Ex Parte HottingerDownload PDFPatent Trial and Appeal BoardFeb 22, 201310905144 (P.T.A.B. Feb. 22, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte MICHAEL HOTTINGER ________________ Appeal 2010-000131 Application 10/905,144 Technology Center 3700 ________________ Before MICHAEL L. HOELTER, LYNNE H. BROWNE and CARL M. DEFRANCO, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000131 Application 10/905,144 2 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1, 5, 6, 8-10, 19 and 21-24. App. Br. 8. Claims 2-4, 7, 11-18 and 20 have been canceled. Clms. App’x. 21-25. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The disclosed subject matter “relates to a shoe with a sole that is filled with a loose fill material such as crumb rubber for shock absorption, cushionability, energy return, added comfort and stability.” Spec. [Para 2]. Claim 1 is illustrative of the claims on appeal and is reproduced below: 1. A shoe comprising: an outsole which contacts the ground; an insole upon which a foot rests; and a midsole located between the outsole and the insole, wherein the midsole absorbs impact by providing a loose crumb rubber derived from rubber tires throughout the midsole of the shoe to cushion any force exerted upon the shoe, wherein said loose crumb rubber is in direct contact with said outsole and said insole. REFERENCES RELIED ON BY THE EXAMINER Oatman US 4,658,515 Apr. 21, 1987 Bauman US 5,693,714 Dec. 2, 1997 Johnson US 2005/0028401 A1 Feb. 10, 2005 THE REJECTIONS ON APPEAL 1. Claims 1, 5, 6, 8-10, 19 and 21-24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Johnson and Oatman. Ans. 3. 2. Claims 1, 5, 6, 8-10, 19 and 21-24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Johnson, Oatman and Bauman. Ans. 5. Appeal 2010-000131 Application 10/905,144 3 ANALYSIS In accordance with the Examiner’s first rejection, all the claims are rejected over Johnson and Oatman while in accordance with the Examiner’s second rejection, all the claims are rejected over Johnson, Oatman and Bauman. Ans. 3, 5. We address the Examiner’s second rejection infra and need not reach the merits of the first rejection but we also address Appellant’s arguments presented with respect to the Examiner’s first rejection as they are incorporated into Appellant’s response to the Examiner’s second rejection. App. Br. 18. Appellant argues claims 1, 5, 6, 8, 19 and 21-24 together as a group. App. Br. 18-19, see also 11-16. We select claim 1 for review with claims 5, 6, 8, 19 and 21-24 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Dependent claims 9 and 10 are argued as a separate group and will be addressed separately. App. Br. 19-20, see also 17. The rejection of claims 1, 5, 6, 8, 19 and 21-24 as being unpatentable over Johnson, Oatman and Bauman The Examiner relies on Johnson as disclosing all the limitations of claim 1 “except for the fill material being loose fill material of crumb rubber made from rubber tires.” Ans. 5. The Examiner relies on the teachings of Oatman for disclosing “a sole to absorb impact by providing a loose fill material (plurality of particles 40).” Ans. 5. Oatman teaches that “particles 40 may move around in apertures 35,” that “particles 40 may comprise hollow polystyrene or polyethelyene beads,” that “particles 40 have resilient properties” and “are resistant to conduction of heat.” Oatman 2:60-66, see also Ans. 6. In view of these teachings, the Examiner finds that it would have been obvious “to make the midsole of Johnson with a plurality of Appeal 2010-000131 Application 10/905,144 4 apertures and to make the fill material from loose polystyrene or polyethelyene beads as taught by Oatman to provide better resistant [sic] to conduction of heat and better cushioning.” Ans. 6. The Examiner’s stated basis for the combination of Johnson and Oatman is that if “a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” Ans. 6-7. The Examiner thereafter relies on Bauman for disclosing “using crumb rubber particles as fillers,” particularly as fillers “used in shoe soles,” and that “[o]ne source of such crumb rubbers is the recycling of used automotive tires.” Ans. 7, see also Bauman 1:20-26, 1:63-64, 3:31-39, 8:41- 43 and 13:20. The Examiner finds that it would have been obvious “to use crumb rubber tire for the fill material of Johnson as taught by Bauman for better resilient [sic] and pliability and to make the shoe more environmentally friendly.” Ans. 7. The Examiner’s stated basis for this combination is that “the substitution of one known element for another similar element would have yielded predictable results to one of ordinary skill in the art at the time of the invention.” Ans. 7. Appellant contends that while Johnson discloses a boot having a sole, a removable insole and a cavity filler 400 between the two, Johnson’s “cavity filler (400) is a single piece unit.” App. Br. 11. As indicated supra, the Examiner found that it would have been obvious to make Johnson’s midsole of a plurality of loose beads since such a technique was used in Oatman. Accordingly, we agree with the Examiner that “one cannot show Appeal 2010-000131 Application 10/905,144 5 nonobviousness by attacking references individually where the rejections are based on combinations of references.” Ans. 7. Appellant also contends that unlike Johnson, the inventive midsole contains compartments “that are permanently filled with loose particulate material” and further that “the midsole of the present invention is a distinct layer permanently formed” of filled compartments (App. Br. 11-12), but the claims are silent regarding permanency. Accordingly, and for reasons previously stated, we are not persuaded by Appellant’s contention that “Johnson clearly does not provide a midsole containing loose fill material made of crumb rubber as claimed in the present application.” App. Br. 12. Regarding Oatman, Appellant contends that “Oatman does not offer any teachings directed to a midsole of a shoe as claime din [sic] the present application, but instead teaches of an aftermarket insert that a consumer can place on top of the insole of an existing shoe.” App. Br. 12. However, the Examiner did not rely on Oatman for teaching a midsole but instead for teaching the use of “loose fill material” (i.e., beads) in a shoe sole. Ans. 5. Appellant also contends that the combination of Johnson and Oatman “would not be an improvement” such that one skilled in the art would employ Oatman’s technique in Johnson’s shoe. App. Br. 13. More specifically, Appellant contends that it is not clear “why one of ordinary skill in the art would want to replace [Johnson’s] one piece insert with loose fill” because “it would be very inconvenient for a person to fill a cavity in their shoe with loose particles.” App. Br. 14. The Examiner’s stated reason to combine the teachings of Johnson with Oatman’s loose fill material is to provide better resistance to heat conduction and to provide better cushioning. Ans. 6. Appellant does not indicate how the Examiner’s stated basis lacks Appeal 2010-000131 Application 10/905,144 6 articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See App. Br. 14. Further, our reviewing court has provided instruction that just because better alternatives exist in the prior art, that does not mean that an inferior combination is inapt for obviousness purposes. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Accordingly, Appellant’s contention is not persuasive. Appellant further contends that “crumb rubber loose fill has not been shown to be known in the art of shoe midsoles” (App. Br. 15) but here, Appellant does not address the express teachings of Bauman which clearly lists “shoe soles” as one possible use of crumb rubber (Bauman 3:36-39). Appellant also contends that crumb rubber “does not meet the purpose of the fill particles needed in Oatman” and that “such a substitution would teach away from the patent of Oatman.” App. Br. 16. Appellant’s contention is not persuasive since the “prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Further, we will not read into a reference a teaching away from a proposed combination where no such language exists. See DyStar Textilfarben GmbH v. C.H. Patrick Co. 464 F.3d 1356, 1364 (Fed. Cir. 2006). Appellant further contends that “the Bauman reference teaches away from the loose particles claimed in the invention” because while Bauman teaches the use of crumb rubber, it is “not as loose fill” but instead is “blended with an elastomer for forming a solid shoe sole.” App. Br. 18, see also Reply Br. 10. Bauman does indeed teach the use of loose crumb rubber Appeal 2010-000131 Application 10/905,144 7 and Bauman also discloses that such rubber is blended and subsequently molded. Bauman 13:35-36, 14:24-55. However, Bauman was not relied on for teaching the use of loose fill material or its subsequent molding; instead, Bauman was relied on to teach that the use of crumb rubber from tires as a filler in shoe soles is known. Ans. 7, see also Bauman 1:20-26, 3:31-39. The Examiner relied on Oatman for disclosing the use of loose material in soles. Ans. 5. Appellant also asserts that the Examiner’s response relied on “hindsight reasoning” because “the Examiner has not shown any teaching of the use of crumb rubber loose fill in a midsole of a shoe.” Reply Br. 7. However, this assertion is not persuasive as Oatman clearly discloses the use of loose fill in shoe soles (figs. 2, 3), and Bauman clearly discloses the use of crumb rubber in shoe soles (Bauman 1:20-26, 3:31-39). The Examiner relies on the substitution of one known element for another to yield a predictable result. Ans. 7. We are not persuaded the Examiner improperly relied on the use of crumb rubber as loose fill in a shoe sole nor are we persuaded by Appellant’s contention that there “is simply no reason for one of ordinary skill in the art to use crumb rubber absent this application.” Reply Br. 7. Appellant also contends that a new product-by-process basis for rejecting the claims was raised for the first time by the Examiner in the Answer. Reply Br. 9; Ans. 8. However, the analysis above does not rely on any such product-by-process finding by the Examiner and thus, even if Appellant’s contention has merit, it is nevertheless moot. Appeal 2010-000131 Application 10/905,144 8 Accordingly, and based on the record presented, we sustain the Examiner’s rejection of claims 1, 5, 6, 8, 19 and 21-24 as being obvious over Johnson, Oatman and Bauman. The rejection of claims 9 and 10 as being obvious over Johnson, Oatman and Bauman Claims 9 and 10 each depend directly from claim 1 and further recite specific material for the insole (claim 9) and the outsole (claim 10). The Examiner finds that Oatman discloses that it is known to use these materials in the manufacturing of soles. Ans. 7, referencing Oatman 2:29-44. The Examiner further relies on In re Leshin, 277 F.2d 197 (CCPA 1960) for the holding that it is within the general skill of a worker in the art to select a known material on the basis of its suitability for its intended use as a matter of obvious design choice. Ans. 7. Appellant contends that the “statements offered by the Examiner as to the Oatman reference are not persuasive” but does not dispute that Oatman discloses the use of “foamed” polymers as well as the use of synthetic material in the manufacture of shoe soles. Reply Br. 10, Oatman 2:37-44. Nor does Appellant contend that the specifically claimed material functions differently from those disclosed in Oatman. Accordingly, we sustain the Examiner’s rejection of claims 9 and 10. DECISION The rejections of claims 1, 5, 6, 8-10, 19 and 21-24 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Appeal 2010-000131 Application 10/905,144 9 mls Copy with citationCopy as parenthetical citation