Ex Parte Seamans

Board of Patent Appeals and Interferences

Oct 21, 2008

10602416 (B.P.A.I. Oct. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_________________

Ex parte SCOTT SEAMANS
APPELLANT
_________________

Appeal 2008-3316
Application 10/602,416
Application Publication 2004/0231190
Technology Center 3700

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Decided: October 21, 2008
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Before RICHARD TORCZON, SALLY GARDNER LANE, and JAMES T.
MOORE, Administrative Patent Judges.

LANE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
The appeal is from a Final Rejection of claims 1, 9, 12-16, 18-27, and
40-42, which are all of the pending claims. 35 U.S.C. § 134. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
The application was filed January June 23, 2003. The real party in
interest is Crocs, Inc. (App. Br. 2).
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The Examiner relied on the following references.
Name Number Date
Albiniano 2,897,566 Aug. 4, 1959
Seidel 4,476,600 Oct. 16, 1984
Lamstein Des. 416,667 Nov. 23, 1999
Aguerre 6,237,249 May 29, 2001

The Examiner also relied upon “admitted prior art at page 11 of the instant
specification.” We understand the “admitted prior art” to be EP 0 802 039
(“EP ‘039”), published Oct. 22, 1997. Appellant did not argue against the
prior art status of these references.
Appellant appeals the rejection of claims 1, 9, 12-16, 18-23, 26-27,
and 40-42 under 35 U.S.C. § 103(a) over Aguerre, Seidel, Albiniano, and
EP ‘039. Appellant argued separately for the patentability of claim 42. (See
App. Br. 5). We therefore review claims 1 and 42. See Bd. R.
41.37(c)(1)(vii).
Appellant also appeals the rejection of claims 24 and 25 under
35 U.S.C. § 103(a) over Aguerre, Seidel, Albiniano, and EP ‘039, and
Lamstein. We also therefore review claims 24 and 25.

II. LEGAL PRINCIPLES
The Supreme Court has recently noted that “[w]hen a work is
available in one field of endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.” KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 1740
(2007). Furthermore, citing United States v. Adams, 383 U.S. 39 (1966), the
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Court reemphasized that “when a patent claims a structure already known in
the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result.” Id. In making a rejection for obviousness, the Court
noted that “[a]s our precedents make clear . . . the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 1741.
III. FINDINGS OF FACT AND ANALYSIS
The record supports the following findings of fact as well as any other
findings of fact set forth in this opinion, by at least a preponderance of the
evidence.

Claims 1, 9, 12-16, 18-23, 26, 27, and 40-42
Facts
1. Appellant’s claim 1 recites:
A sectional footwear piece comprising:
a base section, wherein the base section includes an
upper and a sole having an outer portion of a rear sole
perimeter, formed as a first part molded from a first continuous
piece of lofted foam material; and
a strap section having an inner portion, wherein the strap
section is formed as a second part molded from a second
continuous piece of said lofted foam material, and wherein the
strap section is attached to the base section such that the strap
contacts the base section and pivots relative to the base section;
and wherein a frictional force between the strap section and the
base section at the contact between the inner portion of the strap
section and the outer portion of the rear sole perimeter
maintains the strap section fixed relative to the base section.
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(App. Br., Claims Appx., 11).
2. Appellant’s claim 42 recites:
A sectional footwear piece, the sectional footwear piece
comprising:
a base section, wherein the base section includes an
upper and a sole having an outer portion of a rear sole
perimeter, formed as a first part molded from a first continuous
piece of lofted foam material;
a strap section having an inner portion, wherein the strap
section is formed as a second part molded from a second
continuous piece of said lofted foam material, and wherein the
strap section is attached to the base section such that the strap
contacts and pivots relative to the base section;
wherein the strap section is attached to the base section
by a first and a second rivet made of plastic that is denser than
the lofted foam material, wherein the first rivet fastens a first
end of a strap as section to a first side of the base section, and
wherein the second rivet fastens to a second end of the strap
section to a second side of the base section;
wherein a frictional force between the strap section and
the base section at the contact between the inner portion of the
strap section and the outer portion of the rear sole perimeter
maintains the strap section fixed relative to the base section;
and
wherein the first rivet is placed at a first attachment point,
wherein the second rivet is placed at a second attachment point,
wherein the base section includes a upper opening perimeter,
wherein the base section includes a rear sole perimeter, wherein
the distance from the first attachment point to the second
attachment point along the upper opening perimeter is
approximately the same distance from the first attachment point
to the second attachment point along the strap section; and
wherein the distance from the first attachment point to the
second attachment point along the rear sole perimeter is
approximately the same distance from the first attachment point
to the second attachment point along the strap section.
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(App. Br., Claims Appx., 14-15).
3. Figure 1 of Appellant’s specification is reproduced below.

Figure 1 depicts “a footwear piece 100 in accordance with some
embodiments of the present invention,” including a base section 110, with an
upper 150, a sole 162, and a rear sole perimeter 160, a strap section 120, and
rivets 131. (Spec. ¶¶ [0026], [0031], and [0032]).
4. Figure 11 of Appellant’s specification is reproduced below.

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Figure 11 depicts “yet another footwear piece . . . in accordance with some
embodiments of the present invention.” (Spec. ¶ [0041]).
5. Aguerre relates to a “convertible slide type sandal typically
worn as footwear in the out-of-doors during the warm months of the year
[and] used indoors as well as at the beach or the swimming pool.” (Aguerre
col. 2, ll. 21-24).
6. Figure 1 of Aguerre is reproduced below.

Figure 1 depicts a slide with an upper vamp 104, a midsole 110, “a rearward
section that curls upward in the heel area and is known as a heel bumper
116” (Aguerre col. 4, ll. 55-57), and a rear heel strap 102. (See Aguerre col.
4, ll. 27-60).
7. The convertible slide of Aguerre has a base section and a strap
section, as recited in Appellant’s claims 1 and 42.
8. The base section taught by Aguerre has an upper and a sole as
recited in Appellant’s claims 1 and 42.
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9. The midsole 110 of the slide in Aguerre “typically is comprised
of ethylene vinyl acetate (i.e. ‘EVA’).” (Aguerre col. 5, ll. 63-64).
10. Aguerre does not specifically teach that the upper vamp and
outsole are “molded from a continuous piece of lofted foam material,” as
claimed.
11. Aguerre teaches that “[i]n the lowered position, the rear heel
strap 102 fits snugly behind the heel to secure the convertible side 100 to the
human foot.” (Aguerre col. 4, ll. 34-36).
12. Aguerre teaches that the sandal also includes “outwardly
extending studs 106 which serve as pivot points to facilitate use of the
convertible slide 100 with or without the rear heel strap 102, all without
disassembling the sandal.” (Aguerre col. 4, ll. 31-34).
13. Aguerre teaches that the “[t]he components of the convertible
slide are comprised of rubber and manmade synthetic cushioning materials.”
(Aguerre col. 2, ll. 32-33).
14. Figure 2 of Aguerre is reproduced below.

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Figure 2 depicts the convertible slide of Figure 1 “showing the rear heel
strap in the rotated raised position and resting forward of the contoured lip
on the rear side of the vamp.” (Aguerre col. 3, ll. 41-43).
15. Comparison of Figure 1 and Figure 2 of Aguerre reveals that
the distance from the first attachment point [138] to the second
attachment point [not pictured in Figure 1 or 2 of Aguerre]
along the upper opening perimeter [of the vamp 104] is
approximately the same distance from the first attachment point
to the second attachment point along the strap section [102];
and wherein the distance from the first attachment point to the
second attachment point along the rear sole perimeter [116] is
approximately the same distance from the first attachment point
to the second attachment point along the strap section [102],

as recited in Appellant’s claim 42.
16. The convertible slide of Aguerre demonstrates the dimensions
recited in Appellant’s claim 42, wherein
the distance from the first attachment point to the second
attachment point along the upper opening perimeter is
approximately the same distance from the first attachment point
to the second attachment point along the strap section; and
wherein the distance from the first attachment point to the
second attachment point along the rear sole perimeter is
approximately the same distance from the first attachment point
to the second attachment point along the strap section.

(See FF 2).

17. Aguerre teaches that “[t]he rear heel strap of the inventive
convertible slide is elastic or other flexible material to facilitate attaching the
sandal to the foot.” (Aguerre col. 2, ll. 37-39).
18. Aguerre does not specifically teach that the rear heal strap is
“molded from a continuous piece of lofted foam material,” as claimed.
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19. Aguerre does not specifically teach that the rear heal strap is
“molded from a continuous piece of lofted foam material,” as claimed.
20. In “alternative” embodiments (see Aguerre col. 8, ll. 36-37, and
col. 9, ll. 35-36), Aguerre provides washer separators or a threaded screw to
prevent friction between the rear heel strap 102 and the vamp 104. (Id. at
col. 9, ll. 20-29, and col. 10, ll. 42-48).
21. Seidel relates to shoes made entirely from plastic, which “are
more particularly used for special purposes, for example as beach, bathing
and sports shoes and the like, but also are available as standard working or
walking shoes.” (Seidel col. 1, ll. 16-20).
22. Seidel teaches
a one-piece, washable and sterilizable plastic shoe made from
an elastic and robust and preferably expanded plastic material,
comprising a lower part with a top on which bears the foot and
a bottom enveloping an outsole and a heel which is optionally
offset therefrom, as well as an upper part extending onto the
lower part, forming a cavity for receiving the toes, ball and
metatarsus and having ventilating openings, characterized in
that ventilating openings are provided in the substantially
vertical lateral area of the upper part of the shoe spaced from
one another over the outsole edge and the outer boundary edges
thereof are lower than the corresponding inner boundary edges.

(Seidel col. 2, ll. 35-48).
23. Appellant’s specification notes that “[m]anufacturing footwear
pieces using . . . a lofted foam material can include providing a resin that
includes a pre-mixture of resin, pigment, and a growth additive” (Spec. ¶
[0042]), and that “[i]n one particular embodiment, the resin is Ethylene
Vinyl Acetate copolymer (EVA) based material.” (Id. ¶ [0046]).
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24. Appellant’s specification notes: “Additional disclosure of such
cross-linking and expansion [for ethylene vinyl acetate copolymer (“EVA”)]
is provided in European Patent 0 802 039 A2, filed on March 25, 1997 . . . .”
(Spec. ¶ [0046]).
25. European Patent Application EP 0 802 039 A2 (“EP ‘039”) was
published Oct. 22, 1997, and is entitled: “Injection moulding method for
EVA-soles, having a treading surface with coloured sections.” (Spec. ¶¶
[0046]-[0047]).
26. EP ‘039 teaches that “expansible and cross-linking ‘EVA’,
thanks above all to its low cost, is widely used in the footwear sector for
production of inexpensive injection moulded soles.” (EP ‘039 col. 1, ll. 23-
26).
27. Albiniano relates to an attachment of a strap to a shoe, “which
is economical to manufacture and assemble on the shoe.” (Albiniano col. 1,
ll. 24-26).
28. Figure 1 of Albiniano is reproduced below.

Figure 1 depicts a “shoe 10 having a strap 11 attached to one side of the shoe
by a rivet 12 which permits the strap 11 to be swiveled into the dotted line
position shown . . . .” (Albiniano col. 1, ll. 56-58).
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29. The strap depicted in Figure 1 of Albiniano is shown in two
positions, which are held by frictional force in relation to the sole.
Analysis
The Examiner rejected claims 1, 9, 12-16, 18-23, 26, 27, and 40-42
under 35 U.S.C. § 103(a), over Aguerre, Seidel, and Albiniano, as well as
prior art the Examiner asserted was admitted in Appellant’s specification.
Aguerre discloses a convertible slide that has a base section and a strap
section. (FF 3). Seidel teaches a shoe made entirely from one piece of
“expanded plastic material.” (FF 22). Albiniano teaches a swivel strap for
a shoe (FF 28), “which is economical to manufacture and assemble on the
shoe” (FF 27). The skilled artisan would have had reason to substitute this
strap for the rear heel strap of Aguerre, which is similarly anchored by a stud
or rivet (FF 12).
Appellant’s specification notes that cross-linking and expansion
agents for the copolymer EVA are provided in EP ‘039 (FF 26), which was
available prior art to Appellant’s filing date (see FF 25). EP ‘039 teaches
that “expansible and cross-linking ‘EVA’, thanks above all to its low cost, is
widely used in the footwear sector for production of inexpensive injection
moulded soles.” (FF 26). EP ‘039 teaches that EVA can be used for the
treading on shoe soles. (FF 25). As noted in Appellant’s specification, EVA
produces “lofted foam material.” (FF 23). Aguerre teaches that the
convertible slide it discloses can be made of “rubber and manmade synthetic
cushioning materials” (FF 13), with a midsole made of EVA (FF 9). Thus,
those of skill in the art would have had a reasonable expectation of success
in using this lofted foam material for the midsole and outer soles of a
footwear piece. The low cost would have been reason to do so.
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The Appellant first argues on appeal that the Examiner erred in
finding the claimed subject matter prima facie obvious because none of the
cited art teaches “that the strap section is formed as a second continuous
piece of lofted foam material.” (App. Br. 6). The Appellant argues further
that “Aguerre teaches away from making a base section ‘formed as a first
part molded from a first continuous piece of lofted foam material’ by
disclosing a sandal that is constructed of discrete pieces of multiple
materials.” (Reply Br. 3). According to Appellant, “the examiner has
provided no evidence (in support of a motivation to combine) that making a
heel strap of such a material would be ‘easier and cheaper.’” (App. Br. 7).
We find the Appellant’s arguments unpersuasive because it is the
combination of Aguerre and Seidel, along with EP ‘039 and Albiniano that
renders the claimed footwear piece obvious, not each reference separately.
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.”). Aguerre teaches a convertible slide with a rear heel strap
(FF 6), which can be used at the beach or swimming pool (FF 5), while
Seidel teaches a one-piece plastic shoe that is washable (FF 22) and is also
useful for beach and bath (FF 21). To achieve both advantages of
attachment to the foot (FF 17) and a washable shoe (FF 22), those of skill in
the art would have had reason to combine Aguerre and Seidel, making a
one-piece convertible slide, with a strap. Because EP ‘039 teaches a low
cost material for making shoes, which is a lofted foam (FFs 23 and 26),
those in the art would have recognized that a one-piece shoe could be made
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cheaply with this material. Thus, the combination of the references renders
the claimed footwear obvious.
Though the Appellant argues that Aguerre “teaches away” from using
a continuous piece of lofted foam material, he has not directed us to a
specific disclosure in Aguerre, or any other reference, that would have
discouraged those in the art from making a slide out of a single piece of
material. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference
may be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.”). We are not convinced that those of skill in the art
would not have combined Seidel, which teaches advantages of using a single
piece of material (FF 22), with the convertible slide taught in Aguerre.
Furthermore, we are not convinced that those of skill in the art would not
have used the lofted foam material taught in EP ‘039 (see FF 23) to make
this footwear piece, considering its low cost (FF 26).
The Appellant also argues that “Aguerre fails to teach a molded,
lofted foam heel strap configured such that a frictional force at the contact
between the inner portion of the strap section and the outer portion of the
rear sole perimeter maintains the strap section fixed relative to the base
section.” (App. Br. 8). Appellant recognizes that the Examiner cited
Albiniano for this feature of the claims, but argues that this was error
because “Aguerre specifically teaches the benefits of being freely rotated
and uses washers to accomplish this. Hence, one of skill in the art would
have no motivation to substitute it [sic] washers for the connectors described
in Albiniano. (App. Br. 8). Furthermore, Appellant argues that “[b]ecause
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the heel strap of Aguerre is designed to freely rotate about its connection
point, and to specifically minimize friction to ensure free rotation through
use of, e.g., washer separators, it may not be properly combined with
Albiniano.” (App. Br. 8).
This argument is also not persuasive of error. Aguerre provides
alternative embodiments which reduce friction between the rear heel strap
and vamp; however, these solutions are only alternative embodiments. (FF
20). Appellant has not explained how the presence of these alternative
embodiments would have discouraged those in the art from using the swivel
type attachment of Albiniano, “which is economical to manufacture and
assemble on the shoe.” (FF 27). See Gurley, supra.
In regard to claim 42, Appellant argues that the Examiner erred in
finding the subject matter of the claims to have been obvious in that:

Aguerre fails to specifically disclose that the distance from the
first attachment point to the second attachment point along the
upper opening perimeter is approximately the same distance
from the first attachment point to the second attachment point
along the strap section, or that the distance from the first
attachment point to the second attachment point along the rear
sole perimeter is approximately the same distance from the first
attachment point to the second attachment point along the strap
section.

(App. Br. 8-9).
We disagree. Comparison of Figures 1 and 2 of Aguerre demonstrate
this claim element. (FFs 6, 14, and 15).
In addition, Appellant argues that
Aguerre fails to specifically disclose that the strap section can
pivot relative to the base section such that an inner portion of
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the strap section contacts an outer portion of the rear sole
perimeter.

(App. Br. 9).
Again, we disagree. One of ordinary skill in the art would recognize
that if the rear heel strap 102 of Aguerre Figure 1 is rotated fully, the strap
fits snugly around the wearer’s heel (FF 6) and so reaches the outer portion
of the sole perimeter, where the wearer’s heel sits.
The Examiner presented a prima facie case for the obviousness of the
footwear of Appellant’s claims 1 and 42. Appellant has not persuaded us
that this prima facie case is incorrect and has not directed us to evidence of
secondary considerations that rebut this prima facie case. Accordingly, the
Examiner did not err in rejecting claims 1 and 42 under 35 U.S.C. § 103
over Aguerre, Seidel, Albiniano, and the prior art referred to in Appellant’s
specification.
Claims 24 and 25
Facts
30. Appellant’s claim 24 recites:
The sectional footwear piece of claim 1, wherein the sole
comprises a support base, and wherein the support base
includes a raised pattern extending throughout the surface
where a foot contacts the support base.

(App. Br., Claims Appx., 13).
31. Appellant’s claim 25 recites:
The sectional footwear piece of claim 1, wherein the sole
comprises a bottom surface and a support base, and wherein the
support base includes a raised pattern extending throughout the
surface where a foot contacts the support base and further
comprising a tread on the sole.
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(App. Br., Claims Appx. , 13).
32. Lamstein teaches a design for a molded plastic shoe. (Lamstein
at title).
33. Figures 1 and 2 of Lamstein are reproduced below.

Figure 1 depicts an outside view of a shoe with a raised pattern on the
outside bottom surface and Figure 2 depicts an inside view of a shoe with a
raised pattern on the interior surface.
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Analysis
The Examiner rejected claims 24 and 25 under 35 U.S.C. § 103(a)
over Aguerre, Seidel, Albiniano, EP ‘039, and Lamstein.
Lamstein discloses a design for a molded plastic shoe (FF 29) with a
raised pattern on both the surface of the support base and on the bottom
surface, as a tread. (FF 30).
The Appellant argues that the Examiner erred in concluding that the
subject matter of claims 24 and 25 would have been obvious to one of
ordinary skill in the art because:
Lamstein fails to teach or suggest this limitation and instead
teaches away from it. Lamstein teaches a method in which a
raised pattern does not extend throughout the surface of a
support base. See Fig. 2. In fact, the support base does not have
a raised pattern in the sections where a human foot would come
into the greatest amount of contact with it. See id.

(App. Br. 10). In support, Appellant notes that Lamstein provides “a smooth
surface where the heel contacts the shoe base.” (Reply Br. 5).
However, we find that the pictures provided in Lamstein depict a
raised pattern that extends over almost the entire viewable surface inside the
support base. (FF 33). Consequently, we conclude that the Examiner did
not err when concluding that those in the art would have found it obvious to
substitute the partial raised surface depicted by Lamstein with a complete
raised surface, as claimed, to provide more traction for the foot. See KSR,
127 S.Ct. at 1740 (“when a patent claims a structure already known in the
prior art that is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result.”). Appellant has not explained why the specific design depicted in
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Lamstein would have discouraged those in the art from extending the raised
pattern to cover all surfaces contacted by the foot.
Consequently, Appellant has not convinced us the Examiner erred in
rejecting claims 24 and 25 under 35 U.S.C. § 103 over Aguerre, Seidel,
Albiniano, Lamstein, and the prior art referred to in Appellant’s
specification.
IV. ORDER
Upon consideration of the record and for the reasons given, the
Examiner’s rejection of claims 1, 9, 12-16, 18-23, 26, 27, and 40-42 under
35 U.S.C. § 103(a), over Aguerre, Seidel, Albiniano, and EP ‘039, is
AFFIRMED; and
the Examiner’s rejection of claims 24 and 25 under 35 U.S.C.
§ 103(a) over Aguerre, Seidel, Albiniano, EP ‘039, and Lamstein is
AFFIRMED.
FURTHER ORDERED that 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

ak
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