Ex Parte KooDownload PDFPatent Trial and Appeal BoardSep 30, 201412464812 (P.T.A.B. Sep. 30, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN C. S. KOO ____________ Appeal 2012-009263 Application 12/464,812 Technology Center 3700 ____________ Before ANNETTE R. REIMERS, JILL D. HILL, and MICHAEL L. WOODS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1,2 John C. S. Koo (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision and to reject under 35 U.S.C. § 103(a) claims 1–16 as unpatentable over Keen (US 2007/0011914 A1; iss. Jan. 18, 2007) and 1 The subject application is a continuation-in-part of Application No. 12/098,814. See Appeal Br. 2. 2 The Examiner has withdrawn the rejection of claims 1–3 and 9 under 35 U.S.C. § 102(b) as anticipated by Cass (US 6,029,376; iss. Feb. 29, 2000). See Ans. 4; Reply Br. 2. Appeal 2012-009263 Application 12/464,812 2 Karasawa (US 6,718,658 B2; iss. Apr. 13, 2004).3 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter “pertains to shoes/footwear.” Spec. 1, para. 2, Figs. 12–14. Claim 1, the sole independent claim, is representative of the claimed subject matter and recites: 1. A shoe, comprising: a sole having a main structure; a strap anchor that has a plurality of attachment points and is at least partially embedded within the main structure; and a strap that is at least one of attached to and looped through at least one of the attachment points of said strap anchor and that is configured for strapping the shoe to a wearer’s foot, wherein the strap anchor comprises a plurality of strap anchor components attached in a unit, each said strap anchor component including a plurality of the attachment points and being at least partially embedded within the main structure. ANALYSIS Independent claim 1 calls for a shoe including a strap anchor, “wherein the strap anchor comprises a plurality of strap anchor components 3 On the record before us, Appellant does not appeal the Examiner’s provisional obviousness-type double patenting rejection of claims 1–16 over claims 1–21 of co-pending Application No. 12/098,814 (the ’814 application). Appeal Br. 3; Final Rej. 2–3. Accordingly, the provisional obviousness-type double patenting rejection of claims 1–16 is not addressed in this opinion. Appeal 2012-009263 Application 12/464,812 3 attached in a unit.” Appeal Br. C-1, Clms. App. The Examiner found that “Keen does not teach the strap anchor comprising a plurality of separate strap anchor components attached in a unit instead of being a one piece integral unit.” Ans. 6. The Examiner found that Karasawa discloses a method for making ready-made shoes fitting individuals’ foot shapes; this method includes the steps of forming a separate forefoot part (strap anchor and attachment points) and a separate rearfoot part, and connecting them detachably by means of a connecting means to form a shoe body. This makes it possible to easily produce sorts of shoes of different widths for each size by forming forefoot parts of different widths and/or rearfoot parts of different widths, selecting any of these parts of different widths and connecting the forefoot and rearfoot parts. Id. The Examiner concluded that it would have been obvious to one of ordinary skill in the art at the time the invention was made to make the strap anchor of [Keen] from plurality of separate strap anchor components as taught by Karasawa to make it possible to easily produce sorts of shoes of different widths for each size by forming forefoot parts of different widths and/or rearfoot parts of different widths, selecting any of these parts of different widths and connecting the forefoot and rearfoot parts for better fit adjustment. Id. at 67. The Examiner further concluded that it would have been obvious for a person of ordinary skill in the art “to make the strap anchor of Keen from a plurality of separate strap anchor components, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art.” Id. at 7 (citing Nerwin v. Erlichman, Appeal 2012-009263 Application 12/464,812 4 168 USPQ 177, 179 (Bd. Pat. Int. 1969)). Appellant contends that the Examiner’s proposed structure would not have been obvious in view of the teachings of Keen and Karasawa. Appeal Br. 15. Specifically, Appellant contends that Keen repeatedly emphasizes that its housing 104 (which the Examiner asserts [to be the] recited strap anchor) must be of a unitary or one-piece structure in order to appropriately secure the wearer’s foot. See, e.g., paragraphs [0046], [0047], [0051], [0052], [0072], [0083] and [0138] of Keen. Using a two-part construction approach, as proposed by the Examiner, would have been inconsistent with using Keen’s housing 104 to secure the wearer’s foot. Id. at 13. In response to Appellant’s argument, the Examiner took the position that [t]he combination of Keen-Karasawa would not defeat Keen’s goal, since Keen discloses that the specific placement, dimensions and/or angles of the attachment points/fingers 112 may differ from what is shown without departing from the spirit or scope of the invention. The molded attachment points/fingers 112 of the upper 104a increase airflow to the foot and allow for breathability and dissipation of water, as well as exceptional fit. The attachment points/fingers 112 are preferably flexible enough to work independently, adjusting to the contours of the wearer’s foot. This adaptability allows the shoe to fit a large subject population having varying foot geometries. The attachment points/fingers 112 enable fit adjustment, with an emphasis on foot instep adjustment as well as midfoot and forefoot width adjustment. The geometry of the upper 104a Appeal 2012-009263 Application 12/464,812 5 allows for greater contour to the foot than in conventional footwear. The fit of articles of footwear of the present invention can accommodate variances in forefoot height and girth expected within the general population while providing a secure and comfortable fit for each wearer. Furthermore, the attachment points/fingers 112 are able to accommodate variations among the left and right feet of the wearer. As seen in FIG. 1 (b), the attachment points/fingers 112, the heel support 114 and the midsole 104b may each include lacing channels or paths 116 adapted to receive a lace therein. Ans. 11–12. We disagree with the Examiner’s position for the following reasons. At the outset, we agree with Appellant that the Examiner does not respond to Appellant’s argument (i.e., “Keen repeatedly emphasizes that its housing 104 (which the Examiner asserts [to be the] recited strap anchor) must be of a unitary or one-piece structure in order to appropriately secure the wearer’s foot”). See Reply Br. 4. We further agree with Appellant that the Examiner’s explanation (see Ans. 11–12) “simply indicates that Keen already includes a structure for adapting to the size and shape of the wearer’s foot.” Reply Br. 4. In other words, the reason proffered by the Examiner to modify the teachings of Keen, i.e., “to easily produce sorts of shoes of different widths for each size by forming forefoot parts of different widths and/or rearfoot parts of different widths, selecting any of these parts of different widths and connecting the forefoot and rearfoot parts for better fit adjustment” (see Ans. 7), appears to already be performed by the Keen’s attachment points/fingers 112. The Examiner has not provided any findings that Keen recognized a problem with the attachment points/fingers 112. Appeal 2012-009263 Application 12/464,812 6 Without persuasive articulated reasoning based on rational underpinning for modifying the reference as proposed, the Examiner’s rejection appears to be the result of hindsight analysis. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness[.]”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Therefore, absent hindsight, we fail to see why one having ordinary skill in the art would have been led to replace the housing (strap anchor) of Keen with the separate strap anchor components of Karasawa, as the Examiner proposed. Moreover, rejections based on 35 U.S.C. § 103 must rest on a factual basis. In making such a rejection, the Examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in the factual basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). The Examiner’s statement that “it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art” (see Ans. 7, 12) is not supported in the record by underlying factual evidence, and thus cannot properly serve as a basis for concluding that it would have been obvious to a person of ordinary skill in the art to make Keen’s housing (strap anchor) 104 from separate strap anchor components. Accordingly, for the foregoing reasons, the Examiner’s rejection of claims 1–16 as unpatentable over Keen and Karasawa cannot be sustained. Appeal 2012-009263 Application 12/464,812 7 DECISION We REVERSE the decision of the Examiner to reject claims 1–16. REVERSED llw Copy with citationCopy as parenthetical citation