13114504 (P.T.A.B. Feb. 27, 2017)

Ex Parte Madelaine et al

Patent Trial and Appeal BoardFeb 27, 2017

13114504 (P.T.A.B. Feb. 27, 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. 13/114,504 05/24/2011 Delphine MADELAINE P40143 1647 7055 7590 03/01/2017 GREENBLUM & BERNSTEIN, P.L.C. 1950 ROLAND CLARKE PLACE RESTON, VA 20191 EXAMINER BRANDON, MEGAN E ART UNIT PAPER NUMBER 3765 NOTIFICATION DATE DELIVERY MODE 03/01/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): gbpatent@gbpatent.com greenblum.bernsteinplc@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DELPHINE MADELAINE and REMI DREVETTON Appeal 2014-009467 Application 13/114,504 Technology Center 3700 Before JENNIFER D. BAHR, LYNNE H. BROWNE, and JASON W. MELVIN, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Delphine Madelaine and Remi Drevetton (Appellants) appeal under 35 U.S.C. § 134 from the rejection of claims 1, 4, 5, 8-10, 13, 14, and 21- 24. An oral hearing was held on February 23, 2017. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2014-009467 Application 13/114,504 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An article of footwear comprising: an outer sole assembly, including a ground-contacting outsole; an upper; a length extending from a rear end to a front end; a width extending from a lateral side to a medial side; a height extending from the outer sole assembly to a top portion; a first footwear element permanently affixed to the outer sole assembly, the first footwear element comprising: an inner sole assembly configured to contact a sole of a wearer's foot; a lateral quarter; and a medial quarter; the inner sole assembly, the lateral quarter, and the medial quarter of the first footwear element form a unitary element; the first footwear element having material continuity between the inner sole assembly and at least one of either the lateral quarter and the medial quarter, the material continuity forming at least one of either a lateral border and a medial border of the inner sole assembly; the lateral quarter extending forward of the lateral border, a permanent attachment expedient connecting the lateral quarter to the inner sole assembly forward of the lateral border; the medial quarter extending forward of the medial border, a permanent attachment expedient connecting the medial quarter to the inner sole assembly forward of the medial border; a permanent attachment expedient connecting the lateral quarter to the medial quarter in the area of a top portion of the upper; the outer sole assembly covering the permanent attachment expedients between the inner sole assembly and, respectively, the lateral and medial quarters; 2 Appeal 2014-009467 Application 13/114,504 the permanent attachment expedients between the inner sole assembly and, respectively, the lateral and medial quarters not being visible externally on the ground-contacting outsole. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Drown US 126,450 May 7, 1872 Arcamonte US 4,176,475 Dec. 4, 1979 REJECTIONS I. Claims 1, 4, 5, 8-10, 13, 14, 22, and 24 stand rejected under 35 U.S.C. § 102(b) as anticipated by Drown. II. Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Drown. III. Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Drown and Arcamonte. DISCUSSION Rejection I The Examiner finds that Drown discloses each and every limitation of independent claim 1. Final Act. 2—4. In particular, the Examiner finds that Drown discloses The outer sole assembly (A, A') covering (Pg.l, para.4, “allowing the edges (of A') to project slightly to admit the woolen covering) the permanent attachment expedients between the inner sole assembly and, respectively, the lateral and medial quarter (created by stitching h' and a' together). The permanent attachment expedients between the inner sole assembly and, respectively, the lateral and medial quarters (created by stitching 3 Appeal 2014-009467 Application 13/114,504 h' and a' together) not being visible externally on the ground contacting outsole (A, A'). The stitching of Drown’s outer sole (A, A') to the upper (E) is a separate step than the stitching of the medial/lateral quarters to the innersole (E') (Pg.l, para.4). Therefore, the permanent attachment expedients/stitches of the medial/lateral quarters to the innersole are not the stitches that are visible on the ground-contacting side of Drown’s outsole. Id. at 3-4. Appellants contend that Drown fails to disclose “the permanent attachment expedients between the inner sole assembly and, respectively, the lateral and medial quarters not being visible externally on the ground contacting outsole” as required by claim 1. See Appeal Br. 11. In support of the contention, Appellants argue that “the assertion that the stitching of Drown’s outer sole to the upper E is a ‘separate step’ from the stitching of the medial/lateral quarters to the innersole is not supported by Drown’s text or drawing.” Id. at 12. Drown states: In the manufacture of my combined in-sole sock and slipper I use, by preference, birch-bark to produce a water-proof sole, A. I cover the under side of said sole with felt or oilcloth, A', allowing the edges to project slightly to admit of the woolen covering being stitched thereto. To produce said covering I take a single piece of any suitable cloth which will protect the foot, and cut it to the outline shown in Fig. 2 of the drawing. The middle part of said cloth receives the sole, the ends of which coincide with the rounded parts a a' of the cloth, which are formed, in cutting the cloth out, at b b'. I cut said cloth so that the parts E E on either side of the sole-part E' shall, in outline, nearly conform to the profile of a gaiter. I then sew together the edges e e of the instep part, the edges g g of the heel, and the edges h hrespectively, to the edges a a'. By this means a cloth shoe is produced. 4 Appeal 2014-009467 Application 13/114,504 Drown 1 (emphasis added). There is no indication in this description that the cloth portion and the outer covering of Drown’s shoe are stitched separately. Further, it is not apparent from Drown’s Figure 3 that the outer covering is stitched to the sole in a separate step. See id. Accordingly, the Examiner’s finding that the permanent attachment expedients/stitches of the medial/lateral quarters to the innersole are not visible on the ground contacting side of Drown’s outsole, which is premised on the speculative finding regarding the separate stitching steps, is not supported by a preponderance of the evidence. For this reason, we do not sustain the Examiner’s decision rejecting claim 1, and claims 4, 5, 8-10, 13, 14, 22, and 24, which depend therefrom. Rejection II Claim 23 depends from claim 1. The rejection of claim 23 as unpatentable over Drown relies upon the same unsupported finding discussed supra. Accordingly, we do not sustain the Examiner’s decision rejecting claim 23 for the same reason. Rejection III Claim 21 depends from claim 1. Arcamonte does not cure the deficiency in Drown discussed supra and thus, relies upon the same unsupported finding as the rejection of claim 1 discussed supra. Accordingly, we do not sustain the Examiner’s decision rejecting claim 21 for the same reason. DECISION The Examiner’s rejections of claims 1, 4, 5, 8-10, 13, 14, and 21-24 are REVERSED. REVERSED 5