Ex Parte Koo

Board of Patent Appeals and Interferences

Aug 28, 2009

10613741 (B.P.A.I. Aug. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOHN C. S. KOO
__________

Appeal 2009-002670
Application 10/613,741
Technology Center 3700
__________

Decided: August 28, 2009
__________

Before ERIC GRIMES, LORA M. GREEN, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
shoe. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
STATEMENT OF THE CASE
Claims 1-36 are on appeal. Claims 1, 9, and 21 are representative and
read as follows:
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1. A shoe comprising:

(a) a bottom surface that is adjacent to the ground in normal use and
that has a plurality of indentations, with lower extending portions between
the indentations;

(b) a sole that forms at least a portion of the bottom surface;

(c) an upper portion extending above the sole; and

(d) a plurality of small particles bonded to at least some of the lower
extending portions, but wherein each of the plurality of indentations is
predominantly uncoated with said small particles.

9. A shoe according to claim 1, wherein the small particles comprise
metal.

21. A shoe according to claim 1, wherein the small particles are
bonded using a temporary adhesive that allows the particles to wear off
during normal outdoor use.

The claims stand rejected under 35 U.S.C. § 103(a) as follows:
• claims 1-8, 10-20, and 24-36 in view of Shin1 and Root;2
• claim 9 in view of Shin, Root and Bible;3 and
• claims 21-23 in view of Shin, Root and Schaffer.4

1 Shin, US 4,658,514, Apr. 21, 1987
2 Root, US 2,793,136, May 21, 1957
3 Bible, US 4,779,360, Oct. 25, 1988
4 Schaffer et al., US 5,276,981, Jan. 11, 1994
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OBVIOUSNESS I
Issue
The Examiner has rejected claims 1-8, 10-20, and 24-36 under 35
U.S.C. § 103(a) as being obvious in view of Shin and Root.
The Examiner finds that Shin discloses “a shoe comprising a bottom
surface that … has a plurality of protrusions 76 and a plurality of
indentations … with only the protrusions having ridges 78 applied thereto to
aid in affording traction to the user” (Answer 3). The Examiner finds that
Root discloses bonding “a plurality of small articles to the bottom of [a] shoe
in place of ridges to provide [a] better slip-resistant surface” (id.). The
Examiner concludes that “it would have been obvious, to one of ordinary
skill in the art … to replace the ridges on the lower extending portions of the
protrusions of Shin ‘514 with the adhesively bonding [sic] small particles as
taught by Root ‘136 to provide [a] better slip-resistant surface” (id.).
Appellant contends that the Examiner erred in finding that one of skill
in the art would have been motivated to combine the particles of Root with
the running shoe of Shin (Appeal Br. 11).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that one of skill in the art would have
been motivated to combine Root’s particles with Shin’s running shoe?
Findings of Fact
1. Shin discloses a “running shoe having a sole structure that includes
an outsole … having a thickened section extending the full width of the sole
structure and positioned to underlie the ball of the foot,” with a “plurality of
parallel slots … cut in the thicker section” (Shin, abstract).
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2. Figure 3A of Shin is shown below:

Figure 3A shows an enlarged fragmentary cross-sectioned view of the
outsole of Shin’s shoe (id. at col. 2, ll. 21-29).
3. Shin discloses that
the slots 50, which traverse the ball section 44 of the outsole,
define three major bar treads 76 that extend across the ball of
the sole structure. These bars are in turn provided with several
small ridges 78 on their lower surfaces to maximize the traction
afforded by the bars. The ridges 78, because they are relatively
narrow in cross-section measured from front to rear, are quite
flexible so as to provide an added cushioning effect at the ball
area to reduce shock upon impact.
(Id. at col. 3, l. 65-col. 4, l. 6)
4. Root discloses “slip resistant surfaces particularly suitable for
articles of footwear” (Root, col. 1, ll. 15-16).
5. Root discloses that the slip resistant surface can be formed “by
coating or impregnating a surface 12 … with a relatively thick layer 14 of a
fluid dispersion of finely divided resin in plasticizer and thereafter
distributing angular or rough … resin granules 16 on or in the resin
dispersion” (id. at col. 3, ll. 1-8).
6. Root discloses that its method is also applicable to stair treads,
flooring, and handholds (id. at col. 3, ll. 14-15).
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7. Root discloses that granules may vary in size, but are preferably
1/16 inch to 1/2 inch in diameter (id. at col. 4, ll. 53-55).
8. Root discloses that “the resin layer should have a thickness … at
least of the order of thickness of the particles” (id. at col. 3, ll. 30-33).
9. Root discloses that suitable resins include vinyl chloride-vinyl
acetate copolymers, polyvinyl chloride, polymethyl methacrylate, and vinyl
chloride-vinylidene chloride copolymers (id. at col. 4, ll. 33-39).
10. Root discloses that “[i]n general, the granules may be of the same
types of resin as the resin … dispersion” (id. at col. 5, ll. 8-10).
11. Root discloses that the sole of a woolen muk-luk was given a
coating of a resin dispersion of a sufficient thickness to impregnate the wool
felt sole to a depth of about 1/8 inch and that particles, with an average
thickness of 1/8 inch, were sprinkled on this surface (id. at col. 5, ll. 35-50).
12. Root discloses that the dispersion “may also include finely
divided or fibrous fillers” (id. at col. 4, ll. 49-51).
Principles of Law
“[W]hen the question is whether a patent claiming the combination of
elements of prior art is obvious,” the answer depends on “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007).
The obviousness analysis “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id. at
418.
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“The fact that the motivating benefit comes at the expense of another
benefit … should not nullify its use as a basis to modify the disclosure of
one reference with the teachings of another. Instead, the benefits, both lost
and gained, should be weighed against one another.” Medichem S.A. v.
Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).
Analysis
Claim 1 is directed to a shoe comprising a bottom surface that has
lower extending portions between a plurality of indentations, and small
particles bonded to at least some of the lower extending portions, but having
the indentations “predominantly uncoated with said small particles.”
Shin discloses a shoe with a bottom surface that has lower extending
portions between a plurality of indentations. Shin also discloses that the
lower extending portions comprise ridges for traction. Root discloses
footwear coated on the bottom with a slip resistant surface that comprises
resin granules anchored in a supporting matrix. In view of these disclosures,
we conclude that it would have been obvious to one of skill in the art to
modify Shin’s shoe to provide Root’s granules on the lower extending
portions of Shin’s shoe in order to provide increased traction as taught by
Root, because Shin teaches including traction-increasing ridges in its shoe.
Replacing Shin’s ridges with Root’s granules is no more than the predictable
use of prior art elements according to their established functions.
Appellant argues that one of skill in the art would not have been
motivated to combine the cited references because Shin’s running shoe is
unlikely to benefit from hard resin granules (Appeal Br. 9).
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This argument is not persuasive. Shin discloses that its running shoe
includes ridges on the bottom for increasing traction, and Root discloses that
its particles also increase traction. Thus, a person of ordinary skill in the art
would recognize that Root’s particles provide the same benefit as Shin’s
ridges.
Appellant argues that Shin’s ridges are disclosed as having two
purposes: to maximize traction and to provide cushioning (Appeal Br. 10).
Appellant argues that one of skill in the art would not have been motivated
to coat Shin’s shoe with hard resin particles because Root’s particles provide
a different type of traction than ridges and particles would not provide a
cushioning effect (id.). Along the same line, Appellant argues that replacing
Shin’s ridges with Root’s particles “would require several additional
manufacturing steps” (id.).
This argument is not persuasive. Assuming for the sake of argument
that Root’s particles would not provide the cushioning effect of Shin’s
ridges, and would require additional manufacturing steps, one of skill in the
art would recognize that the substitution of particles for ridges might involve
some trade-off of benefits. As Appellant has pointed out, Root’s particles
provide “traction when the protruding hard granules dig into a relatively soft
surface” (Appeal Br. 10). A person of ordinary skill in the art would
recognize that Root’s particles therefore would be preferred for a running
shoe intended for a soft surface like grass or a running track, even if they
resulted in loss of cushioning or additional manufacturing steps.
Appellant argues that “Root’s process requires a relatively thick layer
of fluid dispersion (e.g., at least 1/8 inch thick)” and that the “thickness of
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this layer … makes it impossible, or at least highly impractical, to
differentially apply … particles to the bottom of Shin’s running shoe;” i.e.,
“to coat Shin’s bar treads 76 but avoid coating its slots 50” (Appeal Br. 10).
This argument is not persuasive. Although Root discloses an example
in which a wool felt sole was impregnated with a 1/8 inch layer of coating
material, Root also discloses that its particles can be as small as 1/16 inch
and that the resin can be roughly as thick as the particles. Thus, one of skill
in the art would recognize that Root’s product does not require a 1/8 inch
layer of coating material. In addition, claim 1 requires only that the
indentations are “predominantly uncoated” with particles, and therefore
encompasses products that have some incidental particle coating in the
indentations. Appellant has not shown that Root’s method is incapable of
producing a product within the scope of the instant claims.
Appellant argues that “it is unclear how well Root’s mixture would
adhere to Shin’s relatively narrow bar treads” and that there “is simply no
evidence to indicate that such an application would work as a practical
matter” (Appeal Br. 11).
This argument is not persuasive. Root discloses the application of its
particles to several different substrates, e. g. shoes, a handhold, and floors.
Appellant has provided no evidence to show that applying Root’s method to
Shin’s shoe would not have been well within the level of ordinary skill in the
art.
Appellant has argued separately claims 6 and 35, 7, 8, and 33 (Appeal
Br. 12-16). Claims 6 and 35 require that “the small particles comprise a
fabric material” and “have been applied using a flocking technique.” Claims
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7 and 8 require that particles comprise leather and rubber, respectively.
Claim 33 requires that “the small particles are bonded to the different areas
of the bottom surface using a backing sheet material.”
With respect to claims 6 and 35, Appellant argues that the
“Examiner’s only mention of using fabric material is in reference to column
4, lines 49-51 of Root,” which only discloses that “finely divided or fibrous
fillers are included within the dispersion” not on the surface (Appeal Br. 12-
13).
Appellant’s argument is persuasive. Root discloses that its dispersion
(i.e., coating material) can include “fibrous fillers” but that the granules that
are on the surface of the dispersion are “angular or rough” resin granules (FF
5). The claims, however, recite that the particles “comprise” fabric material.
There is no information in Root that the particles, themselves, are made of
fabric or include fabric. Thus, we agree with Appellant that the Examiner
has not adequately shown that the cited references would have suggested the
limitations of claims 6 and 35.
With respect to claims 7 and 8, Appellant argues that particles made
of leather or rubber are not suggested by the combination of references
(Appeal Br. 13-16).
The Examiner reasons that Root “discloses that a variety of particles
can be used for forming the slip resistant surfaces” and that “it would have
been obvious to one of ordinary skill in the art at the time the invention was
made, to make the particles … out of natural or synthetic leather, [or] natural
or synthetic rubber, … as these materials are well known and used in the art
for aiding in slip prevention” (Answer 6).
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Appellant’s argument is persuasive. Root discloses several suitable
resins for the resin dispersion and discloses that its granules may be of the
same types of resin as the resin dispersion. But Root does not expressly
disclose that leather or rubber may be used as particles, and the Examiner
has not adequately shown that those of skill in the art would have recognized
leather or rubber particles as an obvious substitution for the “angular or
rough” particles used by Root (FF 5). Thus, the Examiner has not
adequately explained how Root’s disclosure would have suggested the
natural and synthetic leather and rubber particles of claims 7 and 8.
With respect to claim 33, Appellant argues that particles bonded using
a backing sheet material are “not disclosed or suggested by the applied art.
In fact, the Examiner has not even argued that it is.” (Appeal Br. 16).
Appellant’s argument is persuasive. The Examiner has not addressed
the limitation of claim 33 and thus has not adequately explained how the
cited references would have suggested the limitation of claim 33.
Conclusions of Law
The evidence of record supports the Examiner’s conclusion that one
of skill in the art would have been motivated to combine Root’s particles
with Shin’s running shoe. The evidence of record does not support the
Examiner’s conclusion that Shin and Root would have suggested the
limitations of claims 6-8, 33, and 35.
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OBVIOUSNESS II
Issue
The Examiner has rejected claim 9 under 35 U.S.C. § 103(a) as being
obvious in view of Shin, Root, and Bible. The Examiner relies on Shin and
Root as discussed above, and finds that Bible “teaches that grit material used
to gain [a] grip on slippery surfaces can be made of aluminum oxide, silicon
carbide or tungsten carbide (i.e. metals) for their durability, less tendency to
crumble and their hardness to scratch or furrow up metallic slippery
surfaces” (Answer 6). The Examiner concludes that “it would have been
obvious, to one of ordinary skill in the art at the time the invention was
made, to make the grit particles of Shin-Root … out of metal, as taught by
Bible '360, to aid in gaining [a] grip on metallic or rough surfaces” (id. at 6-
7).
Appellant contends that the Examiner erred in finding that one of skill
in the art would have been motivated to combine the cited references
because Root discloses that “the particles and the matrix in which they are
suspended both are made from resin” and Bible’s metal grit particles would
not be “an acceptable substitute for Shin’s ridges” (Appeal Br. 17).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that one of skill in the art would have
been motivated to combine Bible’s metal particles with the shoe suggested
by Shin and Root?
Additional Findings of Fact
13. Bible discloses a “shoe attachment … to prevent inner and outer
skidding” (Bible, abstract).
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14. Bible discloses that the shoe attachment includes a “sole 22 is
fabricated from rubber impregnated with granular particles” (id. at col. 2, ll.
29-54).
15. Bible discloses that “a homogeneous mixture of particles 30
serve[s] to provide adequate anti-skidding forces particularly if the particles
are fabricated from aluminum oxide, silicon carbide and/or tungston [sic]
carbide” (id. at col. 2, ll. 54-58).
Analysis
Claim 9 depends from claim 1 and further requires that the small
particles comprise metal. The disclosure of Shin and Root are discussed
above. Bible discloses a shoe attachment to prevent skidding that includes a
rubber sole impregnated with metal particles. In view of these disclosures,
we conclude that it would have been obvious to one of skill in the art to
modify the shoe of Shin to have Bible’s traction/anti-skid metal particles
embedded in the resin of Root. The combination is no more than the
predictable use of prior art elements according to their established functions.
Appellant argues that Root discloses that “the particles and the matrix
in which they are suspended both are made from resin” (Appeal Br. 17) and
that Bible’s metal grit particles would not be “an acceptable substitute for
Shin’s ridges” (Appeal Br. 17).
These arguments are not persuasive. Although Root only specifically
discloses particles made of resin, the ridges of Shin’s shoe and the metal
particles of Bible’s shoe attachment have the same purpose as Root’s
particles – to increase the traction of a shoe. Given their identical purposes,
a person of ordinary skill in the art would have considered it obvious to
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substitute Bible’s metal particles for Root’s resin particles and to use them
on Shin’s shoes in place of Shin’s ridges.
Conclusions of Law
The evidence of record supports the Examiner’s conclusion that one
of skill in the art would have been motivated to combine Bible’s metal
particles with the shoe suggested by Shin and Root.
OBVIOUSNESS III
Issue
The Examiner has rejected claims 21-23 under 35 U.S.C. § 103(a) as
being obvious in view of Shin, Root, and Schaffer. The Examiner relies on
Shin and Root as discussed above. The Examiner finds that Schaffer
discloses that “the material for particles attached to the bottom of shoe soles
to aid in gaining traction can be modified to wear over given time frames,
including weeks” (Answer 7). The Examiner concludes that “it would have
been well within the skill of one of ordinary skill in the art, to modify the
material of the particles attached to the sole of Shin-Root as applied to claim
1 above to last over any time period desired, as taught by Schaffer … to
determine the wear life of the sole of the shoe” (id.).
Appellant contends that the Examiner erred in finding that the cited
references suggest particles attached with a temporary adhesive (Appeal Br.
18).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that the cited references suggest particles
attached with a temporary adhesive?
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Additional Findings of Fact
16. Schaffer discloses a “very long wearing material to replace
regions that erode rapidly in the heels of outdoor shoes” (Schaffer, abstract).
17. Schaffer discloses solving “the problem of rundown heels
on outdoor shoes by embedding relatively large, wear-resistant, round
particles in a very hard urethane binder” (id. at col. 1, ll. 30-40)
18. Schaffer discloses that the material “can replace the high wear
region in the heels of outdoor shoes and endure from 500 to 1000 miles of
pavement pounding,” and that the “prime function of the binder is to hold
the particles in place” (id. at col. 2, ll. 3-16).
19. Schaffer discloses that “[o]nly very hard polyurethanes have
proved satisfactory” as a binder (id. at col. 2, ll. 33-34).
20. The Specification discloses that “preferably, the particles adhere
to the bottom surface of the shoe using a relatively weak or temporary
adhesive that will allow the particles to wear off within a fairly short period
of outdoor use” (Spec. 5: 6-8).
Principles of Law
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness.” In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993).
Analysis
Claim 21 depends from claim 1 and further requires that “the small
particles are bonded using a temporary adhesive that allows the particles to
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wear off during normal outdoor use.” Claims 22 and 23 depend from claim
21.
Appellant argues that Schaffer “describes the use of particles for
creating a material for use on a shoe’s sole that will be more wear-resistant”
and that “using a temporary adhesive would have defeated the goal that Root
is trying to achieve[ ], i.e. resistance to slipping” (Appeal Br. 18).
Appellant’s arguments are persuasive. Schaffer discloses a long
wearing material to replace regions that erode rapidly in the heels of outdoor
shoes. Given that the emphasis in Schaffer is on a long wearing material,
the Examiner has not adequately explained how the combination of the cited
references would have suggested a temporary adhesive that would allow
particles to wear off during normal outdoor use, which is the opposite effect
from that disclosed by Schaffer.
Conclusions of Law
The evidence of record does not support the Examiner’s conclusion
that the cited references suggest particles attached with a temporary
adhesive.
SUMMARY
We affirm the rejection of independent claims 1 and 30 under 35
U.S.C. § 103(a) as being obvious in view of the cited references. Dependent
claims 2-5, 9-20, 24-29, 31, 32, 34, and 36 fall with claims 1 and 30. 37
C.F.R. § 41.37(c)(1)(vii). However, we reverse the rejection claims 6-8, 21-
23, 33, and 35 under 35 U.S.C. § 103(a).
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TIME PERIOD FOR RESPONSE
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-IN-PART

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