Ex Parte Posa

Board of Patent Appeals and Interferences

Mar 22, 2004

09851911 (B.P.A.I. Mar. 22, 2004)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte JOHN G. POSA

Appeal No. 2004-0146
Application 09/851,911

HEARD: March 4, 2004

Before FRANKFORT, STAAB, and BAHR, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 3, 4 and 11 through 16. Claims 7
through 10, the only other claims pending in the application,
stand withdrawn from further consideration by the examiner as
being directed to a non-elected invention. Claims 2, 5 and 6
have been canceled.
Appeal No. 2004-0146
Application 09/851,911
2
As noted on page 1 of the specification, appellant’s
invention relates generally to footwear and, in particular, to
footwear having a sole portion from which material may be
selectively removed to create personalized imprinted images or
messages while walking on wet sand or other surfaces. A
preferred embodiment is shown in Figures 1, 4A and 4B of the
application drawings, wherein a sole portion of the footwear
(100) has a bottom surface including a closely packed matrix
of projections (120) extending therefrom, and wherein each
projection is selectively removable, thereby enabling a user to
remove a subset of the projections corresponding to a desired
personalized imprint. Independent claims 1, 15 and 16 are
representative of the subject matter on appeal and a copy of
those claims may be found in the Appendix to appellant’s brief.
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Berger 5,084,988 Feb. 4, 1992
Ellis WO 91/11924 Aug. 22, 1991
(PCT)

Appeal No. 2004-0146
Application 09/851,911
3
Claims 1, 3, 4, 13 and 14 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35
U.S.C. § 103(a) as being obvious over Ellis.
Claims 11, 12 and 16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ellis.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ellis in view of Berger.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding those rejections, we make reference to the examiner's
answer (Paper No. 13, mailed April 2, 2003) for the reasoning
in support of the rejections, and to appellant’s brief (Paper
No. 12, filed March 26, 2003) and reply brief (Paper No. 15,
filed June 4, 2003) for the arguments thereagainst.
Appeal No. 2004-0146
Application 09/851,911
4
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determinations which follow.
With regard to the rejection of claims 1, 3, 4, 13 and 14
under 35 U.S.C. §102(b) based on Ellis, we have reviewed the
applied Ellis reference and, like appellant, find no teaching or
disclosure therein of a sole portion having a bottom surface with
a densely packed matrix of projections extending therefrom and
wherein “each projection has a nominal length of 3/16 inch or
greater, and a nominal width of 1/8 inch or greater,” as
specifically set forth in independent claim 1, from which
claims 3, 4, 13 and 14 depend. The examiner’s assertion on
page 3 of the answer that “[i]t would appear the projections
[of Ellis] have the dimensions as claimed,” would seem to be
based entirely on speculation and conjecture, since the examiner
has pointed to no such disclosure in Ellis or provided any
Appeal No. 2004-0146
Application 09/851,911
5
explanation as to why projections of appellant’s claimed
dimensions are necessarily present in the footwear of Ellis.
Thus, the examiner has not made out a prima facie case of
anticipation based on the disclosure of Ellis.
In light of the foregoing, we will not sustain the exami-
ner’s rejection of claims 1, 3, 4, 13 and 14 under 35 U.S.C.
§ 102(b) as being anticipated by Ellis.
Regarding the examiner’s various rejections of claims 1, 3,
4, 11 through 14 and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Ellis, the examiner has urged with respect to
appellant’s independent claim 1 that even if Ellis does not teach
or disclose projections having the dimensions claimed, the
selection of a suitable size for the projections formed by the
intersecting slits (151) seen, for example, in Figure 11A of
Ellis, “would appear to constitute no more than optimization of
size by routine experimentation inasmuch as a number of thickness
[sic] would appear to be suitable depending on the individual
Appeal No. 2004-0146
Application 09/851,911
6
wearer and the type of footwear being constructed” (answer,
pages 3-4). In this regard, the examiner further contends that
the size of the projections (the thickness
of the sole) is recognized in the art to
be a variable that is result effective.
Generally, it is considered to have been
obvious to develop workable or even optimum
ranges for such variables. For example,
see In re Aller, 220 F.2d 454, 105 USPQ 233
(CCPA 1955) and In re Boesch, 617 F.2d 272,
205 USPQ 215 (CCPA 1980). Since the
applicant has not demonstrated or even
alleged that the specifically claimed size
produces unexpected results, it is our
conclusion that it would have been obvious
for an artisan with ordinary skill to
determine a workable or even optimum size for
the projections and thereby arrive at the
size (i.e. length and width) as claimed by
the applicant (answer, page 4).
Concerning the requirements in dependent claims 4, 11 and 12
on appeal that there be a non-partitioned border surrounding the
matrix of projections (claim 4), and that each of the projections
of appellant’s footwear be either triangular in cross-section
(claim 11) or rectangular in cross-section (claim 12), the
examiner first points to a non-partitioned border surrounding
the matrix of projections in Figures 10A-10C of Ellis and urges
that to have used such a border with the embodiments seen in
Figures 11A, 11B of Ellis would have been obvious. The examiner
Appeal No. 2004-0146
Application 09/851,911
7
next points out that Ellis teaches that the projections therein
can be of different shapes, and urges that it would have been an
obvious matter of design choice to make the projections in Ellis
of whatever form or shape desired or expedient, noting that a
change in form or shape is generally recognized as being within
the level of ordinary skill in the art, absent any showing of
unexpected results.
For the reasons aptly set forth on page 3 of the brief, we
agree with appellant that the examiner has failed to set forth a
prima facie case of obviousness with regard to the footwear of
independent claim 1 on appeal. More particularly, given that the
purpose in Ellis of providing enhanced flexibility to a shoe sole
so that it can more readily deform in parallel with the natural
deformation of a human foot is so distinctly different from
appellant’s reasons for forming and sizing the projections of
the presently claimed footwear to provide for ease of remov-
ability of the projections, we find no reason to conclude that
optimization of the size of the projections in Ellis by routine
experimentation to arrive at the desired goal of Ellis would
Appeal No. 2004-0146
Application 09/851,911
8
necessarily result in projections on the sole of the footwear of
Ellis being sized in the manner set forth in appellant’s claim 1.
Nor do we find any evidentiary basis to conclude, as the examiner
has, that “the size of the projections (the thickness of the
sole) is recognized in the art to be a variable that is result
effective” (answer, page 4). Accordingly, we will not sustain
the examiner’s rejection of independent claim 1 under 35 U.S.C.
§ 103(a) based on Ellis.
It follows from our determination with regard to independent
claim 1 above that we will likewise not sustain the examiner’s
rejections of claims 3, 4 and 11 through 14, which depend from
claim 1, under 35 U.S.C. § 103(a) based on Ellis alone.
As for independent claim 16 and the requirement therein that
the footwear be a sandal or thong including a sole portion having
a densely packed matrix of projections, wherein each projection
is removable so as to enable a user to remove a subset of the
projections corresponding to a personalized imprint, the examiner
has pointed to the disclosure in Ellis indicating that the
Appeal No. 2004-0146
Application 09/851,911
9
invention therein relates “generally to the structure of shoes”
(page 1, lines 4-5) and urged that the term “shoes” in the art
includes sandals or thongs, and concluded that it therefore would
have been obvious to provide the shoe sole as taught in Ellis as
part of a sandal or thong to provide traction to such footwear.
Appellant has challenged this position, contending that because
Ellis also notes that it particularly relates to “athletic
shoes,” it is absolutely clear to anyone of skill in the art that
Ellis teaches away from the consideration of a sandal or thong,
thereby defeating prima facie obviousness.
Like the examiner, it is our view that Ellis more broadly
addresses the construction of shoe soles in general and is not
only limited to the construction of athletic shoes, although
athletic shoes are clearly one particular type of shoe focused on
by the reference. In particular, we note that in paragraphs on
pages 2-3, Ellis broadly discusses the shortcomings of a “con-
ventional shoe sole” and mentions that the concepts of his
invention are applicable to both street shoes and athletic shoes.
In addition, Ellis specifically notes that it is a general object
Appeal No. 2004-0146
Application 09/851,911
10
of the “new invention” to elaborate upon the application of the
principle of the theoretically ideal stability plane to “other
shoe structures” (page 3, last full paragraph). In addition, in
the paragraph bridging pages 10-11, Ellis broadly notes that the
deformation sipes of his invention “can provide a significant
benefit on any portion of the shoe sole that is thick and firm
enough to resist natural deformation due to rigidity.” Page 12
of Ellis sets forth that the shape of the channels (in Fig. 5C)
should be such that the resultant shape of the shoe sole sections
would be “like the Maseur sandals.” The embodiments seen in
Figures 6 and 7 of Ellis are said to depict the new invention
applied to a “conventional flat plane shoe sole” (page 13) or a
“conventional flat, roughly rectangular shoe sole” (page 15).
Page 16 of the disclosure in Ellis notes that the deformation
sipes therein can be applied, not only to conventional flat shoe
soles, but “to any intermediate or partial contour between flat
shoe soles . . . and naturally contoured shoe soles conforming
fully or in part to the foot sole.”
Thus, based on a full consideration of the disclosure in
Ellis, it is clear to us that one of ordinary skill in the art
Appeal No. 2004-0146
Application 09/851,911
11
would have recognized that the teachings of Ellis have broad
applicability to a variety of different shoe soles and in
particular to what is referred to as sole sections “like the
Maseur sandals” (page 12), a “conventional flat plane shoe sole”
(page 13), or a “conventional flat, roughly rectangular shoe
sole” (page 15). In this light, it is our view that one type of
well-known flat plane shoe sole which would have immediately
occurred to one of ordinary skill in the art is that of a sandal
or thong. Accordingly, we concur in the examiner’s ultimate
determination that it would have been obvious, within the meaning
of 35 U.S.C. § 103, to utilize deformation sipes and Ellis’
concept of a theoretically ideal stability plane in flat plane
shoe soles or flat, roughly rectangular shoe soles like those
conventionally seen on sandals or thongs. Thus, we will sustain
the examiner’s rejection of independent claim 16 under 35 U.S.C.
§ 103(a) as being obvious over Ellis.
The last of the examiner’s rejections for our review is that
of independent claim 15 under 35 U.S.C. § 103(a) based on the
combined teachings of Ellis and Berger. Claim 15 defines
Appeal No. 2004-0146
Application 09/851,911
12
footwear for leaving a personalized imprint on wet sand, wherein
a sole portion which is “at least partially transparent” includes
a bottom surface with a tight matrix of projections extending
therefrom, wherein each projection is removable, enabling a user
to look through the sole portion and remove a subset of the
projections corresponding to a desired personalized imprint.
In this rejection, the examiner concedes that the footwear
of Ellis, with its densely packed matrix of removable projections
(e.g., Fig. 11A), has no transparent sole portions. However,
the examiner points to Berger, noting transparent portions (3, 4)
of the footwear sole seen therein and the benefit described in
the patent of a simple and inconspicuous construction for
allowing viewing through the shoe sole, so that one can regularly
and accurately monitor or measure the remaining distance of the
toe tips from the portion of the shoe upper adjacent to the
outsole tip to see whether the shoe has become too small. From
the collective teachings of the applied references, the examiner
has concluded that it would have been obvious to one of ordinary
skill in the art to provide the shoe sole as taught by Ellis with
Appeal No. 2004-0146
Application 09/851,911
13
transparent portions, as taught in Berger, to permit viewing of
the toes of the wearer within the shoe so as to determine whether
the shoe has become too small. Appellant contends that there is
no teaching or suggestion to make the modification of Ellis
proposed by the examiner and that the examiner’s justification
for doing so is clearly not the justification appellant recites
in claim 15.
We share the examiner’s view that there is ample suggestion
in the combined teachings of Ellis and Berger for making at least
some portions of the shoe sole in Ellis transparent, as taught in
Berger, so that it can readily be determined by looking through
the transparent portions if the shoes are becoming too small for
the wearer. As for appellant’s assertion that the examiner’s
justification for the combination is not that of appellant, we
observe that it matters not that the reason for combining the
teachings as noted above is not exactly the same as appellant’s
reason for providing that feature or modification. The law is
clear that the purpose proposed as the reason why an artisan
would have found the claimed subject matter to have been obvious
Appeal No. 2004-0146
Application 09/851,911
14
under 35 U.S.C. § 103 need not be identical to the purpose or
problem which the patent applicant indicates to be the basis for
having made the invention. See In re Beattie, 974 F.2d 1309,
1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992) and In re Dillon,
919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)(en
banc), cert. denied, 500 U.S. 904 (1991). Moreover, it is not
required that the prior art teachings relied upon disclose the
same advantage that appellant alleges, all that is required is
that there is a reasonable suggestion to do what the claimed
subject matter encompasses. See In re Kronig, 539 F.2d 1300,
190 USPQ 425 (CCPA 1976) and Ex parte Obiaya, 227 USPQ 58 (Bd.
Pat. App. & Int. 1985).
Accordingly, for the above reasons, we will sustain the
examiner’s rejection of claim 15 under 35 U.S.C. § 103(a) as
being obvious over Ellis in view of Berger.
In summary, we have refused to sustain the examiner’s
rejection of claims 1, 3, 4, 13 and 14 under either 35 U.S.C.
§ 102(b) or 35 U.S.C. § 103(a) based on Ellis alone. In
Appeal No. 2004-0146
Application 09/851,911
15
addition, we have refused to sustain the examiner’s rejection
of claims 11 and 12 under 35 U.S.C. § 103(a) based on Ellis.
However, we have sustained the examiner’s rejection of claim 15
under 35 U.S.C. § 103(a) based on Ellis in view of Berger, and
that of claim 16 under 35 U.S.C. § 103(a) based on Ellis alone.
Thus, the decision of the examiner is affirmed-in-part.
In addition, we REMAND this application to the examiner to
consider whether or not the subject matter currently set forth in
claims 1, 3, 4 and 11 through 14 on appeal has adequate support
under 35 U.S.C. § 112, first paragraph, in appellant’s originally
filed disclosure. More particularly, it is the open-end ranges
regarding “a nominal length of 3/16 inch or greater” and “a
nominal width of 1/8 inch or greater” (emphasis added) set
forth in independent claim 1, as amended in Paper No. 9, filed
August 26, 2002, that are of primary concern. No such open-ended
ranges appear to be set forth in appellant’s originally filed
specification and claims. We also REMAND for the examiner to
again consider the teachings of U.S. Patent No. 3,932,950 to
Taber under either 35 U.S.C. § 102(b) or § 103(a). While it may
Appeal No. 2004-0146
Application 09/851,911
16
not appear from a perusal of the drawings of this patent that the
matrix of projections on the shoe sole therein has a density of
packing wherein the projections (46) are “immediately adjacent to
one another if not touching,” as in appellant’s claim 1 on
appeal, we note that the sizing and center-to-center spacing of
the projections disclosed in the Taber patent and as set forth in
claim 1 thereof, in particular, would appear to fall within
appellant’s broadly claimed size ranges and result in a densely
packed matrix of projections like that claimed by appellant.
Moreover, since the projections in Taber are of an equivalent
size to those claimed by appellant and formed of rubber or
neoprene, it would appear that they are inherently removable,
thereby enabling a user to remove a subset of the projections
corresponding to a desired personalized imprint, although no such
express disclosure appears in the Taber patent. The examiner may
also wish to revisit the Ellis references of record and consider
the sizing of the projections therein when the size limitation of
appellant’s claim 1 is viewed through the prism of In re
Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Appeal No. 2004-0146
Application 09/851,911
17
In addition to affirming the examiner’s rejection of
one or more claims, this decision contains a remand. 37 CFR
§ 1.196(e) provides that
[w]henever a decision of the Board of Patent
Appeals and Interferences includes or allows
a remand, that decision shall not be con-
sidered a final decision. When appropriate,
upon conclusion of proceedings on remand
before the examiner, the Board of Patent
Appeals and Interferences may enter an order
otherwise making its decision final.
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of
the original decision . . . .
The effective date of the affirmance is deferred until
conclusion of the proceedings before the examiner unless, as a
mere incident to the limited proceedings, the affirmed rejection
is overcome. If the proceedings before the examiner does not
result in allowance of the application, abandonment or a second
appeal, this case should be returned to the Board of Patent
Appeal No. 2004-0146
Application 09/851,911
18
Appeals and Interferences for final action on the affirmed
rejections, including any timely request for rehearing thereof.
This application, by virtue of its “special” status,
requires immediate action, see MPEP § 708.01 (Eighth Edition,
Rev. 1, Feb. 2003), item (D).
No time period for taking any subsequent action in con-
nection with this appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED-IN-PART and REMANDED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
)
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
CEF:psb
Appeal No. 2004-0146
Application 09/851,911
19
John G. Posa
Gifford, Krass, Groh et al.
Suite 400
280 N. Old Woodward Ave.
Birmingham, MI 48009