Ex Parte Perron

Patent Trials and Appeals Board

Apr 26, 2019

14211873 - (D) (P.T.A.B. Apr. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/211,873 03/14/2014 J. Edward Perron JR.
22920 7590 04/29/2019
GARVEY, SMITH & NEHRBASS, PATENT ATTORNEYS, L.L.C.
LAKEWAY 3, SUITE 3290
3838 NORTH CAUSEWAY BL VD.
METAIRIE, LA 70002
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Cl4041US (98732.1C2) 2379
EXAMINER
BAYS, MARIE D
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
04/29/2019 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 J. EDWARD PERRON JR.
Appeal 2018-006300
Application 14/211,873
Technology Center 3700
Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and
NATHAN A. ENGELS, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
J. Edward Perron JR. ("Appellant") 1 appeals under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 1-19 and 49-54, which
constitute all the claims pending in this application. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
1 The real party in interest is identified as East Texas Boot Company, LLC.
Appeal Br. 3.
Appeal 2018-006300
Application 14/211,873
STATEMENT OF THE CASE
The Specification
The Specification describes "performance enhancing shoe
components or inserts for use in conjunction with various types of foot-
ware." Spec. 1 :6-7.
The Rejected Claims
Claims 1-19 and 49-54 are pending and rejected. Final Act. 1.
Independent claim 1 is illustrative and reproduced below.
1. An athletic shoe, comprising:
a) a shoe body having a shoe upper and an outsole
secured to the upper so that a wearer's foot can be positioned
within the upper and above the outsole, the outsole having a
lower surface with cleats and an upper surface, the shoe having
a front with a toe box and a periphery that extends at the front
around the toe box, a middle, a back, and a heel;
b) the outsole providing a horizontal component that
extends longitudinally from the toe of the shoe to at least the
middle of the shoe body and is at least partially constructed of a
stiffening material from the group consisting of graphite,
carbon, Kevlar, fiberglass, titanium, metal, metal alloy,
composite, and laminate;
c) a vertical component extending vertically upward in
the front of the shoe, the vertical component extending
vertically a distance from a position next to the outsole a
distance and along the periphery of the upper, the vertical
component extending around the toe of the upper and
rearwardly on opposing sides of the upper; and
d) the vertical and horizontal components stiffening the
toe of the shoe so that the combination of the said components
stabilizes the foot within the shoe.
Appeal Br. 12.
2
Appeal 2018-006300
Application 14/211,873
The Re} ections
The following rejections are before us for review:
1. claims 1-19 and 49-54 for obviousness-type non-statutory
double patenting in view of Appellant's issued claims in US 8,191,285 B2,
US 7,487,604 B2, and US 8,695,235 B2 (Final Act. 3);
2. claims 1-4, 6-10, 12-16, 18, and 51-54 under 35 U.S.C.
§ 102(b) (pre-AIA) as anticipated by Hong2 (id. at 4); and
3. claims 5, 11, 17, 19, 49, and 50 under 35 U.S.C. § 103(a) as
unpatentable over Hong (id.).
DISCUSSION
Rejection 1
Appellant does not argue against the obviousness-type non-statutory
double patenting rejection. Instead, Appellant states that "[t]erminal
disclaimers will be submitted when the claims are otherwise allowable if the
rejection is considered proper in light of the claims as they exist then."
Appeal Br. 10. Accordingly, we decline to reach the merits of the double
patenting rejection.
Rejection 2
Claims 1-4, 6-10, 12-16, 18, and 51-54 stand rejected as anticipated
by Hong. Final Act. 4. These claims include all of the independent claims,
namely claims 1, 7, 13, 51-54. Each of the independent claims is directed to
"[ a ]n athletic shoe" and recites the "the outsole having a lower surface with
cleats." See, e.g., Appeal Br. 12 (claim 1).
2 US 4,597,199, issued July 1, 1986 ("Hong").
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Appeal 2018-006300
Application 14/211,873
The Examiner found that Hong discloses a shoe as claimed, including
"an outsole (11) with cleats (shown in figures 3 and 4 as small conical low
profile cleats on the bottom of the sole)." Final Act. 4. In making that
finding, the Examiner applied a construction of the term "cleats" that
encompasses "small protuberances on an outsole." Ans. 4 ( citing unrelated
US 4,538,366, issued Sept. 3, 1985 ("Norton").
Appellant contests the finding regarding cleats, arguing, among other
things, that " [ w ]hat the Office Action refers to as 'small low conical profile
cleats' in Figures 3 and 4 are simply not shown as cleats." Appeal Br. 10.
Figures 3 and 4 of Hong are reproduced below.
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FIG4
FIG.3
Figures 3 and 4 of Hong, reproduced above, show a safety shoe in,
respectively, "a fragmental perspective view" and "a local cross-sectional
4
Appeal 2018-006300
Application 14/211,873
view." Hong 1 :66-68, 2:8. The shoe is described as having a "tennis shoe
style sole," which has multiple components including "steel plate" 12 and
"bottom sole" 11. Id. at 2:8-10.
In addition to arguing that Figures 3 and 4 do not show cleats,
Appellant also points out that the purportedly anticipatory "safety shoe" of
Hong has "a tennis shoe type sole," which they persuasively argue would not
have cleats. Appeal Br. 10.
In the Answer, the Examiner does not respond specifically to
Appellant's "tennis shoe type sole" argument. Instead, the Examiner
equates Hong's safety shoe to an athletic shoe generally, relying on Hong's
partial statement that the safety shoe "is similar to the structure and function
of a sport shoe." Ans. 3 ( quoting Hong at [57]). The Examiner then "noted
that many 'athletic' activities include wearing footwear with steel/reinforced
toes, such as equine events, climbing, hiking competitions, etc." Ans. 3.
We are persuaded by Appellant that the Hong safety shoe does not
have cleats and, thus, Hong does not teach an "outsole having a lower
surface with cleats," as recited in every independent claim.
First, and with respect to the Examiner's reliance on Hong's Figures 3
and 4, those figures are not probative of cleats on the underside of the sole.
For one, neither figure provides a view of the underside of the sole. This is
in contrast to the extrinsic evidence (i.e., Norton), which the Examiner relies
on to support his construction of "cleat," which we do not disturb. Notably,
Figure 2 of Norton shows a "bottom plan view of a sole." Norton 3:61-62,
Fig. 2. In the views afforded by Hong's Figures 3 and 4, the three
dimensional shape of the asserted cleats simply cannot be ascertained.
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Appeal 2018-006300
Application 14/211,873
Instead of being cleats, the structures asserted to be cleats may instead be
grooves.
Second, and with respect to the Examiner's reliance on Hong's
abstract, the Examiner erroneously relies on a partial statement about the
safety shoe (i.e., that it "is similar to the structure and function of a sport
shoe") while ignoring the language immediately following it (i.e.,
"comprising a conventional tennis shoe type sole"). See Ans. 3. Further, the
Examiner appears to equate Hong's generic disclosure of a "sports shoe" to
every species of sports shoe, including hiking or climbing shoes that have
cleats. This is erroneous, as Hong does not disclose hiking or climbing
shoes, let alone cleats. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
1359, 1371 (Fed. Cir. 2008) ("[U]nless a prior art reference discloses within
the four comers of the document not only all of the limitations claimed but
also all of the limitations arranged or combined in the same way as recited in
the claim, it cannot be said to prove prior invention of the thing claimed and,
thus, cannot anticipate under 35 U.S.C. § 102.").
Accordingly, the rejection of claims 1-4, 6-10, 12-16, 18, and 51-54
as anticipated by Hong is reversed.
Rejection 3
Claims 5, 11, 17, 19, 49, and 50 stand rejected as unpatentable over
Hong. Final Act. 4. Each of these claims depends from one of the
independent claims we have decided above are not anticipated by Hong, and
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Appeal 2018-006300
Application 14/211,873
further recites a limitation directed to the material from which a component
must be made. Appeal Br. 12-14.3
The instant rejection does not propose any modification to Hong to
cure the deficiency noted above. Final Act. 4-5. Accordingly, the instant
rejection ( of claims 5, 11, 17, 19, 49, and 50 as unpatentable over Hong)
likewise is reversed.
DECISION
We do not reach the merits of the Examiner's rejection of claims 1-19
and 49-54 for obviousness-type non-statutory double patenting in view of
Appellant's issued claims in US 8,191,285 B2, US 7,487,604 B2, and US
8,695,235 B2.
The Examiner's rejection of claims 1-4, 6-10, 12-16, 18, and 51-54
under 35 U.S.C. § 102(b) (pre-AIA) as anticipated by Hong is reversed.
The Examiner's rejection of claims 5, 11, 17, 19, 49, and 50 under 35
U.S.C. § 103(a) as unpatentable over Hong is reversed.
REVERSED
3 Claims 5, 11, and 17 recite that "one of the components is made primarily
of carbon fiber material." Appeal Br. 12-14. Claims 19, 49, and 50 add that
"the vertical component is made primarily of a material from the group
consisting of 1, 2-polybutadiene, 1, 4-polybutadiene, synthetic isoprene
rubber, natural rubber, polyisoprene, butadiene acrylonitrile rubber,
ethylenepropylene diene modified rubber, styrene butadiene rubber,
thermoplastic elastomers, and plastics such as polystyrene, ethylene vinyl
acetate, polyvinyl chloride, and combinations thereof." Id. at 14.
7