Ex Parte Issler

Board of Patent Appeals and Interferences

Dec 19, 2002

09282672 (B.P.A.I. Dec. 19, 2002)

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not written for publication and is not binding precedent of the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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES E. ISSLER
__________
Appeal No. 2002-1268
Application 09/282,672
___________
ON BRIEF
___________
Before FRANKFORT, MCQUADE, and BAHR, Administrative Patent
Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
James E. Issler appeals from the final rejection (Paper No.
19) of claims 1 through 22, all of the claims pending in the
application.
THE INVENTION
The invention relates to footwear. Representative claims 1
Appeal No. 2002-1268
Application 09/282,672
surface, and an upstanding sidewall integrally molded with and
around a periphery of the midsole;
attaching the upper to the midsole in a single stitching
operation by stitching a thread along a peripheral portion of the
upper and the sidewall of the midsole; and
attaching an outersole having a walking surface and an
attachment surface opposite to the midsole, the outer surface of
the midsole positioned adjacent to the opposed attachment surface
of the outsole.
12. Footwear comprising:
an upper defining a volume for receiving a wearer’s foot and
having an open bottom;
a midsole, having an upper surface enclosing the open bottom
of the upper, an outer surface opposite to the upper surface, and
an upstanding sidewall integrally molded with and around a
periphery of the midsole;
a single stitching seam, attaching the upper to the midsole
along a peripheral portion of the upper and the sidewall of the
midsole; and
an outsole, having a walking surface and an attachment
surface opposite to the walking surface, the outer surface of the
midsole attached to the attachment surface of the outsole.
THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
Boys, II et al. (Boys) 4,783,910 Nov. 15, 1988
Marc 5,068,983 Dec. 3, 1991
Gross 5,077,915 Jan. 7, 1992
Tilles et al. (Tilles) 5,146,698 Sep. 15, 1992
Bates et al. (Bates) 5,493,792 Feb. 27, 1996
Slepian et al. (Slepian) 5,729,917 Mar. 24, 1998
Appeal No. 2002-1268
Application 09/282,672
THE REJECTIONS
Claims 1, 11, 12 and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over either Huff ‘491 or Huff
‘801.
Claims 2 and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the references applied against claim 1
and further in view of Issler.
Claims 3 and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the references applied against claims 2
and 12 and further in view of Rudy.
Claims 4, 5, 15 and 16 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the references applied
against claims 1 and 12 and further in view of Bates.
Claims 6, 9 and 17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the references applied against claims
1 and 15 and further in view of any one of Tilles, Marc, Gross or
Boys.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
Appeal No. 2002-1268
Application 09/282,672
The above statements of rejection mirror those set forth1
in the answer (note: in the answer canceled claim 23 was
Claims 7, 8, 18 and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the references applied
against claims 6 and 15 and further in view of Slepian.
Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the references applied against claims 1
and 12 and further in view of Boys.
Attention is directed to the brief (Paper No. 23) and answer
(Paper No. 24) for the respective positions of the appellant and
the examiner with regard to the merits of these rejections.1
DISCUSSION
The Huff patents, the examiner’s alternative primary
references, have essentially similar, if not identical,
disclosures. Each pertains to a shoe or boot manufactured by2
the so-called Goodyear welt system. Because this system applies
tremendous pressure to the innersole during application of the
welt stitch, the shoes/boots manufactured thereby require a rigid
Appeal No. 2002-1268
Application 09/282,672
innersole board which can make the shoes/boots uncomfortable to
wear (see Huff ‘801 at column 1, lines 17 through 30, and Huff
‘491 at column 1, lines 20 through 33). To solve this problem,
Huff provides a rigid innersole board having detachable pieces at
the heel and forefoot impact areas which remain connected to the
board during the manufacturing process until shortly after the
application of the welt stitch. As described in each patent,
[a]s shown in FIG. 4, the welt stitch (17) is
applied through the rib (13), upper lining material
(27), upper (18), and PVC welt material (19), as is
normal procedure in any shoe or boot manufactured with
the Goodyear welt system. (Ibid.)
The pre-cut detachable pieces (11a, 11b) on the
innersole board (10) are now removed . . . . As best
shown in FIG. 2, the fresh openings (11a’, 11b’) expose
the high density EVA pad (15) that lies on top of the
innersole board (10). In the preferred embodiment, the
two cushioning pads (20a, 20b) are made of polyurethane
and cemented to the high density EVA pad (15) through
the new openings (11a’, 11b’). . . .
As can be seen in FIGS. 2 and 4, a filler (21) of
uniform thickness is die cut to fit inside the rib (13)
and cemented to the innersole board (10). . . .
A shank (23) is applied in its normal position, as
shown in FIGS. 2 and 4 . . . .
Turning now to FIG. 4, the midsole (24) is applied
and stitched to the welt material (19), locking in
place the cushioning pads (20a, 20b), shank (23), and
EVA rib filler (21), and compressing the cushioning
Appeal No. 2002-1268
Application 09/282,672
The examiner (see page 4 in the answer) concedes that
neither Huff patent meets the limitations in independent claims 1
and 12 requiring a midsole having an upstanding sidewall
integrally molded with and around its periphery. Huff’s midsole
24 has no such sidewall. Nonetheless, the examiner likens Huff’s
welt material 19 to an upstanding sidewall or rim extending
around the midsole 24 (see page 3 in the answer), and submits
that
[i]t has been held that forming in one piece an article
which has formerly been formed in two pieces and put
together involves only routine skill in the art.
Howard v[.] Detroit Stove Works, 150 U.S. 164 (1893);
see also In re Heinrich, 268 F.2d 753, 756, 122 USPQ
388, 390 (CCPA 1959). Therefore, it would have been
obvious, to one of ordinary skill in the art at the
time the invention was made, to make the midsole and
the upstanding rim of [e]ither of the Huff references
by forming them as one piece, to decrease cost by
eliminating the steps of separately molding the pieces
and fastening them together [answer, page 4].
As is evident from Figure 4 in the Huff patents, however, if
the welt material 19 were integrally molded with the midsole 24,
the midsole would prevent, after the application of the welt
stitch 17, the removal of the detachable pieces 11a and 11b from
Appeal No. 2002-1268
Application 09/282,672
examiner would completely frustrate Huff’s objective of enhancing
the comfort of shoes and boots manufactured via the Goodyear welt
system. In this light, it is evident that the Huff references
actually would have led the artisan away from the proposed
modification, and that the only suggestion therefor stems from
hindsight knowledge impermissibly derived from the appellant’s
disclosure.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of independent claims 1 and 12, and dependent
claims 11 and 20, as being unpatentable over either Huff ‘491 or
Huff ‘801.
As the other prior art items applied by the examiner do not
cure the foregoing deficiency of the Huff references relative to
the subject matter recited in independent claims 1 and 12, we
also shall not sustain the 35 U.S.C. § 103(a) rejections of
dependent claims 2 through 10, 13 through 19, 21 and 22.
Appeal No. 2002-1268
Application 09/282,672
SUMMARY
The decision of the examiner to reject claims 1 through 22
is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2002-1268
Application 09/282,672
TIMOTHY A. FRENCH
FISH & RICHARDSON
225 FRANKLIN STREET
BOSTON, MA 02110-2804