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Patent Trials and Appeals Board

Nov 7, 2019

14746476 - (D) (P.T.A.B. Nov. 7, 2019)

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.
14/746,476 06/22/2015 Michael Toschi ATZ00065-MT-01 2697
34399 7590 11/07/2019
GARLICK & MARKISON
100 Congress Avenue, Suite 2000
AUSTIN, TX 78701
EXAMINER
TRIEU, TIMOTHY K
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
11/07/2019 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):
MMurdock@TEXASPATENTS.COM
bpierotti@texaspatents.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MICHAEL TOSCHI
__________

Appeal 2019-003344
Application 14/746,476
Technology Center 3700
__________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.

REIMERS, 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 1–4, 6–15, and 17–22 under 35 U.S.C.
§ 103 as unpatentable over Elliott (US 7,228,649 B2, issued June 12, 2007)
and Clark (US 2007/0039210 A1, published Feb. 22, 2007). Claims 5 and
16 have been canceled. 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 the real party in interest as Michael
Toschi. Appeal Brief (“Br.”) 2, filed April 5, 2018.
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CLAIMED SUBJECT MATTER
The claimed subject matter “relates generally to athletic shoes and
more particularly to an athletic shoe with a power extension.” Spec. 1:14–
15, Figs. 1, 2. Claims 1 and 12 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A dominant side athletic shoe comprises:
an upper section;
a mid-sole coupled to the upper section; and
an out-sole coupled to the mid-sole, wherein at least one of the
mid-sole and the out-sole includes an extension on a medial side
of the dominant side athletic shoe, wherein the extension has a
width, wherein the extension has a length that extends from a toe
section of the dominant side athletic shoe to a mid-foot section
of the dominant side athletic shoe and extends, from a top
perspective, beyond the upper section by at least the width to
provide an increase in force during performance of a rotational
athletic task.

ANALYSIS
Appellant does not offer arguments in favor of independent claim 12
or dependent claims 2–4, 6–11, 13–15, and 17–22 separate from those
presented for independent claim 1. See Br. 5–9. We select claim 1 as the
representative claim, and claims 2–4, 6–15, and 17–22 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Elliott discloses the dominant side athletic
shoe of claim 1 substantially as claimed except “Elliott does not disclose a
midsole.” Final Act. 2.2 The Examiner finds that Clark discloses “similar

2 Final Office Action (“Final Act.”), dated May 4, 2017.
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footwear art . . . including an upper 104, insole 154, midsole 107 and an
outsole 102.” Final Act. 2 (citing Clark ¶ 41, Fig. 3B). The Examiner
reasons that it would have been obvious “to provide the midsole of Clark
incorporated with the footwear article of Elliott in order to increase the
protection of the wearer[’s] foot.” Id. at 3. The Examiner finds that outsole
52 of Elliott “includes an extension,” in that Figure 9 of Elliott “shows a
housing 47 extending from the above of the toe area to the middle region on
both sides of the shoe[] on a medial side of dominant side the athletic shoe.”
Final Act. 9; see also id. at 3. The Examiner further finds that the extension
“has a width (thickness of the wall element 47)” and a length (citing one of
the Examiner’s annotated versions of Figure 9 of Elliott (see Final Act. 3))
“that extends from a toe section of the dominant side athletic shoe to a mid-
foot section of the dominant side athletic shoe and extends, from a top
perspective, beyond the upper section . . . to provide an increase in force
during performance of a rotational athletic task.” Final Act. 9; see also id. at
3. The Examiner reasons that because the combined teachings of Elliott and
Clark “provide all the structure of the claimed invention,” a skilled artisan
would recognize that the combination of Elliott and Clark “would provide an
increase in force during performance of a rotational athletic task as claimed”
and that this “functional recitation with respect to the manner in which a
claimed apparatus is intended to be employed does not differentiate the
claimed apparatus from a prior art apparatus satisfying the claimed structural
limitations.” Final Act. 9–10; see also Ans. 4.3

3 Examiner’s Answer (“Ans.”), dated July 26, 2018.
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Appellant contends that the Examiner’s reason for combining the
teachings of Elliott and Clark, i.e., “in order to increase the protection of the
wearer[’s] foot,” “fail[s] to meet the requirement for obtaining a thorough
understanding of the [subject] invention.” Br. 6–7; see also Final Act. 3. In
particular, Appellant contends that “[t]he present[ly] claimed invention is
not about increasing protection of the wearer’s foot; it is, at least in part,
about increasing force during performance of a rotational athletic task.” Id.
at 7.
“In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. . . . [A]ny need or problem known in the field of endeavor
at the time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 419–20 (2007). Moreover, it is well established that the
reason to modify the reference may often prompt a person of ordinary skill
in the art to do what the inventor has done, but for a different purpose or to
solve a different problem. It is not necessary that the prior art suggests the
combination to achieve the same advantage or result discovered by an
applicant. In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006). In this case,
the Examiner’s reason to modify the teachings of Elliott with Clark, i.e., “in
order to increase the protection of the wearer[’s] foot,” is sound and based
on rational underpinnings. Appellant does not provide persuasive evidence
or argument apprising us of Examiner error.
Appellant contends that “the Examiner has inappropriately taken
official notice with respect to increasing force during performance of a
rotational athletic task.” Br. 8. In particular, Appellant contends that
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“Elliot[t] does not mention the word ‘force’ in [its] specification” and that
the Examiner provides “no other facts regarding an increase in force during
performance of a rotational athletic task other than to say, ‘Figure 9 can
perform that task.’” Br. 7. Appellant also contends that the claimed
extension is not “taught by Elliot[t], is not taught by any other reference to []
Appellant’s knowledge, and is not capable of instant and unquestionable
demonstration as being well-known.” Id. at 8.
Here, the Examiner correctly points out in the Answer that “[o]fficial
notice has not been taken.” Ans. 5. The Examiner also explains that the
annotated versions of Figure 9 of Elliott provided by the Examiner are “used
to help further clarify each portion of the attachment device to correspond to
each portion of the sole/footwear.” Ans. 5; see also id. at 6 (one of the
Examiner’s annotated versions of Figure 9 of Elliott); Final Act. 3. Further,
in response to Appellant’s argument, the Examiner takes the position that the
wall thickness and the length of housing 47 of Elliott provides an extension
and wider base for the sole and that the wider base “provides a wider pivot
point contact between the bottom surface of the attachment/footwear and the
ground surface [therefore] allowing the body of the user to safely turn along
with swing movement or rotational force of golf club/baseball bat, thus
reducing knee or hip injury to the player.” Ans. 5; see also id. at 4.
Appellant does not apprise us of Examiner error.4 Additionally, as

4 As Appellant has not filed a Reply Brief, Appellant has waived any
arguments against the Examiner’s findings. See Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (“Informative”) (“[A]rguments that could be made
in the reply brief, but are not, are waived.”).

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previously pointed out by the Examiner in the Final Office Action, given
that the combined teachings of Elliott and Clark “provide all the structures
of the claimed invention,” a skilled artisan would recognize that the
combination of Elliott and Clark “would provide an increase in force during
performance of a rotational athletic task as claimed” and that this “functional
recitation with respect to the manner in which a claimed apparatus is
intended to be employed does not differentiate the claimed apparatus from a
prior art apparatus satisfying the claimed structural limitations.” Final Act.
9–10; see also Ans. 4; In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997). Appellant does not provide persuasive evidence or argument
apprising us of Examiner error.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as unpatentable over
Elliott and Clark. Accordingly, we sustain the Examiner’s rejection of claim
1. We further sustain the rejection of claims 2–4, 6–15, and 17–22, which
fall with claim 1.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6–15,
and 17–22
103 Elliott and Clark 1–4, 6–15,
and 17–22

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