 2017-002958
Application 14/051,092
A skilled artisan would understand Borel to disclose damping layer 45
with a cavity that receives reinforcing layer 41 and comfort layer 110 along
their entire lengths to provide uniform behavior of outer contact surface 20,
which also extends the entire shoe length. Borel 1 55. Figures 3 to 5 show
the comfort and reinforcing layers within cavities in damping layer 45 to
cover openings in the damping layer. Figure 4 shows the cavity in the mid­
sole region. Figure 5 shows cavities in the heel and toe regions of damping
layer 45 to receive these same layers completely therein. Id. | 60; Ans. 3.
Reinforcing and comfort layers 41, 110 fit within the cavity to cover
openings 51—57 in damping layer 45 and give outer sole assembly 2 uniform
behavior over the entire contact surface 20 including good grip and optimal
damping. Id. 49-52, 55. Reinforcing layer 41 also seals openings 31—37
in wear layer 21 and openings 51—57 in damping layer 45 for foot protection
against pebbles and ground projections. Id. 54—58. Comfort layer 110
can have the same or greater thickness than damping layer 45 which holds it.
Id. 1 59. Thus, we sustain the rejection of claims 2, 3, 12, 13, 16—18, and 20.
Claims 4—9
Claims 4—9 recite that the sipes formed in the lower sole member also
“extend[] transversely from the medial side to the lateral side of the lower
sole member.” The Examiner interprets the term “side” as “a place, space,
or direction with respect to a center or to a line of division” and finds that
Borel teaches sipes that extend from one side (medial side MS) to the other
side (lateral side LS) of the lower sole member where the sides are located
on either side of a line dividing the lower sole member in half along its
length, rather than being on the outer side edges of the lower sole member,
as the Examiner illustrates with annotations. Final Act. 9, 11—12; Ans. 5—6.
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Appeal 2017-002958
Application 14/051,092
The Examiner’s interpretation of “side” to mean any portion of the
bottom wear layer 21 of Borel that is adjacent to an imaginary longitudinal
line dividing bottom layer 21 into two equal lengths so that one side of the
line is the medial side and the other side of the dividing line is the lateral
side (Ans. 6) is inconsistent with the Specification. Dictionary definitions
can be useful aids to interpret claims, but they must be consistent with the
specification. See PPC Broadband, Inv. v. Corning Optical Commc ’ns Rb\
LLC, 815 F.3d 747, 752 (Fed. Cir. 2016); ArcelorMittal France v. AK Steel
Corp., 700 F.3d 1314, 1320 (Fed. Cir. 2012); Phillips v. AWHCorp., 415
F.3d 1303, 1320-23 (Fed. Cir. 2005) (en banc) (no guarantee a term is used
in the same way in a treatise as by a patentee).
Appellants disclose lower sole 30 with sipes that extend completely
across bottom surface 44 from one side/edge to the other side/edge. Spec.
117, Fig. 5. Sipes 48, 60, 62, 64 extend from medial side 40 to lateral side
42 of lower sole 30 in Figure 5. Id. H 16—17. Medial and lateral sides 40,
42 comprise the vertical edges of lower sole 30. They form part of the outer
perimeter or outer side or edge of lower sole 30. Id. 116, Fig. 2.
Because the sipes 48, 60, 62, 64 are openings in bottom surface 44 of
lower sole 30 and extend from medial side 40 to lateral side 42 of lower sole
30, the sipes form openings in lateral and medial sides 40, 42 in Figure 5.
The Examiner’s interpretation of the medial and lateral sides as a part
of bottom wear layer 21 of Borel is inconsistent with Appellants’ disclosure.
Borel’s sipes 31—37, 51—57 are spaced away from lateral side 5 and medial
side 6 of lower sole in Figure 1 of Borel. Therefore, the sipes do not extend
transversely from medial side 6 to lateral side 5 as claimed. Final Act. 9, 11.
Thus, we do not sustain the rejection of claims 4—9.
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Appeal 2017-002958
Application 14/051,092
Claims 10 and 11
Appellants argue claims 10 and 11 as a group. See Appeal Br. 10-12.
We select claim 10 as representative, with claim 11 standing or falling with
claim 10. The Examiner finds that Borel discloses a lower sole member
with plural ground engaging members separated from one another by sipes
as recited in claim 10. Final Act. 12—13; Ans. 8—9. Appellants argue that
“separated” requires sipes to keep apart or divide the ground engaging
members and Borel lacks this feature. Appeal Br. 10—11; Reply Br. 4—5.
We agree with the Examiner that Borel discloses six ground engaging
members in Figure 1, and each member is separated from adjacent members
by sipes 31—37. Final Act. 13; Ans. 9. Each ground engaging member also
includes raised elements; however, the raised elements are part of the ground
engaging members, which are separated from one another by sipes 31—37.
Appellants disclose a similar arrangement in which sipes 48 separate
bottom surface 44 into seven ground engaging members 66 in their Figure 5.
Each member 66 also includes circular elements that are not separated from
one another by sipes 48. Thus, we sustain the rejection of claims 10 and 11.
Claims 14 and 15
The Examiner finds that Borel discloses a longitudinal cavity with
regions that are closer to the medial side of the lower sole member than to
the lateral side of the lower sole member as recited in claim 14 and 15. Final
Act. 14—15. We agree with Appellants that this feature is not disclosed in
Borel. Appeal Br. 12. Figure 4 of Borel shows a cavity that is equidistant
from the sides 5, 6 of lower sole. The Examiner’s own findings illustrate the
cavity as being equidistant from the sides of the lower sole member. Final
Act. 10 (annotation of cavity on Figure 1); Ans. 11 (same).
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Appeal 2017-002958
Application 14/051,092
Figure 5 of Borel is a top perspective view. It does not illustrate the
relative spacing of the cavities from the lateral and medial sides as claimed
absent any disclosure in Borel’s specification of such relative spacing. In
addition, Borel’s disclosure that damping layer 45 should provide uniform
behavior over the entire contact surface 20 (Borel | 55) tends to undermine
the Examiner’s finding that Borel teaches an asymmetrical cavity formed in
damping layer 45, particularly when reinforcing layer 41 and comfort layer
110 are illustrated with similar but slightly smaller shapes as damping layer
45 in Figure 2. Thus, we do not sustain the rejection of claims 14 and 15.
Claims 21-24
Because the sipes of Borel do not extend laterally completely across
the transverse extent of the lower sole member from the medial side to the
lateral side, as discussed above for claims 4—9, Borel also does not disclose
sipes through which upper sole member (reinforcing layer 41, comfort layer
110) is visible in a lateral side elevational view as recited in claims 21—24.
Appeal Br. 14. The Examiner’s finding in this regard is not supported by a
preponderance of evidence. Appellants disclose this feature in the Figure 6
and 7 side elevational views that show upper sole 32 visible via sipes 48.
The Examiner’s finding that Borel’s upper sole member (reinforcing
layer 41) is visible through openings 31—37 in lower wear layer 21 using
mirrors or cameras to view the shoe from a different direction (Final Act. 16;
Ans. 14) does not establish that the upper sole is visible via sipes in a lateral
side elevational view as claimed. As Appellants point out, the use of mirrors
or cameras to view the shoe from a different direction means that the view is
not a lateral side elevational view as claimed. Reply Br. 5. Thus, we do not
sustain the rejection of claims 21—24.
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Appeal 2017-002958
Application 14/051,092
Claim 19
Rejected Over Borel and Schindler
Appellants argue that Schindler does not cure the failure of Borel to
disclose a longitudinal groove extending from the sole heel region to the sole
forefoot region as recited in claim 2 from which claim 19 depends. Appeal
Br. 15. Because we sustain the rejection of claim 2 as anticipated by Borel,
this argument is not persuasive and we also sustain the rejection of claim 19.
Claim 25
Rejected Over Borel and Hazenberg
The Examiner finds that Borel teaches plural transversely-extending
sipes (openings 31—37, openings 51—57) but does not teach that these sipes
extend longer than the width of the longitudinal cavity as recited in claim 25.
Final Act. 22. The Examiner finds that Hazenberg teaches a shoe 100 with
sipes (channels 60b, 60c, 60d) that extend completely across lower sole
member 30 from the medial edge to the lateral edge of lower sole member
30 in Figure 2. Id. The Examiner finds that Hazenberg teaches that these
sipes increase dynamic control of the wearer’s movements and also provide
greater impact attenuation. Id. The Examiner determines it would have
been obvious to modify Borel’s sipes in this fashion to extend from the
medial edge to the lateral edge of the lower sole member and thereby have a
length longer than the width of the longitudinal cavity as claimed to achieve
the benefits that Hazenberg teaches for the sipes. Id. Appellants’ argument
that claim 25 is not anticipated by Borel (see Appeal Br. 2—\\ Reply Br. 2—3)
does not apprise us of error in the Examiner’s findings or determination of
obviousness set forth above.
Thus, we sustain the rejection of claim 25.
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Appeal 2017-002958
Application 14/051,092
DECISION
We affirm the rejections of claims 2, 3, 10-13, 16—20, and 25, and we
reverse the rejection of claims 4—9, 14, 15, and 21—24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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