Ex Parte Hines

Board of Patent Appeals and Interferences

Aug 21, 2001

09289171 (B.P.A.I. Aug. 21, 2001)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WILLIAM J. HINES
__________
Appeal No. 2001-1398
Application 09/289,171
___________
ON BRIEF
___________
Before CALVERT, FRANKFORT, and MCQUADE, Administrative Patent
Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
William J. Hines appeals from the final rejection of claims
1 through 3, 5, 8 through 10 and 21. Claims 6, 7 and 12 through
20, the only other claims pending in the application, stand
withdrawn from consideration pursuant to 37 CFR § 1.142(b).
THE INVENTION
Appeal No. 2001-1398
Application 09/289,171
an athletic training shoe insert form constructed to receive
the particles of weighted material embedded therein and to hold
the particles of weighted material in a fixed position; and
the athletic training shoe insert, including the particles
of weighted material and the insert form, being designed to be
received within an athletic shoe so as to allow a human foot to
be placed comfortably in the athletic shoe and to substantially
increase the weight of the athletic shoe for training purposes.
THE PRIOR ART
The references relied on by the examiner as evidence of
obviousness are:
Shanahan 3,517,928 Jun. 30, 1970
Miyata 5,758,435 Jun. 2, 1998
THE REJECTIONS
Claim 21 stands rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly
claim the subject matter the appellant regards as the invention.
Claims 1 through 3, 5, 8 through 10 and 21 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Shanahan in
view of Miyata.
Attention is directed to the appellant’s main and reply
briefs (Paper Nos. 12 and 14) and to the examiner’s answer (Paper
Appeal No. 2001-1398
Application 09/289,171
DISCUSSION
I. Grouping of claims
On page 4 in the main brief, under the “GROUPING OF CLAIMS”
heading, the appellant states that “[a]ll of the claims are
rejected and have been argued as a single group.” Hence,
pursuant to 37 CFR § 1.192(c)(7) we shall decide the appeal as to
the 35 U.S.C. § 103(a) rejection on the basis of representative
claim 1 alone, and claims 2, 3, 5, 8 through 10 and 21 shall
stand or fall therewith.
II. The 35 U.S.C. § 112, second paragraph, rejection
The explanation of this rejection asserts that claim 21
is indefinite because
appellant is claiming the embodiment that has
“particles of weighted material”. However, the last
three lines of claim 21, refer to the insert being
molded and this would appear to be directed to the
embodiment of thin metal strips 11 of relatively soft
lead, see [specification] page 10, lines 9-14, and
therefore the claim is unclear and indefinite [answer,
pages 3 and 4].
The examiner’s concern here is unfounded. Although the
underlying specification might not expressly state that the
Appeal No. 2001-1398
Application 09/289,171
to a human foot” as recited in the last three lines of the claim,
the specification as a whole would reasonably convey to the
artisan that the recited insert form (particles of weighted
material and flexible porous material intermixed) would have this
capability. At most, the lack of an express statement to this
effect in the specification poses a problem under 37 CFR
§ 1.75(d)(1) which is easily correctable by amendment to the
specification. 2
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 112, second paragraph, rejection of claim 21.
II. The 35 U.S.C. § 103(a) rejection
Shanahan, the examiner’s primary reference, discloses a
weighted shoe for strengthening the muscles of the leg and/or
treating physical defects. The shoe comprises an upper 2, an
inner sole 10 and a bottom sole 18. The inner sole 10 supports a
flat, weight-receiving member 20 having substantially the same
shape and size as the inner sole. Member 20, which is
Appeal No. 2001-1398
Application 09/289,171
approximately one-half inch thick and made of a material such as
leather, includes a plurality of openings which may be
interchangeably filled with plugs 40 of the material (e.g.,
leather) cut out to form the openings or with similarly shaped
weights 44 of lead or other heavy metal to permit the weight of
the shoe to be adjusted and varied as desired (see column 3,
lines 31 through 51). Although the Shanahan reference teaches
that the member 20 is permanently built into the shoe (see column
2, lines 9 through 12 and 27 through 33), it also states that the
“weight-receiving member 20 will normally be permanently
connected to the (insole) 10" (column 3, lines 52 and 53),
thereby suggesting that the member can be removably placed in
the shoe.
Miyata also discloses a shoe for strengthening the muscles
of the leg. In general, the sole 1 of the shoe comprises an
insole 11, a middle sole 10, a rubber layer 14 and an outsole 9
(see Figures 1 and 2). In one embodiment (see Figures 1 through
3), the outsole 9 defines a plurality of weight chambers 6 which
Appeal No. 2001-1398
Application 09/289,171
9 can maintain high flexibility while keeping high resilience”
(column 3, lines 6 through 8). In a second embodiment (see
Figure 7), the outsole 9 includes the metallic grains 7 embedded
directly therein. Miyata also discloses that the weights 8 may
be embedded in weight chambers 6 formed in the rubber layer 14,
and that
the weight chambers 6 may be formed in the cup-shaped
insole 11 to embed the weights 8 therein. In this
arrangement, since the cup-shaped insole 11 is
detachable, the weights 8 are freely detachable from
the shoe if it is desired to use the shoe as an
ordinary light-weight training shoe (column 4, lines 60
through 65).
In proposing to combine the foregoing references to reject
the appealed claims, the examiner concludes that “[i]t would have
been obvious to replace the weights of the insert of Shanahan
with particles of weighted material enclosed in a flexible
material, as taught by Miyata, to provide better flexibility and
cushioning characteristics” (answer, page 4).
The appellant’s position that this reference combination
rests on impermissible hindsight focuses on alleged deficiencies
Appeal No. 2001-1398
Application 09/289,171
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art. In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). Thus, non-obviousness cannot be established by
attacking references individually where the rejection is based
upon the teachings of a combination of references. In re Merck &
Co., Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir.
1986). Notwithstanding any individual deficiencies of the
references relative to the claimed subject matter, Miyata’s
teaching of training shoe weights which are highly resilient and
flexible in keeping with the desired resilience and flexibility
of such shoes would have furnished the artisan with ample
suggestion or motivation to substitute weights of this sort for
Shanahan’s heavy metal weights in order to provide the Shanahan
shoe with increased resilience and flexibility while maintaining
Shanahan’s capability of adjusting and varying the weight of the
shoe.
Appeal No. 2001-1398
Application 09/289,171
removable. Thus, this member, with its plugs and/or weights, can
be viewed as an “insert” in the sense recited by claim 1.
Moreover, the “insert” limitation also finds response in each of
the resilient and flexible weights added to the Shanahan shoe in
view of Miyata. Indeed, the limitations in claim 1 are so broad
that they are fully met by Miyata alone, specifically the Miyata
embodiment wherein weight chambers 6 are formed in removable
insole 11 to embed weight chambers 8 therein, such that the
weighted insole can be removed from the shoe to attain an
ordinary light-weight training shoe.3
In light of the foregoing, the applied references (Shanahan
and Miyata) justify the examiner’s conclusion that the
differences between the subject matter recited in claim 1 and the
prior art are such that the subject matter as a whole would have
been obvious to a person having ordinary skill in the art at the
time the invention was made. Therefore, we shall sustain the
standing 35 U.S.C. § 103(a) rejection of claim 1, and claims 2,
3, 5, 8 through 10 and 21 which stand or fall therewith, as being
Appeal No. 2001-1398
Application 09/289,171
SUMMARY
The decision of the examiner:
a) to reject claim 21 under 35 U.S.C. § 112, second
paragraph, is reversed; and
b) to reject claims 1 through 3, 5, 8 through 10 and 21
under 35 U.S.C. § 103(a) as being unpatentable over Shanahan in
view of Miyata is affirmed.
AFFIRMED
IAN A. CALVERT )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
CHARLES E. FRANKFORT )
Administrative Patent Judge ) INTERFERENCES
)
Appeal No. 2001-1398
Application 09/289,171
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