Ex parte Wahrheit

Board of Patent Appeals and Interferences

Nov 30, 1999

08272147 (B.P.A.I. Nov. 30, 1999)

Application for patent filed July 8, 1994. According to1
appellant, the application is a continuation in part of
Application No. 08/067,239, filed May 26, 1993.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GERHARD M. WAHRHEIT
____________
Appeal No. 1997-1316
Application No. 08/272,1471
____________
HEARD: November 16, 1999
____________
Before HAIRSTON, JERRY SMITH, and FRAHM, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 17.
Appeal No. 1997-1316
Application No. 08/272,147
2
The disclosed invention relates to a multiple-part, foot-
support sole.
Claim 1 is the only independent claim on appeal, and it
reads as follows:
1. A multiple-part foot-support sole, comprising: a
cork foot support having a thickness that is minimal under a
heel and under a ball of a wearer's foot; a wedge arranged
under the foot support so that a front edge of the wedge lies
approximately under the ball of the wearer's foot and forms an
angle between 75 and 80° relative to a longitudinal center
line of the sole, said wedge being of a lightweight and
flexible material, said wedge having an upper side and a lower
side that are substantially flat; and an outsole provided
under the wedge and the cork foot support, a front part of the
lower side of the wedge and the outsole being sharply raised
in a toe region, the cork foot support being only slightly
curved in the toe region.
The references relied on by the examiner are:
Gilbert 588,977 Aug. 31,
1897
Messler 1,694,353 Dec. 4,
1928
Tax 2,838,776 June 17,
1958
Hollister et al. (Hollister) 4,043,058 Aug.
23, 1977
Hashimoto et al. (Hashimoto) 4,590,123 May
20, 1986
Telecemian 4,663,865 May 12,
1987
Franklin et al. (Franklin) 4,794,707 Jan. 3,
1989
Appeal No. 1997-1316
Application No. 08/272,147
3
Claims 1, 5, 6, 9 and 11 through 17 stand rejected under
35 U.S.C. § 103 as being unpatentable over Hollister in view
of Tax and Messler.
Claims 2 and 3 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hollister in view of Tax, Messler and
Hashimoto.
Claim 4 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Hollister in view of Tax, Messler, Hashimoto
and Gilbert.
Claims 7 and 10 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hollister in view of Tax, Messler and
Telecemian.
Claim 8 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Hollister in view of Tax, Messler and
Franklin.
Reference is made to the brief and the answer for the
respective positions of the appellant and the examiner.
OPINION
The obviousness rejection of claims 1 through 17 is
reversed.
Appeal No. 1997-1316
Application No. 08/272,147
4
According to the examiner (Answer, page 2), Hollister
discloses “a sole with a foot support member (16), a wedge
(14) with a front edge which terminates at the ball area of
the foot of a wearer, an outsole (12), and the toe portion of
the wedge
Appeal No. 1997-1316
Application No. 08/272,147
5
and the outsole being raised (figure 1) substantially as
claimed except for the exact material and thickness for the
foot support member and the angle of the front edge of the
wedge.” For the foot support material and the thicknesses of
the foot support material in the heel and the ball area of a
foot, the examiner turns to Tax which discloses the use of
“cork, rubber or a combination of both” for body 17 (column 2,
lines 1 and 2), and a body 17 that has such noted minimal
thicknesses (Figure 3). Messler is cited by the examiner
(Answer, page 2) for a teaching of “ending the front portion
of a wedge (10) in an angle (figure 3) to coincide with the
actual ball area of the wearers’ foot.” The examiner
concludes (Answer, pages 2 and 3) that “[i]t would have been
obvious to make the foot support member from cork with minimum
thicknesses in the heel and ball area as taught by Tax and to
angle the front edge of the wedge as taught by Messler in the
sole of Hollister to provide a more comfortable and conforming
foot support layer and to provide an angled front edge to more
closely follow the angle of the wearers natural flex line.”
With respect to the specifically claimed angles, the
Appeal No. 1997-1316
Application No. 08/272,147
6
examiner indicates (Answer, page 3) that “it has been held
that discovering an optimum value of a result effective
variable involves only routine skill in the art.”
Appellant argues (Brief, page 14) that “[a]lthough Tax
teaches a cork layer there is absolutely no teaching in Tax
which would suggest that any type of cork layer or
construction could be utilized in a running shoe as taught by
Hollister.”
Based upon the teachings of Tax, it appears that cork is
an interchangeable material with foam rubber when the
cork/foam rubber is used as an internal layer beneath the foot
support. On the other hand, appellant has correctly argued
that there are no teachings of record for using a cork layer
as a foot support, especially in an athletic shoe such as the
one disclosed by Hollister. Thus, we are likewise in
agreement with appellant’s argument (Brief, page 14) that
“teachings from one specific type of footwear are not obvious
to combine with completely different types of footwear unless
there is some suggestion or teaching supporting the
combination. (Emphasis added). It is for this reason that we
Appeal No. 1997-1316
Application No. 08/272,147
7
also disagree with the examiner’s conclusion that it would
have been obvious to the skilled artisan to replace the
Appeal No. 1997-1316
Application No. 08/272,147
8
uniform thickness of the foot support disclosed by Hollister
with the noted minimal thicknesses of the Tax foot support.
With respect to the teachings of Messler, the examiner has not
provided any evidence or a convincing line of reasoning that
“an angled front edge to more closely follow the angle of the
wearers natural flex line” is either needed or wanted in the
athletic shoe disclosed by Hollister.
In short, the obviousness rejection of claims 1, 5, 6, 9
and 11 through 17 is reversed because “[i]t is well settled
that it is impermissible to use the claimed invention as a
template to piece together the teachings of the prior art so
as to render the claimed invention obvious” (Brief, page 15).
The obviousness rejection of claims 2 through 4, 7, 8 and
10 is reversed because the teachings of Hashimoto, Gilbert,
Telecemian and Franklin do not cure the noted shortcomings in
the teachings of Hollister, Tax and Messler.
Appeal No. 1997-1316
Application No. 08/272,147
9
DECISION
The decision of the examiner rejecting claims 1 through
17 under 35 U.S.C. § 103 is reversed.
REVERSED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ERIC FRAHAM )
Administrative Patent Judge )
lp
Appeal No. 1997-1316
Application No. 08/272,147
10
KLAUS P. STOFFEL
COHEN PONTANI, LIEBERMAN & PAVANE
551 FIFTH AVENUE, STE. 1210
NEW YORK, NY 10176
Leticia
Appeal No. 1997-1316
Application No. 08/272,147
APJ HAIRSTON
APJ JERRY SMITH
APJ FRAHM
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: June 15, 2000
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM/ACTS 2/BOOK
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