CHALK, F N et al.Download PDFPatent Trials and Appeals BoardDec 6, 201914678570 - (D) (P.T.A.B. Dec. 6, 2019) Copy Citation 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. 14/678,570 04/03/2015 F N CHALK JR. 821413-1010 1006 24504 7590 12/06/2019 THOMAS | HORSTEMEYER, LLP 3200 WINDY HILL ROAD, SE SUITE 1600E ATLANTA, GA 30339 EXAMINER HALL, FORREST G ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 12/06/2019 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): docketing@thomashorstemeyer.com ozzie.liggins@tkhr.com uspatents@tkhr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte F N CHALK JR., STEPHEN DAVID OPIE, and JAMES TSEN __________ Appeal 2018-009172 Application 14/678,570 Technology Center 3700 ____________ Before MICHAEL C. ASTORINO, JAMES A. WORTH, and BRADLEY B. BAYAT, Administrative Patent Judges. BAYAT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1, 2, and 4–20, which are all the claims pending in the application.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as “NFINITY IP, LLC.” Appeal Br. 3. 2 Claims 3 and 21 have been cancelled. Id. at 24 (Claims App.); see also Advisory Act. (mailed Feb. 23, 2018). Appeal 2018-009172 Application 14/678,570 2 CLAIMED SUBJECT MATTER Appellant’s disclosure “relate[s] generally to an athletic shoe, and more particularly, to a shoe sole assembly having an energy return system.” Spec. ¶ 2. Sole independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A shoe sole assembly having a vertical axis extending therethrough, comprising: a midsole having an upper midsole surface, a lower midsole surface, a midsole forefoot portion, and a midsole heel portion; at least one stabilizer plug having an upper stabilizer plug surface, a lower stabilizer plug surface, at least one trampoline recess disposed in the upper stabilizer plug surface, and at least one projection extending outwardly from the lower stabilizer plug surface relative to the vertical axis, wherein the at least one trampoline recess does not protrude the lower stabilizer plug surface and each projection of the at least one projection substantially underlies at least a portion of the at least one trampoline recess; and at least one outsole member having an upper outsole surface and a lower outsole surface, wherein the upper outsole surface of each outsole member is adapted to complementarily receive the at least one projection of a corresponding stabilizer plug; wherein the lower midsole surface defines at least one stabilizer plug recess, wherein each of the at least one stabilizer plug recesses is sized and shaped to receive a corresponding stabilizer plug of the at least one stabilizer plug; and wherein, when a force is applied to the lower outsole surface during a foot strike, the at least one trampoline recess receives underlying portions of the stabilizer plug to accommodate elastic deformation of the underlying portions of the stabilizer plug and the outsole member relative to the vertical axis. Appeal 2018-009172 Application 14/678,570 3 REFERENCES The prior art relied upon by the Examiner: Name Reference Date Gross US 6,412,196 B1 July 2, 2002 Oorei et al. (“Oorei”) US 2002/0148142 A1 Oct. 17, 2002 Young-Chul US 7,523,566 B2 Apr. 28, 2009 REJECTIONS 1. Claims 1, 2, and 4–20 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. 2. Claims 1, 2, and 4–20 are rejected under 35 U.S.C. § 112(b) as being indefinite. 3. Claims 1, 2, 4, 5, 7–10, 15, and 18 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Gross. 4. Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over Gross and Young-Chul. 5. Claims 11–14, 16, and 17 are rejected under 35 U.S.C. § 103 as being unpatentable Gross. 6. Claims 19 and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Gross and Oorei. OPINION Written Description Rejection Appellant contends that the rejection of independent claim 1 under 35 U.S.C. § 112(a) as to the limitation “at least one trampoline recess does not protrude the lower stabilizer plug surface,” is improper in view of paragraphs 41, 48, and Figures 11A and 11B of the disclosure as originally filed. Appeal Br. 11–12. Appeal 2018-009172 Application 14/678,570 4 The Examiner disagrees and maintains the rejection as failing to comply with the written description requirement because Figs. 11A-11D do not provide sufficient clarity to support the negative limitation recited above. It is unclear from Figs. 11A- 11D at least whether the recesses (406) are throughhole or blind-hole recesses and it is therefore unclear from the figures which structures are/are not being shown regarding the relationship between the trampoline recess(es) and the lower stabilizer plug surface. Answer 3. We agree with Appellant. Whether a specification complies with the written description requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as originally filed, need not literally describe the claimed subject matter (i.e., using the same terms or in haec verba) in order to satisfy the written description requirement. But the Specification must convey with reasonable clarity to those skilled in the art that, as of the filing date, Appellant was in possession of the claimed invention. See id. Here, although the Specification does not explicitly describe “at least one trampoline recess does not protrude the lower stabilizer plug surface,” a person of ordinary skill in the art reviewing Appellant’s disclosure, including the claim language and the drawings would have known that Appellant was in possession of the claimed subject matter as of the filing date. Claim 1 recites “at least one stabilizer plug having an upper stabilizer plug surface, a lower stabilizer plug surface, at least one trampoline recess disposed in the upper stabilizer plug surface . . . wherein the at least one Appeal 2018-009172 Application 14/678,570 5 trampoline recess does not protrude the lower stabilizer plug surface.” Claim 1 supra. Figures 11A and 11B of Appellant’s disclosure are reproduced below: Figure 11A shows a top perspective of a forefoot stabilizer plug (Spec. ¶ 21) 410 with an upper stabilizer plug surface 402 “and at least one trampoline recess 406 disposed in the upper stabilizer plug surface.” Id. ¶ 41. Figure 11B shows a bottom perspective view of the forefoot stabilizer plug of Figure 11A (id. ¶ 21), wherein recesses 406 are distinguished from bores 414, which are shaded in black, such that “the stabilizer plug [410] further comprises at least one bore 414 extending from the upper stabilizer plug surface 402 to the lower stabilizer plug surface 404.” Id. ¶ 48. Appeal 2018-009172 Application 14/678,570 6 When an artisan considers Figure 11A (top view of the stabilizer plug 410, showing recesses 406 and bores 414) against Figure 11B (bottom view of the stabilizer plug 410, showing bores 414 and projections 408), it is ostensibly clear that shaded bores 414 are through-hole bores shown in Figure 11B as extending beyond the lower stabilizer surface 404, whereas recesses 406 are blind-hole indentations that are not shown to extend beyond the lower stabilizer plug surface 404. Reply Br. 3. In other words, recesses 406 are only shown in the upper stabilizer plug surface 402 of stabilizer plug 410 (see Fig. 11A), and also described in the claim and the Specification as being placed or “disposed in the upper stabilizer plug surface.” Spec. ¶ 41. On the other hand, shaded bores 414 are shown in the upper and the lower stabilizer plug surface (see Fig. 11A and 11B), and also described as “extending from the upper stabilizer plug surface 402 to the lower stabilizer plug surface 404.” Id. ¶ 48. Moreover, claim 1 further recites “at least one projection extending outwardly from the lower stabilizer plug surface relative to the vertical axis . . . the at least one projection substantially underlies at least a portion of the at least one trampoline recess.” Claim 1 supra. The relationship between projections 408 relative to recesses 406 is depicted in Figures 11A and 11B, such that each projection 408 is only shown in Figure 11B as extending outwardly from the lower stabilizer surface 404, and described as underlying at least a portion of recess 406. See Spec. ¶ 41. Therefore, we find the description of recesses 406, projections 408, and bores 414 in paragraphs 41 and 48 of the Specification, and the positioning of these structures as recited in the claim and shown in Figures 11A and 11B relative to each other, demonstrate at least one trampoline recess 406 disposed in the upper Appeal 2018-009172 Application 14/678,570 7 stabilizer plug surface, such that the at least one trampoline recess 406 does not protrude, i.e., “extend beyond”,3 to the lower stabilizer plug surface 404. Thus, Appellant’s disclosure as originally filed conveys with reasonable clarity to an artisan that the limitation “at least one trampoline recess does not protrude the lower stabilizer plug surface,” defines a blind-hole recess that does not extend beyond the lower stabilizer plug surface. Accordingly, we do not sustain the rejection of claim 1, and dependent claims 2 and 4–20, as failing to comply with the written description requirement. Indefiniteness Rejection We also do not sustain the rejection of claims 1, 2, and 4–20 under 35 U.S.C. § 112(b) as to the disputed limitation “at least one trampoline recess does not protrude the lower stabilizer plug surface,” because the Examiner relies on the same erroneous reasoning discussed above in maintaining that this limitation is indefinite. See Answer 3–4 (“It is unclear what structures Figs. 11A and 11B depict at least regarding which the bore(s) and/or trampoline recess(es) are through-hole bore(s) and/or trampoline recess(es) or blind-hole bore(s) and/or trampoline recess(es). These Figures therefore provide insufficient information from which to draw a conclusion as to the meaning of the recited claim limitation.”). 3 https://www.lexico.com/en/definition/protrude (“Extend beyond or above a surface.”) (last visited Nov. 20, 2019). Appeal 2018-009172 Application 14/678,570 8 Anticipation Rejection Claims 1, 2, 3, 5, 7–10, 15, and 18 Independent claim 1 requires, in part, at least one stabilizer plug having an upper stabilizer plug surface, a lower stabilizer plug surface, at least one trampoline recess disposed in the upper stabilizer plug surface, and at least one projection extending outwardly from the lower stabilizer plug surface relative to the vertical axis, wherein the at least one trampoline recess does not protrude the lower stabilizer plug surface and each projection of the at least one projection substantially underlies at least a portion of the at least one trampoline recess. Claim 1 supra. In rejecting this contested limitation of claim 1 as being anticipated by Gross, the Examiner finds Gross’s contoured platform 110, as shown in Figure 9, corresponds to stabilizer plug 410, the contoured platform 110 having a contoured inner surface 112 corresponds to the upper stabilizer plug surface 402, and the bottom surface of platform 110 facing outsole 152 corresponds to the lower stabilizer plug surface 404. See Final Act. 8. Further, the Examiner finds each of cavities 186 defined by contoured inner surface 112 of contoured platform 110 correspond to trampoline recesses 406 disposed in the upper stabilizer plug surface. Id. The Examiner finds “[t]he opposite surface of the stabilizer plug 110 that comprises the trampoline recess comprises the projection.” Answer 4. According to the Examiner, “Claim 1 does not recite any limitations that prevent the trampoline recess and the projection from being coaxial. Further, in the case where cavity 186 is a recess without cavity bottom 187, at least the perimeter around cavity 186 would comprise a projection.” Id. Appeal 2018-009172 Application 14/678,570 9 Appellant disagrees and argues that the ordinary meaning of the term “protrude” in the context of the limitation “is ‘not extend beyond,’” such that “the recess does not extend beyond the lower surface of the stabilizer plug. Any interpretation contrary to this ordinary meaning and contrary to the specification is inherently unreasonable.” Reply Br. 4. According to Appellant: Claim 1 further recites that at least one projection underlies the at least one trampoline recess. In the case of Gross there is no projection underlying element 186, as seen in Fig. 11 thereof. The Examiner attempts to bolster the lack of teaching in Gross of a projection on the lower surface underlying element 186 by arguing that claim 1 “does not recite any limitations that prevent the trampoline recess and the projection from being coaxial.” However, such argument ignores that claim 1 recites the projection underlies the trampoline recess, and further ignores that such interpretation removes the benefit of the cooperative function of the projection in conjunction with the trampoline recess of claim 1 that is provided by the projection underlying the trampoline recess. Lastly, the Examiner seems to argue that a cavity, in the case of the cavity around element 186 of Gross, can constitute a projection underlying the lower surface of the stabilizer plug. However, a cavity is not a projection. It is contrary to a projection. Id. We are persuaded of Examiner error. Having construed the disputed trampoline recess limitation in light of the Specification as part of our analysis under the written description requirement, we now compare the claim to the prior art to determine if the prior art anticipates the claim. In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). As interpreted above, and consistent with Appellant’s position, the limitation “at least one trampoline recess does not protrude the lower stabilizer plug surface,” requires that Gross’s cavity 186 Appeal 2018-009172 Application 14/678,570 10 does not extend beyond the lower surface of contoured platform 110, such that cavity 186 is disposed within the inner surface 112 forming a blind-bore recess. Figure 9 of Gross is reproduced below: Figure 9 is a “top left side perspective view of a midsole/contoured platform/outsole sole assembly manufactured from a second alternative embodiment of a contoured platform.” Gross 6:64–67. Gross describes two different configurations of cavity 186 as part of this embodiment shown in Figure 9. In the first configuration, Gross’s cavity 186 (shown in Figure 9 Appeal 2018-009172 Application 14/678,570 11 with hash lines) extends from inner surface 112 beyond its lower surface forming a through-hole bore, such that projection 184 of midsole 160 fits into corresponding cavity 186. Id. 12:26–27. This configuration fails to meet the claim language as construed because that through-hole cavity extends beyond the lower surface of contoured platform 110. In the second configuration, however, Gross describes “a cavity 186, having a cavity bottom 187 . . . defin[ing] an aperture, or alternatively, maybe an integral continuous surface formed of the same material” as the contoured platform 110. Id. 8:55–59. We find this second configuration meets the claim limitation “at least one trampoline recess does not protrude the lower stabilizer plug surface” because in this configuration at least one cavity 186 (trampoline recess) with cavity bottom 187 forming an integral continuous surface with platform 110, defines a blind-hole recess that does not protrude or extend beyond the bottom surface of platform 110 (the lower stabilizer plug surface). Claim 1 further requires “at least one projection extending outwardly from the lower stabilizer plug surface relative to the vertical axis . . . the at least one projection substantially underlies at least a portion of the at least one trampoline recess.” Claim 1 supra. As mentioned above, the Examiner asserts that claim 1 “does not recite any limitations that prevent the trampoline recess and the projection from being coaxial.” Answer 4. Relying on the first configuration of Gross’s cavity 186 discussed supra, the Examiner states that “in the case where cavity 186 is a recess without cavity bottom 187, at least the perimeter around cavity 186 would comprise a projection.” Id. However, we agree with Appellant that this proffered Appeal 2018-009172 Application 14/678,570 12 interpretation by the Examiner is unreasonable in light of the Specification and the recited claim language. 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.” In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (internal citation and quotations omitted). First, as discussed above, the Examiner’s reliance on the first configuration of Gross’s cavity 186 fails to meet the claimed at least one trampoline recess. Second, even if we accept that the perimeter of cavity 186 comprises a projection, it would be unreasonable to interpret that perimeter as substantially underlying a portion of itself. The claim language recites two different structures, a “trampoline recess disposed in the upper stabilizer plug surface” and a “projection extending outwardly form the lower stabilizer plug surface.” Claim 1 supra. The claim further defines the relationship between these structures, such that the “projection substantially underlies at least a portion of the at least one trampoline recess.” Id. Figures 11A and 11B, reproduced above, depict the distinction between trampoline recesses 406 and projections 408. Paragraph 41 of the Specification describes these different elements in relation to each other, and paragraph 47 describes projections 408 as having a cross-sectional shape, “for example, a circle, an oval, any regular or irregular polygon, a diamond, a peanut, a trefoil, a quatrefoil, a teardrop, one or a series of arcuate portions, any irregular cross-section and the like.” And, as Appellant points out, the Examiner’s erroneous “interpretation removes the benefit of the cooperative function of the projection in conjunction with the trampoline recess of claim Appeal 2018-009172 Application 14/678,570 13 1 that is provided by the projection underlying the trampoline recess.” Reply Br. 4; see Spec. ¶¶ 8, 44 (describing the purported benefit). Consequently, we find the Examiner’s interpretation of these two differing structures as being one and the same is inconsistent with the plain language of the claim when read in light of the Specification. As such, the Examiner has not shown that Gross discloses “at least one trampoline recess disposed in the upper stabilizer plug surface, and at least one projection extending outwardly from the lower stabilizer plug surface relative to the vertical axis, wherein the at least one trampoline recess does not protrude the lower stabilizer plug surface and each projection of the at least one projection substantially underlies at least a portion of the at least one trampoline recess,” as called for in claim 1. “[A]bsence from the reference of any claimed element negates anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986). Accordingly, we do not sustain the rejection of independent claim 1, and claims 2, 3, 5, 7–10, 15, and 18 which depend therefrom, as being anticipated by Gross. Obviousness Rejections Claims 6, 11–14, 16, 17, 19, and 20 The obviousness rejections of dependent claims 6, 11–14, 16, 17, 19, and 20 are predicated on the Examiner’s erroneous finding as to independent claim 1 discussed above. See Final Act. 12–16. Accordingly, we do not sustain the rejections of dependent claims 6, 11–14, 16, 17, 19, and 20 under 35 U.S.C. § 103 because the Examiner’s further reliance on Gross, Young- Chul, or Oorei fails to remedy that deficiency. Appeal 2018-009172 Application 14/678,570 14 CONCLUSION The rejection under 35 U.S.C. § 112(a) is reversed. The rejection under 35 U.S.C. § 112(b) is reversed. The rejection under 35 U.S.C. § 102(a)(1) is reversed. The rejections under 35 U.S.C. § 103 are reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1, 2, 4–20 112(a) Written Description 1, 2, 4–20 1, 2, 4–20 112(b) Indefiniteness 1, 2, 4–20 1, 2, 4, 5, 7– 10, 15, 18 102(a)(1) Gross 1, 2, 4, 5, 7– 10, 15, 18 6 103 Gross, Young- Chui 6 11–14, 16, 17 103 Gross 11–14, 16, 17 19, 20 103 Gross, Oorei 19, 20 Overall Outcome 1, 2, 4–20 REVERSED Copy with citationCopy as parenthetical citation