FACTOR 10 LLC

Patent Trials and Appeals Board

Nov 16, 2021

2021005542 (P.T.A.B. Nov. 16, 2021)

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.
15/425,821 02/06/2017 Luke HOOPER 14067.001US1 4854
39564 7590 11/16/2021
FisherBroyles, LLP - MAIN CN
945 East Paces Ferry Rd. NE
Suite 2000
Atlanta, GA 30326
EXAMINER
LYNCH, MEGAN E
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
11/16/2021 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):
docketing@fisherbroyles.com
patent@fisherbroyles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LUKE HOOPER, VALERIE DRAVES, and
DANIEL WHITSELL
____________

Appeal 2021-005542
Application 15/425,821
Technology Center 3700
____________

Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 2, 4–15, 17, 18, and 20–30. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Factor 10 LLC as the Applicant and
real party in interest. Appeal Br. 1.
Appeal 2021-005542
Application 15/425,821
2
THE INVENTION
Appellant’s invention relates to shoes. Spec. 4. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. An article of footwear, comprising:
a sole having a length, a width, a heel and a
midfoot portion, wherein the sole includes a first
cavity extending across at least a part of the width
of the midfoot portion and a second cavity
extending from the heel toward the midfoot
portion;
a bi-stable closure mechanism having a first
portion extending within the first cavity and a
second portion extending away from the sole;
a trigger mechanism within the second cavity,
the trigger mechanism including an elongated rigid
member that extends from the heel toward the
midfoot portion, the rigid member having a first
end located in the heel and a second end that acts
on a surface of the first portion of the closure
mechanism,
wherein the first end of the rigid member is
configured to receive a force from a foot of a user
of the footwear and transfer the force to the second
end of the rigid member, the second end of the
rigid member arranged to deform the surface of the
closure mechanism and thereby activate the second
portion of the closure mechanism,
wherein, upon activation, the second portion of
the closure mechanism moves from a first stable
position towards a second stable position and
wraps around at least one of a top surface of the
article of footwear and the user's foot.

Appeal 2021-005542
Application 15/425,821
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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Lin US 5,054,216 Oct. 8, 1991
Chou US 6,427,361 B1 Aug. 6, 2002
Ng US 2009/0019736 A1 Jan. 22, 2009
Smith US 2016/0302530 A1 Oct. 20, 2016
The following rejections are before us for review:2
1. Claims 1, 2, 4–15, 17, 18, and 20 are rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Chou.
2. Claim 23 is rejected under 35 U.S.C. § 102(a)(1) as anticipated by
Lin.
3. Claims 6, 23, and 25–30 are rejected under 35 U.S.C. § 102(a)(1)
as anticipated by Ng.
4. Claims 21 and 22 are rejected under 35 U.S.C. § 103 as
unpatentable over Ng.
5. Claims 24 is rejected under 35 U.S.C. § 103 as unpatentable over
Ng and Smith.
OPINION
Anticipation
For a prior art reference to anticipate a claim, it must disclose all of
the limitations of the claim, “arranged or combined in the same way as in the

2 According to the Examiner, claims 3 and 19 contain allowable subject
matter, but are objected to as being dependent upon a rejected base claim.
Final Act. 14.
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Application 15/425,821
4
claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed.
Cir. 2008). Determining whether claims are anticipated involves a two-step
analysis. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The
first step involves construction of the claims of the patent at issue. Id.
“During examination, ‘claims ... are to be given their broadest reasonable
interpretation consistent with the specification, and ... claim language should
be read in light of the specification as it would be interpreted by one of
ordinary skill in the art.’” Id. (quoting In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004)). The second step of an anticipation
analysis involves comparing the claims to prior art. Id. A prior art reference
anticipates a patent claim if it discloses every claim limitation. Id.
For each anticipation ground of rejection, the Examiner finds that the
cited art (Chou, Lin, Ng) discloses every limitation of the rejected claim.
Final Act. 2–11.
Anticipation of Claims 1, 2, 4-15, 17, 18, and 20
by Chou
Claims 1 and 6
Appellant argues independent claims 1 and 6 together. See Appeal
Br. 7–9. Claim 1 is representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Dependent claims 2, 4, 5, 7–15, 17, 18, and 20 are argued based solely on
the dependency. Appeal Br. 9. Accordingly, the dependent claims will
stand or fall with claim 1.
Appellant argues that pressing plate 34 of Chou’s closure mechanism
does not extend “away from the sole” as claimed. Appeal Br. 7–9.
Appellant further argues that Chou fails to disclose deformation of a surface
of the closure mechanism. Id. at 7. Appellant further argues that Chou does
not transition from a first stable position to a second stable position. Id. at 9.
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In response, the Examiner clarifies that the rejection does not rely on
pressing plate 34 as the element that extends away from the sole. Ans. 4.
The Examiner also points out that Chou element 6 is deformed to tighten
shoelace 21. Id. The Examiner further states that Chou’s shoelace 21 moves
between a first and second stable position. Id.
Chou is directed to a shoe that has an automatic tying and untying
feature. Chou, Abstract. As explained by Chou with reference to
Figures 14–16, when plate 34 is pressed down, the resulting downward
movement drives curve arm 35, pulling plate 36, and cord 23 to pull
shoelace 21, thereby tightening shoelace 21. Id. col. 12, ll. 14–47. In
connection with tightening shoelace 21, lever 352 presses against and
deforms flexible member 6. Id. col. 5, ll. 18–34, Fig. l. In the disclosed
embodiment of Figure 1, flexible member 6 is a twisted spring. Id. col. 5,
ll. 27–30. A person of ordinary skill in the art would understand that if
twisted spring 6 is mechanically deformed by a force imparted by lever 352
acting on it, the surface of spring 6 would also be deformed. To remove the
shoe, the user presses button 40 to release the mechanism from its shoelace
tight condition. Id.
We agree with the Examiner that Chou’s shoelace transitions between
a first stable condition, when the shoelace is loose, to a second stable
condition, when the shoelace is tightened. In the tightened condition, the
shoelace wraps around the user’s foot as claimed. As perhaps best shown in
Figure 3, a portion of curve arm 35 extends within the sole and a second
portion extends away from the sole. Id. Fig. 3. Claim 1 recites that the rigid
member has a first end located in the heel and a second end that acts on a
surface of the first portion of the closure mechanism. Claims App. As
perhaps best shown in Figure 4, element 352 of Chou’s hinge mechanism is
Appeal 2021-005542
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an elongated rigid member with a first end located in the heel and a second
end that acts on spring 6, in connection with applying force to tighten the
shoelace. Id. Fig. 4.
The Examiner’s findings of fact are supported by a preponderance of
the evidence. Consequently, we sustain the Examiner’s section 102
rejection of claims 1, 2, 4–15, 17, 18, and 20 as anticipated by Chou.
Anticipation of Claim 23 by Lin
Claim 23 is an independent claim that recites a limitation directed to a
spring member that extends from the side portion of the sole. Claims App.
The Examiner relies on element 20 of Lin as satisfying the spring member
limitation. Final Act. 8. Appellant argues that Lin element 20 does not
extend from a “side” portion of the sole. Appeal Br. 10. In response, the
Examiner states that Lin’s element 20 extends from the top side of sole 10
and further maintains that the top side is a “side” portion of the sole. Ans. 6.
The Examiner errs by using an overly broad and unreasonable
construction of “side.” See Microsoft Corp. v. Proxyconn, Inc. 789
F.3d 1292, 1298 (Fed. Cir. 2015) (explaining that an “unreasonably broad”
construction that does not “reasonably reflect the plain language and
disclosure” will not pass muster). We do not sustain the Examiner
Section 102 rejection of claim 23 as anticipated by Lin.
Anticipation of Claims 6, 23, and 25–30
by Ng
Claim 6
Appellant argues that Ng fails to disclose a closure mechanism that
has a first portion that is attached to the sole and a second portion that
extends away from the side portion of the sole. Appeal Br. 11. Appellant
argues that Ng’s closure mechanism is disposed in the shoe upper, not the
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sole. Id. at 12. Appellant further argues that “upper 20 of Ng, which holds
the bi-stable fixture element 40, is unambiguously a separate and distinct
portion of the shoe from the sole 10.” Id.
At the outset we note that the term “side portion” does not appear in
claim 6. Claims App. Figure 1 of Ng depicts flexure element 40 with distal
ends that extend in a direction that is properly characterized as extending
“away from” the sole, which is all that the claim requires. Ng, Fig. 1.
With respect to Appellant’s argument that Ng’s element is not
“attached to” the sole, we agree that element 40 is disposed within upper 20.
Ng. Fig. 2. However, that does not end our inquiry. Components of various
mechanisms may be considered “attached to” each other where the
mechanical attachment is indirect via an intervening structure.
Just as the ordinary meaning of “connect” and its variations
(e.g., connecting, connected, connection) covers both direct and
indirect connections (i.e., a connections having an intermediate
element), so too “attach” and its variations (e.g., attached,
attachment) covers both direct and indirect attachment (i.e.,
attachment having an intermediate element). See Ullstrand v.
Coons, 147 F.2d 698, 700 (CCPA 1945) (the accepted
definition of the term “connected” is restricted to neither a
direct nor an indirect connection, and it is therefore applicable
to an indirect connection); see also Southco, Inc. v. Fivetech
Tech. Inc., Civ. No. 2014-1390, 2015 WL 1609846, at *2 (E.D.
Pa. Apr. 10, 2015) (the ordinary meaning of attached includes
both direct and indirect attachment).
Clariant Corp. v. CSP Tech, Inc., IPR2014-00375, 2015 WL 3637958, *6
(PTAB, June 10, 2015).
In view of the foregoing, Appellant’s arguments are deemed
unpersuasive and fail to apprise us of Examiner error. The Examiner’s
findings of fact are supported by a preponderance of the evidence. We
sustain the Examiner’s Section 102 rejection of claim 6 as anticipated by Ng.
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Claim 23
Independent claim 23 differs from claim 6 in that it recites that spring
member “extends from the side portion of the sole.” Claims App. Although
we agree with the Examiner that element 40 of Ng is attached, albeit
indirectly, from the sole, we do not agree with the Examiner that element 40
extends from the “side portion” of the sole as claimed. Thus, we do not
sustain the Examiner’s Section 102 rejection of claim 23 as anticipated by
Ng.
Claim 25
Claim 25 is an independent claim that contains a limitation directed to
the spring member being “attached to” the sole of the shoe. Claims App.
Appellant argues that element 40 is disposed in upper 20 and not in sole 10
of Ng. Appeal Br. 12. This argument is not persuasive as we have already
resolved this issue adversely to Appellant in connection with the rejection of
claim 6 discussed hereinabove. Clariant, 2015 WL at *6. We sustain the
Examiner’s Section 102 rejection of claim 25 as anticipated by Ng.
Unpatentability of Claims 21 and 22
over Ng
These claims depend, directly or indirectly, from independent claim 6
and are not separately argued apart from arguments advanced against the
rejection of claim 6 that we find unpersuasive. Claims App. See generally
Appeal Br. We sustain the Examiner’s Section 103 unpatentability rejection
of claims 21 and 22 over Ng.
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Unpatentability of Claim 24
over Ng and Smith
Claim 24 depends from claim 23. Claims App. The Examiner’s
rejection of this claim suffers from the same infirmity that was identified
above with respect to the anticipation rejection of claim 23, which infirmity
is not relieved by any findings of fact based on the Smith reference. Final
Act. 13. Thus, for essentially the same reason expressed above in
connection with claim 23, we do not sustain the rejection of claim 24.
CONCLUSION
Claims
Rejected
35
U.S.C. §
References Affirmed Reversed
1, 2, 4-15,
17, 18, 20
102 Chou 1, 2, 4-15, 17,
18, 20

23 102 Lin 23
6, 23, 25-30 102 Ng 6, 25-30 23
21, 22 103 Ng 21, 22
24 103 Lin, Smith 24
Overall
Outcome
1, 2, 4-15, 17,
18, 20-22,
25-30
23, 24

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED IN PART