Markus Bartholet et al.

Patent Trials and Appeals Board

May 4, 2021

2020006467 (P.T.A.B. May. 4, 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.
12/922,613 12/07/2010 Markus Bartholet 32628-1109 1624
76656 7590 05/04/2021
Patent Docket Department
Armstrong Teasdale LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
MOHANDESI, JILA M
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
05/04/2021 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARKUS BARTHOLET and CLAUDIO FRANCO
____________

Appeal 2020-006467
Application 12/922,613
Technology Center 3700
____________

Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–14 and 16–20.2,3 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Masai International Pte Ltd. as the real
party in interest. Appeal Br. 1.
2 Claim 15 is cancelled. Appeal Br. 17 (Claims App.).
3 The Board previously issued a Decision on December 15, 2017, in Appeal
No. 2017-001877, in this application.
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CLAIMS
Claim 1, reproduced below, is the sole independent claim on appeal.
1. A walking device with
a shoe bottom, which has:
a midsole, extending over a heel region, a midfoot region
and a ball and toe region,
a soft heel part, arranged in a recess of the midsole, that
extends from a rear end of the shoe bottom, in a walking
direction, over the heel region to a middle of the shoe bottom,
and
an outsole, which is kept in the unloaded state in a form
that is rounded convexly in the walking direction by the
midsole and the soft heel part,
an upper, arranged on the shoe bottom, and
a reinforcing element, which has such stability that the
midsole is substantially rigid with respect to loads during
standing and walking in its portion located above the soft heel
part, wherein the reinforcing element, forming an insole, is
arranged on an upper surface of the midsole, facing away from
the outsole, and is fastened to said surface.

Appeal Br. 15 (Claims App.).

REJECTION
Claims 1–14 and 16–20 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Serna4 (WO 99/05928 A1, published Feb. 11,
1999) and Koh (GB 2 200 030 A, published July 27, 1988).

4 Serna is the named inventor. The Examiner and Appellant refer to this
reference as “VANS” or “Vans.”
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ANALYSIS
Appellant presents argument for claim 1 only. Appeal Br. 4–13. We
select claim 1 as representative to decide the appeal as to the rejection. See
37 C.F.R. § 41.37(c)(1)(iv) (2019). Claims 2–14 and 16–20 stand or fall
with claim 1.
As for claim 1, the Examiner finds that Serna discloses a walking
device with a shoe bottom including a midsole 10, as claimed, and a soft
heel part (shock absorbing cassette 20) arranged in a recess of the midsole.
Final Act. 3 (citing Serna Figs. 1A, 1B, 2A–2D). The Examiner concedes
that Serna does not disclose that the soft heel part “extends from a rear end
of the shoe bottom, in a walking direction, over the heel region to a middle
of the shoe bottom,” as claimed. Id. at 4.
The Examiner relies on Koh as disclosing a soft heel part (spring
element 22) arranged in a recess that extends, as claimed, to absorb shock
loads when the heel impacts on the ground. Final Act. 5 (citing Koh Figs.
1A, 1B, 2). The Examiner concludes that it would have been obvious to one
of ordinary skill in the art, in view of Koh,
to make the size of the soft heel part [of Serna] larger to extend
to the middle of the shoe and support the heel and midfoot of
the foot of the wearer and provide better shock absorbing to the
foot of the wearer by better absorbing the shocks inherent in
walking or running due to its bigger size.
Id.
Appellant contests the proposed combination. Appellant contends
that, in Serna, sole 2 and shock absorbing cassette 20 are designed to enable
a skateboarder to better control the skateboard. Appeal Br. 6 (citing Serna 3,
ll. 12–23, 10, ll. 22–35). Appellant asserts that the size of cassette 20 and its
positioning within midsole 10 are configured to increase board feel through
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shoe 1 to enable a skateboarder to better control the skateboard. Id. at 7
(quoting Serna 13, ll. 14–29). As for Koh, Appellant contends that spring
element 22 includes a soft sponge or foam rubber element of suitable soft
stiffness that absorbs shocks inherent in walking or running. Id. at 8–9
(citing Koh 5, ll. 12–20).
Appellant contends that one of ordinary skill in the art would not have
combined the teachings of Serna and Koh because Serna discloses a shoe
specifically designed for skateboarding, whereas Koh’s shoe is designed for
walking and running. Appeal Br. 10. According to Appellant, Serna’s
cassette 20 is specifically designed for this purpose by having a thickness to
increase board feel and being positioned within midsole 10 to provide
controlled damping and cushioning to prevent heel bruising. Id. In contrast,
Appellant contends, Koh’s shoe is configured to reduce the feel of the
ground through the shoe. Id. at 11. Appellant submits that a person of
ordinary skill in the art would not have modified Serna for the reason
articulated by the Examiner because Serna’s shoes “are specifically designed
to increase board feel by limiting the size of the cassette,” whereas Koh’s
shoes are designed to decrease the feel of the ground through the shoe with a
spring element. Id. (emphasis added).
Appellant also disputes that increasing the size of Serna’s cassette
would be “[a] mere change in the size of a component.” Appeal Br. 11;
Final Act. 5. According to Appellant, increasing the size of the cassette in
Serna to extend from the heel region to the middle of the shoe would change
the operation and function of the skateboarding shoe. Appeal Br. 12.
Appellant’s contentions are unpersuasive. First, claim 1 is directed to
a “walking device,” but does not recite a particular type of footwear. And
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although Serna describes and illustrates a skateboard shoe, Serna emphasizes
that its teachings are not limited only to skateboard shoes. To the contrary,
Serna describes that “[a] skateboard shoe 1 is shown in the drawings for
illustrative purposes only. Other footwear, such as mountain bike shoes,
snowboard boots and the like, could incorporate the novel sole features
described below.” See Serna 7, ll. 9–12. Accordingly, Serna teaches that its
“novel sole features” can be used in other types of footwear.
Second, the Examiner does not propose modifying the thickness of
Serna’s cassette. Accordingly, Appellant’s contention that making such
modification would affect the board feel of Serna’s shoe is unpersuasive.
Third, we disagree that Serna discloses that its shoes “are specifically
designed to increase board feel by limiting the size of the cassette.” Appeal
Br. 11 (emphasis added). As noted by the Examiner, Serna discloses that the
cassette can have certain length dimensions, but Serna further discloses that
these dimensions could be larger “depending on the shoe heel size and other
design choices.” Final Act. 4; see Serna Fig. 2A (showing dimensions A, B,
and C of cassette 20). Accordingly, Serna explicitly discloses that the size
of the cassette can be based on design choices, which is consistent with the
Examiner’s reasoning.
Moreover, Serna also states:
the disclosure is illustrative only and various changes and
modifications may be effected by one skilled in the art without
departing from the scope or spirit of the invention. For
example, the shock absorbing cassette and/or the cushion
elements could be larger or smaller than that described,
depending on the amount of cushioning and rebound desired.
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See Serna 17, ll. 19–25 (emphasis added). The Examiner’s reasoning that
making Serna’s cassette larger to extend to the middle of the shoe and
support the heel and midfoot of the foot of the wearer in order to provide
better shock absorbing for the wearer’s foot due to its larger size is
consistent with this disclosure. Final Act. 5.
For the above reasons, Appellant has not apprised us of error in the
Examiner’s findings or reasoning in rejecting claim 1. Thus, we sustain the
rejection of claim 1, and claims 2–14 and 16–20 which fall with claim 1, as
unpatentable over Serna and Koh.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–14, 16–20 103(a) Serna, Koh 1–14,
16–20

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