Cole Haan LLC

Patent Trials and Appeals BoardDec 9, 2021

2021004256 (P.T.A.B. Dec. 9, 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. 16/208,190 12/03/2018 Mattias Verfl 56503-180730 4427 21888 7590 12/09/2021 Thompson Coburn LLP One US Bank Plaza SUITE 3500 St. Louis, MO 63101 EXAMINER NGUYEN, UYEN T ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 12/09/2021 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): ipdocket@thompsoncoburn.com ipdocket@thompsoncoburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTIAS VERFL and JEFFREY MOKOS Appeal 2021-004256 Application 16/208,190 Technology Center 3700 Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and CARL M. DEFRANCO, Administrative Patent Judges. BAHR, 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 1–20. 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 Cole Haan LLC. Appeal Br. 2. Appeal 2021-004256 Application 16/208,190 2 CLAIMED SUBJECT MATTER Appellant’s invention is directed to shoe outsoles. Spec. ¶ 4. Of the pending claims, claims 1, 14, and 18 are independent; claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A shoe comprising an outsole extending from a heel end to a toe end and from a medial side to a lateral side, the outsole having a heel region, a midfoot region, a metatarsal region, and a toe region, the heel region extending longitudinally from the heel end to the midfoot region, the midfoot region extending longitudinally from the heel region to the metatarsal region, the toe region extending longitudinally from the toe end to the metatarsal region, the outsole having a medial side region, a central region, and a lateral side region, the medial side region extending transversely from the medial side to the central region, the lateral side region extending transversely from the lateral side to the central region, the central region extending transversely from the lateral side region to the medial side region, the outsole having a bottom surface and a top surface, the bottom surface of the outsole defining a concavity extending longitudinally within the midfoot region and the metatarsal region, the concavity extending transversely within the central region, the concavity having a width at its widest point that is between 45% and 55% the width of the outsole at that point. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Sokolowski US 2011/0209295 A1 Sept. 1, 2011 Henderson US 2015/0101215 A1 Apr. 16, 2015 Bjornson US 2019/0053571 A1 Feb. 21, 2019 Appeal 2021-004256 Application 16/208,190 3 REJECTIONS Claims 1–11 and 14–20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bjornson and Sokolowski. Claims 12 and 13 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bjornson, Sokolowski, and Henderson. OPINION Obviousness—Bjornson and Sokolowski Claims 1–11 The Examiner finds that Bjornson discloses a shoe comprising an outsole (sole element 300) having, in pertinent part, a bottom surface “defining a concavity extending longitudinally within the midfoot region and the metatarsal region (fig 6B and 6C), the concavity extending transversely within the central region (the arch region extending transversely from medial side to the lateral side).” Final Act. 3. In other words, it appears that the Examiner reads the “concavity” of claim 1 on Bjornson’s deformable longitudinal arch region, which comprises medial longitudinal cambered arch 305 in a medial side of sole element 300 and lateral longitudinal cambered arch 310 in a lateral side of the sole element 300, with the intermediate region between the medial and lateral sides having a cambered arch that blends between the medial and lateral arch shapes. See Bjornson ¶¶ 48, 49, 50; Figs. 6B, 6C. Bjornson’s arch region does not satisfy the limitation that the concavity have “a width at its widest point that is between 45% and 55% the width of the outsole at that point” because it extends all the way from the medial side to the lateral side of sole element 300. See Appeal Br. 18 (Claims App.); Bjornson ¶ 48 (describing the arch region as having a Appeal 2021-004256 Application 16/208,190 4 cambered arch that blends between the medial and lateral arch shapes). The Examiner acknowledges that “Bjornson does not clearly show the concavity having a width at its widest point that is between 45% and 55% the width of the outsole at that point,” but finds that, “in the same field of endeavor, Sokolowski teaches the concavity (fig 5, the concavity at the interior void 135) having a width at its widest point that is between 45% and 55% the width of the outsole at the point.” Final Act. 4 (citing Sokolowski ¶ 53 and noting that “the ratio between the width of the sole and the width across the void is 2:1”). The Examiner reasons that it would have been obvious “to modify the width of the concavity of Bjornson at its widest point [so] that [it] is between 45% and 55% the width of the outsole at that point as taught by Sokolowski for the benefit of enhancing cushioning and control[ling] foot motions.” Final Act. 4. Appellant argues, inter alia, that Sokolowski’s midsole void 135 is irrelevant to the invention recited in Appellant’s claim 1, and that the Examiner does not adequately explain why one would have been prompted to modify Bjornson to arrive at the outsole recited in claim 1. Appeal Br. 6, 9. For the reasons that follow, we agree with Appellant that the Examiner does not establish a sustainable case that the subject matter of claim 1, particularly a shoe as claimed including an outsole having a bottom surface “defining a concavity extending longitudinally within the midfoot region and the metatarsal region, the concavity extending transversely within the central region, the concavity having a width at its widest point that is between 45% and 55% the width of the outsole at that point,” would have been obvious. See Appeal Br. 18 (Claims App.). Appeal 2021-004256 Application 16/208,190 5 As discussed above, Bjornson’s midfoot arch region comprises medial longitudinal cambered arch 305 in a medial side of sole element 300 and lateral longitudinal cambered arch 310 in a lateral side of the sole element 300, with the intermediate region between the medial and lateral sides having a cambered arch that blends between the medial and lateral arch shapes. Longitudinal cambered arches 305 and 310 of Bjornson’s midfoot arch region are “configured to substantially conform to the shape of the unloaded arch region of a foot.” Bjornson ¶ 49. The function of Bjornson’s midfoot arch region is to “conformingly flatten[] and splay[] (e.g., elongate[] in the longitudinal direction) along with the arch of the foot [upon loading (e.g., upon the foot striking the ground during a walking or running gait)], with the arch springing back to its curved unloaded configuration upon the foot unloading (e.g., leaving the ground after the footstrike event).” Bjornson ¶ 49. Sokolowski’s interior void 135 is defined in midsole element 130 in heel region 103. Sokolowski ¶¶ 41, 44, 45; Figs. 2, 5. Sokolowski does not expressly explain the function of void 135, but the function of void 135, like that of bores 136a-e, appears to be to vary the compressibility/stability properties of the midsole in the location of the void. See Sokolowski ¶¶ 5, 6, 44, 49, 50. Sokolowski’s void 135 is not located in, or at least does not extend substantially into, the arch area of the sole and is not pertinent to causing a flattening or splaying of the sole along the arch of the foot during loading or a springing back during unloading. Thus, it is not clear why Sokolowski’s teachings regarding the width of void 135 relative to the width of heel region midsole element 130 would be at all instructive in regard to the construction or configuration of Bjornson’s deformable longitudinal arch Appeal 2021-004256 Application 16/208,190 6 region, which extends across the entire width of Bjornson’s sole element 300, with the intermediate region between the medial and lateral sides having a cambered arch that blends between medial longitudinal cambered arch 305 in a medial side of sole element 300 and lateral longitudinal cambered arch 310 in a lateral side of the sole element 300. Bjornson ¶ 48. More particularly, it is not apparent why a person having ordinary skill in the art would have been prompted by the combined teachings of Bjornson and Sokolowski’s void 135 to modify the width of the longitudinal arch region of Bjornson to be between 45% and 55% the width of the outsole at its widest point. The Examiner’s articulated reason for the modification is that this would provide “the benefit of enhancing cushioning and control[ling] foot motions” (Final Act. 4), but the Examiner does not adequately explain, nor is it apparent, why modifying Bjornson’s arch region so that it has a width at its widest point that is between 45% and 55% the width of the outsole at that point, rather than extending across the entire width of the sole element in that region, would enhance cushioning or better control foot motions. The Examiner finds that Appellant does not point out the criticality of the particular width percentage claimed. Ans. 4. Appellant’s Specification discloses that “the concavity . . . , depression, channel, or the like” is wider than a typical groove or sipe, and, thus, “[r]ather than providing flexibility or traction as a typical groove or sipe, . . . provides the flex and/or restorative force described,” for example, in paragraph 22 of the Specification, “and/or otherwise increases the comfort of the wearer.” Spec. ¶ 33. The Specification then discloses: Appeal 2021-004256 Application 16/208,190 7 For example and without limitation, the channel has a width at its widest point that is at least between 20% and 30% the width of the outsole 22 at that point. More preferably, the channel has a width at its widest point that is at least between 30% and 50% the width of the outsole 22 at that point. Still more preferably, the channel has a width at its widest point that is at least between 50% and 80% the width of the outsole 22 at that point. In some embodiments, the channel has a width as described above not only at the widest point but for at least between 20% and 30% of the longitudinal length of the outsole 22. More preferably, the above described widths extend for at least between 30% and 50% of the longitudinal length of the outsole 22. Spec. ¶ 33. The Specification also discloses that the concavity “extends laterally within the central region 44,” which “extends laterally between the lateral side region and the medial side region for a substantial distance”2 and “has a width greater than a sipe, groove, or other feature inset into the outsole 22.” Spec. ¶ 23. Based on the aforementioned description of the concavity in Appellant’s Specification, one of ordinary skill in the art would understand that the concavity extends a substantial distance laterally across the width of the outsole, within the central region thereof, but does not extend to the medial or lateral side of the outsole, in order to provide the desired spring-like absorption or dampening of impact and restorative force discussed in paragraph 22 of the Specification. Thus, although we agree with the Examiner that Appellant’s Specification does not disclose, much less demonstrate, any criticality to the particular numerical width range claimed (i.e., between 45% and 55% the width of the outsole at its widest 2 Appellant’s Specification defines “the term region [as referring] to a margin or area as opposed to the term end.” Spec. ¶ 23. Appeal 2021-004256 Application 16/208,190 8 point), the Specification indicates criticality to the concavity being wider than a typical groove or sipe and suggests an intention for the concavity to have a width at its widest point that is less than the width of the outsole at that location (i.e., the concavity extending less than the full width of the outsole). As discussed above, the Examiner does not adequately explain, nor is it apparent, why modifying Bjornson’s arch region so that it has a width at its widest point that is less than the width of the outsole at that point, much less a width between 45% and 55% the width of the outsole at its widest point as claimed, rather than extending across the entire width of the sole element in that region, would enhance cushioning or better control foot motions. The Examiner directs our attention to interior void 315 extending transversely in Bjornson’s midsole as shown in Figure 6E. Ans. 3–4. To the extent that the Examiner intends to rely on Bjornson’s void 315, alone, as the claimed “concavity,” void 315 as shown in Figures 6A, 6E, and 6F would not satisfy the limitation in claim 1 that the concavity extend “longitudinally within the midfoot region and the metatarsal region.” Rather, as illustrated in Figure 6A, void 315 extends only within the midfoot region, terminating rearward of the metatarsal region. To the extent that the Examiner intends to rely on void 315 in combination with the midfoot arch region (the longitudinal cambered arch), this position suffers from the shortcoming discussed above. Although void 315 may define the deepest portion of a concavity comprising the cambered arch and void 315, even if one were to modify the width of Bjornson’s void 315 in view of Sokolowski, the concavity (i.e., the longitudinal cambered arch portion) would still extend transversely across the entire width of the sole element, thereby Appeal 2021-004256 Application 16/208,190 9 having a width at its widest point that is 100% of the width of the sole element at this point. Further, the Examiner points out that “Bjornson also teaches one embodiment of the invention may include cambered arches in other portions of the foot and or in other configurations, in addition to, or in place of longitudinal cambered arches in the midfoot region.” Ans. 4 (citing Bjornson ¶ 52). Bjornson indeed teaches that the sole “may include cambered arches in other portions of the foot or in other configurations.” Bjornson ¶ 52. Bjornson further discloses one embodiment of the sole element comprising transverse cambered arch 400 in forefoot region 155 “to support and conformingly adapt[] to a deformation of the forefoot (for example a transverse flattening and splaying of the forefoot region at and around the metatarsal heads).” Bjornson ¶ 52; Fig 6D. Transverse cambered arch 400 has a curved profile when unloaded and deflects downward during loading “to conformingly flatten and splay along with the metatarsal head region of the foot.” Bjornson ¶ 52. This transverse cambered arch in the particular embodiment that Bjornson discusses is disposed in the forefoot region of the sole element and does not extend “longitudinally within the midfoot region,” as called for in claim 1. Appeal Br. 18 (Claims App.). The Examiner does not adequately explain why it would have been obvious, in view of Bjornson’s broad teaching of “cambered arches in other portions of the foot or in other configurations” of the sole, or the particular embodiment of such a cambered arch (transverse cambered arch 400) in the forefoot region, to provide a transverse cambered arch extending “longitudinally within the midfoot region and the metatarsal Appeal 2021-004256 Application 16/208,190 10 region,” with a width between 45% and 55% the width of the outsole at its widest point, as called for in claim 1. Appeal Br. 18 (Claims App.). For the above reasons, the Examiner does not set forth the requisite factual findings and reasoning to establish a sustainable case of obviousness of the subject matter of claim 1. Accordingly, we do not sustain the rejection of claim 1 or its dependent claims 2–11 as being unpatentable over Bjornson and Sokolowski. Claims 14–17 In addressing claim 14, the Examiner finds that Bjornson discloses, in Figures 6A through 6F, an outsole having a depression within the central region and the midfoot region thereof, “the depression having [a] curved shape from lateral side to medial side.” Final Act. 7. The Examiner acknowledges that “Bjornson does not clearly show the depression having a width at its widest point that is between 45% and 55% the width of the outsole at that point,” but determines that it would have been obvious “to modify the width of the depression of Bjornson at its widest point [so] that [it] is between 45% and 55% the width of the outsole at that point as taught by Sokolowski for the benefit of enhancing cushioning and control[ling] foot motions.” Final Act. 7. Aside from referencing Figures 6A through 6F, the Examiner does not specify what feature of Bjornson’s sole element 300 corresponds to the “depression” of claim 14. However, the Examiner’s annotated version of Bjornson’s Figure 6E on page 8 of the Final Office Action, provided by the Examiner in addressing claim 15, which depends from claim 14, indicates that the Examiner relies on the combination of the midfoot longitudinal cambered arch and void 315 as corresponding to the depression. In Appeal 2021-004256 Application 16/208,190 11 particular, the Examiner’s use of arrows to show the depth (or height) of the depression in the central portion (i.e., within void 315) and the depths of the depression in the medial and lateral portions of the longitudinal cambered arch (in the region between void 315 and medial longitudinal cambered arch 305 and in the region between void 315 and lateral longitudinal cambered arch 310) suggests that the Examiner relies on the depression defined by the arch and void 315 relative to the ground contacting portions of the sole element.3 The Examiner’s rejection of claims 14–17 thus suffers from the deficiency discussed above in regard to the rejection of claim 1. More specifically, although void 315 may define the deepest portion of a depression comprising the cambered arch and void 315, even if one were to modify the width of Bjornson’s void 315 in view of Sokolowski, the depression would still extend across the entirety of the width of the sole element, thereby having a width at its widest point that is 100% of the width 3 To the extent that the Examiner may be relying on some other feature, or combination of features, illustrated in Bjornson’s Figures 6A through 6F as the “depression” of claim 14, it is not the Board’s place to speculate on how the Examiner reads claim 14 on the structure of Bjornson. A rejection must be set forth in sufficiently articulate and informative manner as to meet the notice requirement of 35 U.S.C. § 132, such as by identifying where or how each limitation of the rejected claims is met by the prior art references. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011); see also 37 C.F.R. § 1.104(c)(2) (“When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.”); In re Stepan, 660 F.3d 1341, 1345 (Fed. Cir. 2011) (explaining that it is the PTO’s obligation “to provide prior notice to the applicant of all ‘matters of fact and law asserted’ prior to an appeal hearing before the Board”). Appeal 2021-004256 Application 16/208,190 12 of the sole element at this point. The Examiner does not adequately explain, nor is it apparent, why modifying Bjornson’s arch region so that it has a width at its widest point that is between 45% and 55% the width of the outsole at that point, rather than extending across the entire width of the sole element in that region, would enhance cushioning or better control foot motions. See Appeal Br. 12 (arguing the Examiner fails to explain why the proposed modification would have been obvious in view of Sokolowski). In responding to Appellant’s arguments against the rejection of claim 14, just as in the Examiner’s response to Appellant’s arguments against the rejection of claim 1, the Examiner points out that “Bjornson also teaches one embodiment of the invention may include cambered arches in other portions of the foot and or in other configurations, in addition to, or in place of longitudinal cambered arches in the midfoot region.” Ans. 7 (citing Bjornson ¶ 52). However, the Examiner does not adequately explain why it would have been obvious, in view of Bjornson’s broad teaching of “cambered arches in other portions of the foot or in other configurations” of the sole, or the particular embodiment of such a cambered arch (transverse cambered arch 400) in the forefoot region, to provide a cambered arch within “the midfoot region” as called for in claim 14. Appeal Br. 20–21 (Claims App.). Accordingly, we do not sustain the rejection of claims 14–17 as being unpatentable over Bjornson and Sokolowski. Claim 18 The Examiner finds that Bjornson discloses a shoe comprising an outsole having a bottom surface extending upward from the medial and lateral side regions into the central region, and upward from the metatarsal Appeal 2021-004256 Application 16/208,190 13 and heel regions into the midfoot region, to define a depression. Final Act. 9 (citing Bjornson, Figs. 6B, 6D, 6E). The Examiner finds that Bjornson does not explicitly disclose the depression being defined at least partially by three inflection points as called for in claim 18 or the depression having a width at its widest point that is between 45% and 55% of the width of the outsole at that point. Final Act. 9–10. Referring to an annotated Figure 6E on page 10 of the Final Office Action, the Examiner reasons that it would have been obvious “to recognize that the depression further being defined at least partially by three inflection points about which the bottom surface curves as it extends laterally for the benefit of providing a more conforming adaptive flexion during loading and unloading of the foot.” Final Act. 9. As evident from the Examiner’s annotated Figure 6E, the Examiner relies on the depression defined by the arch and void 315 relative to the ground contacting portions of the sole element as the “depression” of claim 18. The Examiner’s rejection of claim 18 thus suffers from the deficiency discussed above in regard to the rejection of claims 1 and 14. Moreover, the Examiner does not cite any evidence to support the finding that those skilled in the art would recognize that defining a depression in Bjornson’s sole element 300 by a curved bottom surface, as drawn in by the Examiner in the annotated version of Figure 6E, would provide a more conforming adaptive flexion during loading and unloading of the foot. See Appeal Br. 15 (arguing that “[t]he [E]xaminer’s addition of a curved line to Figure 6E of Bjornson applies impermissible hindsight”). Accordingly, we do not sustain the rejection of claim 18, or its dependent claims 19 and 20, as being unpatentable over Bjornson and Sokolowski. Appeal 2021-004256 Application 16/208,190 14 Obviousness—Bjornson, Sokolowski, and Henderson In rejecting claims 12 and 13, which depend from claim 1, the Examiner relies on Henderson for its teaching of substantially rectangular indentations (i.e., traction elements) extending upward from the bottom surface of the sole element within the medial and lateral side regions alternating with a plurality of sipes. Final Act. 11–12. The Examiner does not set forth any additional findings or reasoning that would remedy the aforementioned shortcomings of the rejection of claim 1. Accordingly, we do not sustain the rejection of claims 12 and 13 as being unpatentable over Bjornson, Sokolowski, and Henderson. CONCLUSION The Examiner’s rejections of claims 1–20 under 35 U.S.C. § 103 are REVERSED. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–11, 14–20 103 Bjornson, Sokolowski 1–11, 14–20 12, 13 103 Bjornson, Sokolowski, Henderson 12, 13 Overall Outcome 1–20 REVERSED