FitFlop Limited

Patent Trials and Appeals Board

Apr 1, 2021

2020005523 (P.T.A.B. Apr. 1, 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.
15/223,048 07/29/2016 Marcia Kilgore BOU007 P341 1050
277 7590 04/01/2021
PRICE HENEVELD LLP
695 KENMOOR SE
P O BOX 2567
GRAND RAPIDS, MI 49501
EXAMINER
PRANGE, SHARON M
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
04/01/2021 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):
ptomail@priceheneveld.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCIA KILGORE and DAVID COOK
Appeal 2020-005523
Application 15/223,048
Technology Center 3700
Before BRETT C. MARTIN, JEREMY M. PLENZLER, and
LISA M. GUIJT, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16. See Final Act. 1. 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. Appellant identifies the real party in interest as FitFlop Limited.
Appeal Br. 1.
Appeal 2020-005523
Application 15/223,048
2
CLAIMED SUBJECT MATTER
The claims are directed “to an item of footwear for increasing leg-
muscle and/or lower-abdominal-/back-muscle tone.” Spec. ¶ 2. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of molding a part of an insole or a sole of a shoe,
comprising:
providing an arch region of first material of relatively
lower compressive resistance or density;
providing a frontal/toe region and heel region of second
material of relatively higher compressive resistance or density;
placing the arch region between the frontal/toe region and
the heel region within a mold; and
bonding the frontal/toe region, the arch region and the heel
region together to form a unitary insole or sole having a wobble
effect which, in use, requires balance correction by a user.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Ambrose US 4,372,059 Feb. 8, 1983
Ritter US 6,061,929 May 16, 2000

REJECTIONS
Claims 4 and 16 are rejected under 35 U.S.C. § 112(a), for failing the
written description requirement. Final Act. 2.
Claims 1–3, 6, 7, 9, 10, and 12–16 are rejected under 35 U.S.C. § 103
as being unpatentable over Ambrose and Ritter (US 6,061,929). Final Act.
3.
Claims 4, 5, 8, and 11 are rejected under 35 U.S.C. § 103 as being
unpatentable over Ambrose and Ritter, as applied to claims 1, 2, 7, and 11,
further in view of Liu. Final Act. 5.
Appeal 2020-005523
Application 15/223,048
3
OPINION
Written Description
The Examiner rejects claims 4 and 16 as failing the written
description requirement. Regarding claim 4, the Examiner asserts that there
is no support in the original specification for a mold apparatus having top
and bottom halves that form a cavity. Final Act. 3. We first note that the
claims do not recite anything about top and bottom halves forming a cavity,
and the exact language of claim 4 appears in the original claims. Apparently
the Examiner takes issue with Appellant’s explanation as to what comprises
the claimed “waffle press-type bonding apparatus” where, during
examination, Appellant explained that the waffle press-type bonding
apparatus was well known in the art and included such top and bottom
halves forming a cavity. Appeal Br. 6. The Examiner’s rejection does not
address the language actually used in the claims. Rather, the Examiner
objects to Appellant’s assertion of what comprises a waffle press-type
bonding apparatus, we agree with Appellant that one of skill in the art would
have understood what such an apparatus comprised.2 Accordingly, we do
not sustain the rejection of claim 4.
Regarding the rejection of claim 16, the Examiner finds that there is
no support for the claimed regions being substantially planar without a force
exerted on the unitary sole. According to the Examiner, “the mere
disclosure that the footwear is adapted or configured to receive a foot of a
user does not provide conclusive evidence regarding any forces that may or
may not be applied to the sole as shown in the Figures.” Ans. 4. We agree

2 The Examiner makes clear in the Answer, however, that the rejection is not
based on indefiniteness. Ans. 3.
Appeal 2020-005523
Application 15/223,048
4
with Appellant, however, that the figures and specification disclose footwear
in the claimed configuration when not in use, i.e., a user’s foot is not
pressing down on the footwear. That one of ordinary skill in the art would
understand this is further supported by Ambrose in that Fig. 3 shows a shoe
in a relaxed state with no foot in it, whereas Figs. 5–7 show the same shoe
with a foot in it and how the sole deforms when downward force is applied
when a user walks. One of skill in the art would understand that the claim
language at issue here merely attempts to describe the configuration of the
shoe in a relaxed state when not being worn/used by a user.
The Examiner also rejects claim 16 because it is allegedly unclear
“which portions of the sole are relied on for the language of claim 16”
because “the present application clearly shows that portions of at least the
toe region and the heel region are substantially curved.” Ans. 4. The claims
do not, however, require all or any specific portion of each region to be
planar. The claims only require a portion of each region be planar with one
another. It does not matter that certain portions are curved as long as other
portions meet the claim language. Given that the figures show planar
portions in each of regions 4, 5, and 6 as shown in Fig. 2, this is sufficient to
meet the written description requirement for the claim language at issue.
Accordingly, we do not sustain the rejection of claim 16.
Obviousness
Appellant argues claims 1–3, 6, 7, 9, 10, and 12–16 as a group and
does not provide any separate arguments for the rejection of dependent
claims 4, 5, 8, and 11. Accordingly, we select claim 1 as representative and
the claims stand or fall with our disposition of claim 1. Appellant first
argues that Ambrose fails to disclose any wobble effect created therein and
that the Examiner relies on inherency for Ambrose disclosing such a feature.
Appeal 2020-005523
Application 15/223,048
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Appeal Br. 8. The Examiner, however, explains that Appellant’s own
Specification describes only that the wobble effect is created by changes in
density across the various regions of the shoe and fails to provide any further
detail as to how such a wobble effect is created. Ans. 5. Accordingly, the
Examiner does not rely on inherency, but simply Appellant’s own
description as to what properties create such a wobble effect, namely “the
arrangement of two or more materials of different compressive resistances or
densities.” Ans. 5 (citing Spec. ¶ 26). Given that Ambrose has such
differing densities, we agree with the Examiner that, at least to the detail
described in Appellant’s Specification, Ambrose has a structure that would
create such a wobble effect.
Appellant next argues that Ambrose fails to disclose “whether the
density of the middle segment 11 is less than, equal to, or greater than the
relative density of the front segment 12 and the rear segment 10 as the sole
body is compressed or once the sole body is completely compressed.”
Appeal Br. 9. Appellant argues this while admitting that “Ambrose ’059
does disclose that the middle segment 11 has a relatively lower density than
the front segment 12 and the rear segment 10.” Id. The claims, however, do
not require such difference under compression and only require “an arch
region of first material of relatively lower compressive resistance or
density.” Ambrose discloses a lower density, which is sufficient to meet the
claim language at issue.
Finally, Appellant argues that Ritter would not be combinable with
Ambrose because “the result would not be a smooth joining between the
multiple sections.” Appeal Br. 13. As the Examiner explains, however,
Ritter’s “multiple sections having different densities do have a smooth
joining at the transitions between the sections at the top and bottom faces.”
Appeal 2020-005523
Application 15/223,048
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Ans. 7. Accordingly, we are not persuaded of error in the Examiner’s
rejection of claims 1–15.
Regarding claim 16, Appellant argues that the Examiner erred in
finding that “[t]here are no limitations within the claims requiring that each
of the regions is substantially planar with each of the other regions.” Ans. 8.
The Examiner’s finding is simply not correct. Claim 16 recites “at least a
portion of a lower-facing surface of each of the arch region, the frontal/toe
region, and the heel region are substantially planar with one another.” This
language requires that at least a portion of all three regions be coplanar. As
the Examiner admits, Ambrose only teaches the toe and arch regions being
coplanar and the arch and heel regions being coplanar, but does not teach all
three being coplanar. Ans. 8. The Examiner points to Fig. 6 of Ambrose
and asserts “that each of the regions is capable of being substantially planar
with each of the other regions,” but this only occurs when downward
pressure is exerted by the user’s foot, which is in direct contradiction of the
claim language requiring that the regions be coplanar “without a force being
exerted on the unitary insole or sole by the user.” Accordingly, we do not
sustain the rejection of claim 16.
CONCLUSION
The Examiner’s rejections are affirmed in part.
More specifically,
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Application 15/223,048
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6, 7, 9,
10, 12–16
103 Ambrose, Ritter 1–3, 6, 7, 9,
10, 12–15
16
4, 5, 8, 11 103 Ambrose, Ritter,
Liu
4, 5, 8, 11
4, 16 112(a) Written
Description
4, 16
Overall
Outcome
1–15 16

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