Ex Parte Levine

Patent Trial and Appeal Board

Feb 9, 2017

12190579 (P.T.A.B. Feb. 9, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/190,579 08/12/2008 Stephen Michael Levine 320-001 9064
93033 7590 02/09/2017
Fitzgerald & Isaacson, LLP
1001 Brickell Bay Drive, Suite 1714
Miami, FL 33131
EXAMINER
FERREIRA, CATHERINE M
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
02/09/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEPHEN MICHAEL LEVINE
____________________

Appeal 2015-002467
Application 12/190,579
Technology Center 3700
____________________

Before MICHAEL L. HOELTER, JILL D. HILL, and
PAUL J. KORNICZKY, Administrative Patent Judges.

KORNICZKY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant Stephen Michael Levine appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 18, 20, 23–26, and 31–38.1
We have jurisdiction under 35 U.S.C. § 6(b).

We REVERSE.

1 Claims 1–17, 19, 21, 22, 27, 29, and 30 are cancelled. Final Act. 2.
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Application 12/190,579

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THE CLAIMED SUBJECT MATTER
The claims are directed to a shoe with a custom molded foot plate.
Spec. 1:5–6. Claims 18 and 25 are the independent claims. Claim 18,
reproduced below, is illustrative of the claimed subject matter:
18. A custom shoe corresponding to the shape of a foot at a heel
height of the shoe comprising:
a custom molded foot plate formed from a positive mold
of the foot made at the heel height of the shoe, said foot plate
having a uniform thickness and extending substantially an entire
length of the foot, and said foot plate having a heel portion, an
arch portion and a toe portion, wherein when the toe portion of
the foot plate is placed on a substantially flat surface the heel
portion of the foot plate is at the heel height of the shoe;
an outsole attached to said foot plate;
a heel being of a height for establishing the heel height of
the shoe, said heel attached to said outsole at said heel portion;
and
at least one upper attached to said foot plate.

REJECTIONS
The Examiner made the following rejections:
1. Claim 28 stands rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
2. Claims 18, 20, 23–26, 28, and 31–38 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Edwards (US 3,895,405, iss. July
22, 1975).
Appellant seeks our review of these rejections.

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ANALYSIS
The Rejection of Claim 28 as Being Indefinite
In the Final Action dated July 25, 2013, the Examiner determines that
claim 28 is indefinite because claim 28 depends from cancelled claim 27.
Final Act. 2. On August 12, 2013, Appellant amended claim 28 to depend
from pending claim 26, instead of claim 27. In an Advisory Action dated
September 3, 2013, the Examiner states (at page 1) that the amendment was
entered and that “the Final rejection dated 7/25/13 remains” (at page 2). See
also Answer 2 (stating “[e]very ground of rejection set forth in the Office
action dated 7/25/2013 from which the appeal is taken is being maintained”).
Because a formal withdrawal of the § 112 rejection has not been entered, and
neither Appellant nor the Examiner addressed the rejection, it is unclear
whether the § 112 rejection is still pending. To the extent that the § 112
rejection is still pending, the rejection of claim 28 as being indefinite is
reversed because amended claim 28 depends from pending claim 26, not
from cancelled claim 27.

The Rejection of Claims 18, 20, 23–26, 28, 31–38
as Anticipated by Edwards
Independent claim 18 recites that “an outsole [is] attached to said foot
plate” and “at least one upper [is] attached to said foot plate.” Independent
claim 25 similarly recites that “an outsole [is] attached to said foot plate.”
The Examiner finds that Edwards discloses these limitations because the
“term ‘attached’ is defined by Merriam Webster's as ‘connected or joined to’.
As evidenced in the disclosure of Edwards, specifically Figures 4, 5 and 14,
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the insole is connected to both the upper and the outsole.” Ans. 4 (citing
Edwards 2:27–29) (emphasis added).
In response to the Examiner’s findings, Appellant argues that Edwards
“discloses a removable insole that does not have shoe components attached
to it.” Appeal Br. 4. According to Appellant, a “removable insole can be
‘removed from the shoe’ and ‘placed back in the shoe’; one that has shoe
components attached to it cannot.” Appeal Br. 6. In other words, once
Appellant’s insole is “attached” as claimed, it is not removable and
reinstallable as is a removable insole.
Unfortunately, Appellant does not address the Examiner’s proposed
definition of “attached.” As above, an ordinary meaning of “attached” is
“connected or joined to something.” Merriam-Webster Dictionary,
https://www.merriam-webster.com/dictionary/attached (last visited February
2, 2017). Although the Specification does not explicitly define the term, it
does explain that
Shoe uppers, outer sole 40, and any desired heel are constructed
and arranged such that they attach directly to custom molded foot
plate 15 by any acceptable means. Attachment of uppers 16 and
outer sole 40 to custom molded foot 20 plate 15 may include but
would not be limited to, adhesive, sewing or stitching and any
other means as commonly known which would securely attach
uppers and outer sole 40 to custom molded foot plate 15.
Spec. 17:16–23 (emphasis added). The Specification also states that
“[u]nlike orthotics, which are placed in a shoe on top of an existing inner
shoe sole, custom molded foot plate 15 is the inner sole of the shoe.” Id. at
17:14–16. Thus, a person of ordinary skill in the art, upon reading the
Specification, would understand that “attached” means “joined to or
connected to” by adhesives, sewing, stitching or other such commonly
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known manners. In light of this claim construction, the Examiner’s finding
that Edwards’ “insole is connected to both the upper and the outsole” is
incorrect. Ans. 4 (emphasis added). Edwards’ insole merely touches or
contacts the upper and outsole, but is not connected to or joined to the other
shoe components by, for example, adhesive, sewing, or stitching. A
removable insole is not attached to the outsole, as recited in claim 18 and 25,
or the upper, as recited in claim 18.
Because Edwards does not disclose each and every limitation in
independent claims 18 and 25, the rejection of claims 18 and 25, and claims
20, 23, 24, 26, 28, and 31–38 which depend therefrom, cannot be sustained.

DECISION
For the above reasons, the Examiner’s rejection of claim 28 under 35
U.S.C. § 112, second paragraph, is REVERSED
The Examiner’s rejection of claims 18, 20, 23–26, 28, 31–38 under 35
U.S.C. § 102(b) is REVERSED.

REVERSED