Ex Parte 7181866 et al

Patent Trial and Appeal BoardDec 28, 2012

95001320 (P.T.A.B. Dec. 28, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,320 03/03/2010 7181866 041463-5049 1486 13992 7590 12/28/2012 NDQ Special Reexam Group 1000 Louisiana Street, Fifty-Third Floor Houston, TX 77002 EXAMINER WEHNER, CARY ELLEN ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 12/28/2012 PAPER 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. PTOL-90A (Rev. 04/07) 1 UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ K-SWISS INC. Requester, Respondent v. Patent of GLIDE'N LOCK GMBH Patent Owner, Appellant ____________________ Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B21 Technology Center 3900 ____________________ Before JEFFREY B. ROBERTSON, DANIEL S. SONG and JOSIAH C. COCKS, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL 1 Issued February 27, 2007 to Braunschweiler (hereinafter "'866 patent"). Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 2 STATEMENT OF THE CASE The Patent Owner appeals under 35 U.S.C. Â§Â§ 134 and 315 (2002) from a Final Rejection of claims 1-11. We have jurisdiction under 35 U.S.C. Â§Â§ 134 and 315 (2002). In addition to the Appeal Brief ("App. Br."), the Patent Owner relies on a Rebuttal Brief ("Reb. Br.") and declarations of Mssrs. Bernhard, Corigliano and Sage in support of patentability. The Requester relies on its Respondent Brief ("Resp. Br.") and the declaration of Mr. Frederick in support of the Examiner's rejections. An oral hearing with the representatives of the Patent Owner and the Requester was held before the Patent Trial and Appeal Board on November 14, 2012, a transcript of which will be entered into the electronic record in due course. THE INVENTION The claims of the '866 patent is directed to an outsole for a shoe. Independent claim 1 and dependent claims 8 and 11 read as follows, claim 11 having been added during reexamination (App. Br.; Claims App'x., emphasis added): 1. An outsole for a shoe, the shoe disposed along a longitudinal axis in a longitudinal direction parallel to a ground surface in use, the outsole comprising: a resilient member having an inner surface, an outer surface and, with respect to a direction perpendicular to the longitudinal direction, an upper portion and a lower portion, the outer surface of the lower portion proximate the ground surface in use, the resilient member having first and second configurations, Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 3 the first configuration having the inner surface of the upper portion spaced from the inner surface of the lower portion, the resilient member elastically absorbs shoe loads oblique to the perpendicular direction by relative motion in the longitudinal direction between the upper portion and the lower portion in the first configuration, the second configuration having the inner surface of the upper portion engaged with the inner surface of the lower portion due to absorbed shoe loads, the engagement substantially preventing relative motion in the longitudinal direction between the upper portion and the lower portion. 8. The outsole according to claim 1, wherein the engagement comprises positive engagement. 11. The outsole according to claim 3, wherein the resilient member comprises a profile like hollow element that contains a tubular part. Independent claim 9 is similar to claim 1, but is directed to a device for wearing on a foot including an outsole. Findings of Fact Regarding the '866 Patent 1. A. Figures 1a) to 1c) of the '866 patent are reproduced below. Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 4 Figure 1a) shows a side view of a shoe 1 according to a first embodiment wherein the shoe is not subjected to a load, Figure 1b) shows the shoe while being subjected to a transversely forward load, and Figure 1c) shows the shoe while pushing off (col. 2, ll. 43-46; Figs. 1a)-1c)). B. The '866 patent teaches that the objective of the disclosed invention is to provide "an outsole with a simple design which makes it possible to eliminate the above-described floating effect and can also be realized sufficiently soft and resilient in the tangential direction." (Col. 1, ll. 50-54). C. The '866 patent states "[t]he outsole 1 is formed by a plurality of profile-like hollow elements 3 that contain tubular parts 3.1 and are fixed to the underside of an intermediate sole 4 of the running shoe with webs 3.2 that are integrally formed thereon, e.g., by means of bonding." (Col. 3, ll. 11-16). D. According to the '866 patent, when the shoe 2 is loaded as it contacts the ground, the tubular parts 3.1 are "completely compressed after an initial elastic absorption of the load in the form of a vertical and horizontal deformation. This leads to a frictional Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 5 engagement between their upper shell 3.1.1 and their lower shell 3.1.2 (see FIG. 3)." (Col. 3, ll. 29-37). E. The '866 patent further states: This frictional engagement generates such a high resistance to an additional deformation of the tubular parts 3.1 that they practically can only be additionally deformed by the remaining elasticity of the material, i.e., to a negligible degree. â€¦ In addition, the runner is able to push off from the position shown in FIG. 2 for the next step as illustrated in FIG. 1c) without any loss in distance, namely because the previously described frictional engagement between the tubular parts 3.1 practically makes it impossible for these parts to horizontally deform to a noteworthy degree in the direction of the load that occurs while pushing off and is indicated by the arrow P2. (Col. 3, ll. 37-53). F. Figure 7 of the '866 patent is reproduced below. Figure 7 shows a partially sectioned representation of an outsole 9 according to another embodiment (col. 3, ll. 1-2; col. 5, ll. 13-18; Fig. 7). Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 6 G. The embodiment of Figure 7 is described as having "toothing" between the upper layer 9.1 and the lower layer 9.2 (col. 5, ll. 17- 18; Fig. 7). H. In discussing Figure 7 as an example, the '866 patent states "[i]nstead of producing a frictional engagement as in the previously described embodiments, it would be possible to alternatively or additionally produce a positive engagement as shown[.]" (Col. 5, ll. 13-17). I. The '866 patent further states "[f]rictional engagement means and positive engagement means may be utilized individually or in combination." (Col. 5, ll. 24-26). THE REJECTIONS The prior art relied upon by the Examiner in rejecting the claims is: Inohara US 4,523,393 Jun. 18, 1985 Takahashi Japan S49-96158 Dec. 9, 1972 (citations to the English translation of record) Pagani GB 2001843 Feb. 14, 1979 Szentes WO 90/00021 Jan. 11, 1990 Okabe Japan H07-284403 Oct. 31, 1995 (citations to the English translation of record) The Examiner rejected the various claims as follows: 1. Claims 1-5 and 8-11 under 35 U.S.C. Â§ 102(b) as anticipated by Okabe. Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 7 2. Claims 1, 2 and 8-10 under 35 U.S.C. Â§ 102(b) as anticipated by Szentes. 3. Claims 1-11 under 35 U.S.C. Â§ 103(a) as being unpatentable over Pagani in view of Szentes. 4. Claims 1-11 under 35 U.S.C. Â§ 103(a) as being unpatentable over Takahashi in view of Szentes. 5. Claims 1-11 under 35 U.S.C. Â§ 103(a) as being unpatentable over Inohara in view of Szentes. 6. Claim 11 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. We AFFIRM-IN-PART. ISSUES The following issues have been raised in the present appeal. 1. Whether the Examiner erred in finding that Okabe discloses a resilient member having a second configuration wherein the inner surfaces of the upper and lower portions engage to substantially prevent relative motion. 2. Whether the Examiner erred in finding that Szentes discloses a resilient member having a second configuration wherein the inner surfaces of the upper and lower portions engage to substantially prevent relative motion. Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 8 3. Whether the Examiner erred in concluding that the claims would have been obvious based on the combination of Pagani and Szentes. 4. Whether the Examiner erred in concluding that the claims would have been obvious based on the combination of Takahashi and Szentes. 5. Whether the Examiner erred in concluding that the claims would have been obvious based on the combination of Inohara and Szentes. 6. Whether the Examiner erred in concluding that claim 11 is indefinite. 7. Whether the Examiner erred in denying entry of an amendment. 8. Whether the Examiner erred in finding the declarations submitted by the Patent Owner not commensurate with the scope of the claims. PRINCIPLES OF LAW Claim Interpretation Claims are to be given their broadest reasonable interpretation consistent with the specification, reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). This is the standard for claim interpretation in both original examination and re- examination. See In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984). Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 9 Claims are in compliance with 35 U.S.C. Â§ 112, second paragraph, if "the claims, read in light of the specification, reasonably apprise those skilled in the art both of the utilization and scope of the invention, and if the language is as precise as the subject matter permits." Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385 (Fed. Cir. 1986); see also In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) ("[T]he definiteness of the language employed must be analyzed-not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art."). Anticipation "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). Obviousness "[P]atent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Court also noted that the "factfinder should be aware . . . of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning." Id. at 421. "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 10 from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). In this regard, the entirety of the reference must be considered. In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) ("It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art."). ANALYSIS AND ADDITIONAL FINDINGS OF FACT We address the various issues raised in the appeal infra, but in an order that differs from that presented by the parties. Entry of Amendment The Patent Owner argues that the Examiner's denial of entry of its claim amendments filed on November 30, 2010 was improper based on two different grounds (App. Br. 25-29). However, the proper recourse for such matters is by petition to the Director as such actions of the Examiner are not within our purview. In re Watkinson, 900 F.2d 230, 232-33 (Fed. Cir. 1990) (The Board has no jurisdiction for matters within the discretion of the examiner and not tantamount to a rejection of claims). We further observe that the Patent Owner did, in fact, petition this matter (see Petition Under 37 C.F.R. Â§1.181 filed May 25, 2011), and received a decision (see Decision on Patent Owner's Petition mailed June 14, 2011). Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 11 Claim Construction of "Oblique" Claim construction of the limitation "elastically absorbs shoe loads oblique to the perpendicular direction" was argued by the Patent Owner in its Appeal Brief stating that "oblique to the perpendicular direction" must be construed to mean laterally oblique as shown in Fig. 2B instead of merely forward component of the load which the Patent Owner corresponds to "transversely forward load" (App. Br. 10-11). However, during the Oral Hearing, the representative of the Patent Owner took a contrary position and conceded that according to the specification of the '866 patent, the term "oblique" should be broadly interpreted to encompass any angle offset from the vertical in the longitudinal direction as well as the lateral direction.2 2 During the Oral Hearing, the Patent Owner's representative, Mr. Petri, in response to request for clarification the position of the Patent Owner as to the meaning of the limitation "oblique" stated: Well, I -- Iâ€™m right now tracking I think what the third-party requester had pointed out in their brief that, okay, letâ€™s focus on the oblique loads that are in the longitudinal direction. I think oblique, if you read the specification, oblique is broad enough to cover whether itâ€™s a longitudinal -- if thereâ€™s an angle to the longitudinal direction or lateral direction, or maybe even any other direction. Itâ€™s just something off of perpendicular. So when youâ€™re running, when your foot strikes the ground if youâ€™re going around a curve, for instance, you will have both a longitudinal force vector, a lateral force vector, and the vertical force vector. Those will combine to have an oblique load. And so I think in the context of this particular claim element, which is focusing on the relative motion in a longitudinal direction, we can focus on the oblique loads that are formed by the foot striking the ground in the longitudinal direction. But this doesnâ€™t exclude forces also being elastically absorbed that are caused by the foot striking the ground in a different direction. Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 12 Thus, the Patent Owner's various arguments presented in the Appeal Brief directed to, and deriving from, the more limited construction of the term "oblique" initially advocated, are moot. Indefiniteness of Claim 11 The Examiner rejected claim 11 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. The Examiner states that "it is unclear what a 'profile like hollow element' is" and that this term "makes no sense at all." (RAN 21). According to the Examiner, the claim includes elements not disclosed by its use of the phrase "profile like" so as to make the scope of the claim unascertainable (RAN 21). The Examiner also argues that "it is unclear how the hollow element 'contains' a tubular part" and that because claim 11 depends from claim 3 which recites that "the resilient member comprises a plurality of resilient members," it is unclear how the resilient member can comprise a "profile like hollow element that contains a tubular part." (RAN 21). The Patent Owner disagrees and asserts that claim 11 is definite because the language is explicitly supported by the specification and shown in the original drawings Figures 2a) and 2b). (App. Br. 22-23; see also FFs 1A, 1C). The Patent Owner argues that "Figs. 2a)-2b) clearly show the profile-like nature of the hollow elements 3 and their respective tubular parts 3.1" so that a person of ordinary skill in the art would readily understand the (Oral Hearing Transcript to be entered into the electronic record in due course). Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 13 limitation to "correspond to the elongated elements fixed to the underside of the sole." (App. Br. 23; see also Rebuttal Br. 8-11). We agree with the Patent Owner that claim 11 is not indefinite. A "profile" is a view or contour of an object3 and does not describe a structural object so that its applicability to defining the illustrated structures shown is not evident. The inclusion of the qualifier "like" does not help, and makes understanding the claim even more difficult. However, in determining definiteness, our inquiry is not just limited to the language of the claim. Rather, the claims are "read in light of the specification" to determine whether it reasonably apprises those skilled in the art as to its meaning and scope. Hybritech, 802 F.2d at 1385; see also In re Moore, 439 F.2d 1235. In this regard, we observe that the specification of the '866 patent also refers to the "profile-like hollow element 3" as a "hollow element 3" in numerous instances (see, e.g., col. 3, ll. 17-29). Thus, the specification of the '866 patent makes clear that the structural recitation "profile like hollow element" is synonymous with "hollow element," the meaning of which is clear when viewed in conjunction with the figures of the '866 patent. Furthermore, in contrast to the Examiner's conclusion, our opinion is that the limitation stating that the hollow element "contains a tubular part" is not indefinite because the specification of the '866 patent also makes clear that the hollow element 3 is comprised of two separate parts, namely, tubular parts 3.1 and webs 3.2 (see FF 1C). In this context, it is clear that the meaning of the term "contains" applicable to claim 11 is "2. to have as 3 Random House Webster's College Dictionary (1992) defines "profile" as "3. an outlined view â€¦; 4. an outline of an object â€¦; 9. the look or general contour of something â€¦.". Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 14 contents or constituent parts; comprise; include." Random House Webster's College Dictionary (1992). Hence, the use of the term "contains" does not render claim 11 indefinite. Finally, with respect to the dependency of claim 11, the recitation that the resilient member "comprises a plurality of resilient members" in claim 3 does not render the claim 11 indefinite. Claim 3 is merely directed to the number of resilient members while claim 11 is directed to the shape of the resilient member. Because claim 11 is dependent on claim 3 and refers to the "resilient member," the shape recited in claim 11 applies to the resilient member of claim 3, and correspondingly, to the "plurality of resilient members" recited therein. Thus, in view of the above, we do not sustain the Examiner's indefiniteness rejection of claim 11. Rejection of Claims 1-5 and 8-11 as Anticipated by Okabe The Examiner rejects claims 1-5 and 8-11 as anticipated by Okabe (RAN 11, 22). Findings of Fact Regarding Okabe 2. A. Okabe discloses a sole structure for a footwear (Title; Abstract). Figures 1, 2 and 4 are reproduced below. Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 15 Figure 1 of Okabe shows a lateral cross sectional view of a walking shoe having an outsole 2, midsole 3 and cavities 6a, 6b formed there between (Pg. 4, col. 2). Figure 2 is a plan view of the outsole of Figure 1 (Id.). Figure 4 is a cross sectional view of the cavity 6a in which a load is applied to the shoe sole (Id.). B. Okabe discloses that the sole includes "multiple circular truncated cone-shaped rubber pins 8" that "protrude upwardly from the bottom surface of the outsole 2." (Â¶ (0021)). C. With respect to the rubber pins 8, Okabe further specifically states: In this case, since each rubber pin 8 has a circular truncated cone shape, the elastic deformation of the rubber pins 8 does Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 16 not increase linearly in response to increases in load. In other words, when the load is small, the top parts of the rubber pins 8 elastically deform and bear most of the load, and as the load increases, the bases of the rubber pins gradually begin to elastically deform, which makes it possible to maintain a reasonable level of cushioning to accommodate a wide spectrum of changes in load ranging from small to large loads. (Â¶ (0022)). D. In describing the problem addressed by the disclosed invention, Okabe states "[a]lthough establishing airtight cavities inside the shoe sole yields advantages such as a soft air cushion effect and a close fit between the sole and the unevenness of the ground, inadequate support in the horizontal direction produces a feeling of instability as if stepping on an air cushion." (Â¶ (0006)). E. Okabe discloses that in Figure 4, "the bottom surface of the midsole 3 descends due to an increase in load and touches the tops of the rubber pins 8 â€¦ and the characteristic instability experienced with the air cushion effect alone is improved as a result." (Â¶ (0022)). F. Okabe also states "[t]he elasticity of each rubber pins 8 is maintained even after the midsole 3 reaches its limit of elastic deformation, and the midsole 3 has a thickness that exceeds the depth of each of the recessed parts 7a and 7b of the outsole 2 in each region, so the upward thrusting force of the rubber pins 8 is transmitted to the bottom of the foot of the wearer after it is dispersed by the midsole 3, which prevents the comfort from diminishing." (Â¶ (0023)). Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 17 G. Okabe further states that "[i]n FIG. 2, it is shown that airtight cavities 6a and 6b, whose planar shapes are roughly elliptical, are established one cavity each in two locations â€¦." (Â¶ (0024)). Analysis The Examiner finds that pins 8 of Okabe define the inner surface of the lower portion of the outsole, and function to contact and engage the inner surface of the upper portion of the outsole to prevent relative motion therebetween (RAN 12, 25). According to the Examiner, Okabe discloses an outsole wherein the pins provide both frictional engagement with the inner surface of the upper portion as recited in dependent 2, as well as positive engagement as recited in dependent claim 9 (RAN 12). The Requester agrees and argues that Okabe discloses relative motion between the pins 8 and the midsole 3 when they are spaced apart in a first configuration but when some "sufficient load" is applied, the pins and the midsole would be frictionally engage so as to "generate[] such a high resistance to additional deformation that they practically can only be additionally deformed by the remaining elasticity of the material, i.e., to a negligible degree." (Resp. Br. 5). The Patent Owner disagrees and argues that the claims require a second configuration which encompasses the moment that the runner pushes off and at this moment, the recited resilient members "substantially prevent[] relative motion in the longitudinal direction between the upper portion and the lower portion." (App. Br. 6, 7, 10). According to the Patent Owner, the rubber pins 8 of Okabe which allow deformity upon loading, also inherently Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 18 allow for deformity in the recited second configuration when the runner pushes off so that the outsole of Okabe does not "substantially prevent relative motion in the longitudinal direction" as recited in the rejected claims (App. Br. 10). We disagree with the Patent Owner. We first observe that the claim states "substantial[]" prevention of relative motion, not absolute prevention. Indeed, the specification of the '866 patent makes clear that while the frictional engagement generates high resistance to additional deformation, a negligible degree of deformation can occur via "the remaining elasticity of the material." (FF 1E). Correspondingly, in applying the broadest reasonable construction in view of the specification, the "relative motion in the longitudinal direction" that is recited in the claims corresponds to relative motion of non-negligible magnitude such as that which causes the "floating effect" problem described in the specification of the '866 patent, but does not encompass small, relative motion of negligible magnitude that are not "noteworthy." (FF 1A, 1E). Okabe clearly establishes that the rubber pins 8 contact the midsole 3 as the sole is subjected to loads during use (FF 2A, 2C, 2E). While Okabe does disclose that the rubber pins 8 deform and that the elasticity of each rubber pin 8 is maintained (FF 2A-2C, 2F), it also specifically discloses the load required for further deformation increases by virtue of its truncated cone shape (FF 2C). In other words, the load bearing capacity progressively increases as the rubber pin 8 is deformed. Furthermore, Okabe identifies a similar problem as that of the claimed invention, namely, the feeling of instability resulting from providing a cushioned effect, and teaches that this Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 19 instability is improved by the provision of the rubber pins 8 disclosed therein (FF 2D, 2E). Thus, in contrast to the assertions of the Patent Owner, the Okabe reference fairly discloses that relative motion between the rubber pins 8 and the midsole 3 is "substantially" prevented so as to not be "noteworthy" when the disclosed sole is used (which would include push-off), and any additional deformation by the rubber pins 8 is due to "the remaining elasticity of the material, i.e., to a negligible degree" in the manner explained in the specification of the '866 patent. To the extent that the Patent Owner may be arguing that the '866 patent is the first in the art to recognize the desirability of such operation wherein the upper portion and the lower portion of a resilient member engage each other so as to substantially prevent relative motion, such recognition is inadequate to establish novelty. See In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979) ("[The Appellants] are, in effect, arguing that a structure suggested by the prior art, and, hence, potentially in the possession of the public, is patentable to them because it also possesses an inherent, but hitherto unknown, function which they claim to have discovered. This is not the law. A patent on such a structure would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art." (Emphasis in original)). Correspondingly, the Examiner's anticipation rejection of independent claims 1 and 9 is sustained. In addition, with the exception of dependent claims 8 and 11 which are addressed infra, the Patent Owner does not present separate arguments with respect to the other claims rejected as Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 20 anticipated by Okabe. Thus, the Examiner's anticipation rejection of dependent claims 2-5 and 10 are sustained as well. Dependent Claim 8 The Patent Owner further argues with respect to dependent claim 8 that Okabe only discloses frictional engagement instead of the positive engagement recited by claim 8 (App. Br. 11, 12; Rebuttal Br. 2-4). According to the Examiner, "the contact between the pins 8 and the inner surface of the upper portion inherently includes frictional engagement" as recited in dependent claim 2, but also "engagement of the pins 8 by the inner surface of the upper portion creates a positive engagement" as recited in dependent claim 8 (RAN 12). Thus, the Examiner makes no distinction between "frictional engagement" and "positive engagement." We do not agree with the Examiner. The specification of the '866 patent clearly distinguishes "frictional engagement" from "positive engagement," describing them as alternatives to each other which can also be provided in combination (FF 1H, 1I). In this regard, the example illustrated and discussed as having "positive engagement" is the embodiment shown in Figure 7 of the '866 which includes having preformed toothing on the upper layer 9.1 that engages the corresponding preformed toothing the lower layer 2 (FF 1F, 1G). As such, the broadest reasonable construction of "positive engagement" in view of the specification of the '866 patent is engagement achieved through the interaction of structural features of the engaged components. Such engagement is not disclosed in Okabe. Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 21 The Requester's argument that "[t]his touching is considered a 'positive engagement' due to the deformation that occurs when the loads are increased" (Resp. Br. 7) is also not persuasive. While the sole 3 and the rubber pins 8 may deform upon application of a load, the sole 3 is planar in its construction and does not include any structural features that interact with the rubber pins 8 in a manner that can reasonably be characterized as "positive engagement," as that term is used in the context of the '866 patent. Any indention formed on the sole 3 is merely the elastic compression thereof and while the frictional engagement between the sole 3 and the rubber pins 8 can be characterized as having been increased by such elastic compression, such engagement cannot be reasonably be characterized as positive engagement between the rubber pins 8 and the sole in view of the specification of the '866 patent. In view of the above, we do not sustain the Examiner's anticipation rejection of dependent claim 8 based on Okabe. Dependent Claim 11 The Patent Owner argues that the rejection of claim 11 as anticipated by Okabe is erroneous because Okabe fails to disclose the recited "resilient member compris[ing] a profile like hollow element that contains a tubular part." (Rebuttal Br. 11). The Examiner asserts that "Fig. 1 [of Okabe] shows that each cavity has a hollow cross section and is formed as a tube." (RAN 22). We disagree with the Examiner. It is not apparent to us how Okabe discloses a cavity having "formed as a tube." Whereas the Examiner refers Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 22 to Figure 1 of Okabe as disclosing the claim limitation, we observe that Figure 1 is merely a cross-sectional view (FF 2A) and the general shape of the cavity is shown in Figure 2 which must be considered in conjunction with Figure 1 to understand the shape of the cavity. Figure 2 of Okabe and the discussion in Okabe regarding the same makes clear that the cavities have a planar shape as shown in Figure 2 (FF 2A, 2G), and not "as a tube" as asserted by the Examiner. Thus, the Examiner's anticipation rejection of dependent claim 11 based on Okabe is also reversed. Rejection of claims 1, 2 and 8-10 as Anticipated by Szentes The Examiner rejected claims 1, 2 and 8-10 under 35 U.S.C. Â§ 102(b) as anticipated by Szentes (RAN 12). Findings of Fact Regarding Szentes 3. A. Szentes discloses a sole of a footwear (Abst.). Figure 2 of Szentes is reproduced below. Figure 2 of Szentes is a cross-sectional view of one embodiment of sole 1 having a liquid filled cavity 4 between an upper layer 2 with notches 7, and a lower layer 3 with notches 7 and Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 23 ribs 8 (pg. 10, ll. 18-35; Fig. 2). Szentes discloses that when the "footwear is loaded by the weight of the user, the upper part 2 moves toward the lower layer 3" and the toe and heel portions of the upper part "bears up against the lower layer 3." (Pg. 9, ll. 30- 35). B. As to the ribs and notches, Szentes states "[i]n accordance with the invention, a further embodiment of the footwear can be characterized in that the ribs formed on one of the soles of the footwear are realized so as to fit into the notches." (Pg. 7, ll. 32-35). C. In discussing a prior art sole having a hollow cavity filled with a liquid, Szentes states "[t]he drawback of said solution lies in that walking becomes instable." (Pg. 3, ll. 30-31). D. With respect to prior art soles, Szentes also states: Another deficiency lies in, in so far as surfacial parts of the two layers facing each other are sliding easily on one another on effect of sliding force components, as a consequence, the person using the footwear has the sense of uncertainty. Connection between the two layers having been fixed to each other gets torn after a short use, as the two layers lying on each other, sliding frequently and relatively to a large extent, are subjected to considerable load, as a consequence glued material parts get torn apart. (Pg. 5, ll. 19-28). E. Szentes also states with respect to Figure 2, "[i]f along the periphery of the upper layer 2 and the lower layer 3 reinforcement, connection of the sole 1 of the footwear tore, cracked, slip may occur." (Pg. 10, ll. 29-32). F. With regard to Figure 2, Szentes states "[o]ne of the tasks lies in to prevent sliding of the two layers on one another, when the upper Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 24 layer 2 is lying onto the lower layer 3 in the loaded state, under the effect of the force component transferred by the foot from the upper layer 2, being parallel with the longitudinal direction or cross- direction of the shoe." (Pg. 10, ll. 23-29). G. Szentes further states that one aim of the invention is that "the person wearing the shoe should always feel the stable support for the foot." (Pg. 6, ll. 14-19). H. In its discussion of various prior art, Szentes states that a sole disclosed in U.S. Patent No. 4,445,284 which includes elongated cells is deficient in that "wearing results in an unsure and wobbling walk." (Pg. 3, l. 33-pg. 4, l. 3). Analysis The Examiner finds that the "inner surfaces of the upper and lower portions [of Szentes] are engaged to prevent relative motion in the longitudinal direction between the portions." (RAN 13). In addition, the Examiner finds that the "engagement of the inner surfaces creates a positive engagement" as recited in dependent claim 8 (RAN 13). The Patent Owner argues that Szentes does not teach a first configuration of absorbing loads by relative motion in the longitudinal direction and that Szentes "teaches away from allowing any slippage in the longitudinal direction" by its provision of ribs and notches (App. Br. 12, 13). The Patent Owner further argues that the embodiment of Figure 3 of Szentes shows that no relative movement between the upper and lower layers is Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 25 contemplated because of the profile of the footbed suggests alignment of the layers (App. Br. 14). We are not persuaded by the Patent Owner's arguments. The Patent Owner's argument that Szentes does not teach the first configuration of absorbing loads by relative motion is unpersuasive because it is this very relative motion that the provided notches and ribs of Szentes are designed to address when the shoe is in its loaded state (FF 3A-3C, 3F, 3G). If there is no relative motion between the upper and lower layers, there would be no reason to provide such notches and ribs. In this regard, the Patent Owner ignores the fact that the two layers of Szentes do not contact each other until the wearer's weight is applied to the sole (FF 3A, 3F). While Szentes teaches the general undesirability of relative movement between the upper layer and the lower layer because such movement can result in the glued material parts tearing, such tearing is described in the context of when layers of the sole "are subjected to considerable load," that is, when the shoe is in the loaded state (FF 3D). Szentes provides the notches and ribs for prevention of relative motion between the layers when the sole is bearing weight of the wearer, not when it is in an unloaded state. The Patent Owner's argument that the embodiment of Figure 3 of Szentes shows that no relative movement between the upper and lower layers is contemplated (App. Br. 14) ignores the fact that Figure 3 is merely one embodiment and other embodiments, including that shown in Figure 2, do not include such a profile for the footbed (see Szentes, Figs. 1, 2, 4). We also observe that in the embodiment of Figure 3, a clamping band (not enumerated) surrounds the periphery of the sole which may impact the Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 26 ability of the layers to move relative to each other (see, e.g., Szentes, pg. 8, l. 3-pg. 9, l. 2; Fig. 3). Such clamping band is not present in Figure 2. In view of the above, the Examiner's anticipation rejection of independent claims 1 and 9 is sustained. In addition, with the exception of dependent claim 8 which is addressed below, the Patent Owner does not present separate arguments with respect to the other claims rejected based on Szentes. Thus, the Examiner's anticipation rejection of dependent claims 2-5 and 10 over Szentes are sustained as well. Claim 8 The Patent Owner separately argues that Szentes merely discloses frictional engagement and does not disclose positive engagement as recited by dependent claim 8 because the notches are filled with fluid, the ribs differ in size compared to the notches, and because the notches are only provided under the toes and the arch portions of the sole (App. Br. 14-15). None of these arguments are persuasive. Fluid is displaceable. The fact that ribs and notches differ in size does not preclude these structural features from interacting to positively engage each other. Whereas the recitation of a positive engagement requires interaction between structural features as discussed supra, nothing in the claims requires a specific structure (e.g., same sized ribs and notches). Furthermore, Szentes itself characterizes the ribs as fitting into the notches (FF 3B). Moreover, the disclosure of notches only under the toes and arch does not preclude these structures from providing positive engagement between the upper and lower Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 27 layers. Therefore, we sustain the Examiner's anticipation rejection of claim 8 based on Szentes. Rejection of Claims 1-11 as Obvious Over Pagani in View of Szentes The Examiner rejected claims 1-11 as obvious over the combination of Pagani and Szentes (RAN 14, 22). Findings of Fact Regarding Pagani 4. A. Pagani discloses a sole tread of a footwear (Abst.). Figure 2 of Pagani is reproduced below. Figure 2 of Pagani reproduced above is a longitudinal cross sectional view of a sole tread 10 having a plurality of through- channels 11 (pg. 1, ll. 47-60; Fig. 2). B. Pagani teaches that the sole tread "is made from a preferably compressibly resilient polymeric material such as rubber or [] synthetic plastics." (Pg. 1, ll. 8-15). C. Pagani states that the "closed channels are advantageously holes extending throughout the lengths of the ridges, e.g. from one edge of the sole to the other and provide an array of air-chambers which Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 28 improve the softness of the sole and its adherence to the ground." (pg. 1, ll. 47-60). D. Pagani states "[t]he channels 11 make the sole tread especially resiliently yieldable, so that the footwear article to which it is applied is very comfortable in use and the triangular embossments 12 tend to yield under the wearer's weight so as to bring their sloping walls in frictional contact with the ground, thus further improving the already good adherence of the sole to the ground." (Pg. 1, ll. 67-75). 5. The Declaration of Mr. Frederick dated May 25, 2010 states: Pagani does not explicitly disclose that the inner surface of the upper portion of the channels 11 are engaged with the inner surface of the lower portion of the channels 11 due to absorbed shoe loads in the second configuration. In my opinion, a shoe could undergo very large loads depending on the weight of the user and the type of activity. Since Pagani discloses that the "[t]he channels 11 make the sole tread especially resiliently yieldable" and "the triangular embossments 12 tend to yield under the wearer's weight so as to bring their sloping walls 14 in frictional contact with the ground," it necessarily follows that the structure of the tread 10 is capable of undergoing a complete collapse of at least one of the channels 11 of the tread 10 such that an inner surface of the upper portion of a given channel 11 is engaged with the inner surface of the lower portion of the given channel due to absorbed shoe loads when the absorbed shoe loads are sufficiently large. (Â¶ 83). Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 29 Analysis The Examiner finds that the resilient members (channels 11) of Pagani have a first configuration where the upper and lower portions of the channels 11 are spaced from each other, and "inherently has a second configuration when a load is absorbed by the resilient member where the inner surfaces of the upper and lower portions move toward one another." (RAN 14). The Examiner also finds that Szentes teaches that such channels "results in an unsure and wobbling walk," citing the prior art discussion in Szentes regarding U.S. Patent No. 4,445,284, which discloses a sole with elongated cells, and finds that Szentes solves the problem by preventing sliding through engagement between the upper and lower portions (RAN 14-15, 29; FF 3H). The Examiner concludes that it would have been obvious to "modify the outsole of Pagani so that the inner surfaces of the channels contact each other upon application of a load oblique to the perpendicular direction, as taught by Szentes, in order to provide a shoe that feels stable when walking or running." (Ans. 15). The Requester agrees with the Examiner and argues that it would have been obvious to one of ordinary skill in the art "to apply the solution disclosed in Szentes to the outsoles of Pagani" and one of ordinary skill in the art would have known how to modify a resilient member in the form of an open channel structure based on a resilient member in the form of a single enclosed space in the sole, referring to the Declaration of Mr. Frederick in support (Resp. Br. 9; see also Decl. of Mr. Frederick Â¶Â¶ 75-91). The Patent Owner argues, inter alia, that Pagani fails to disclose the second configuration because the sole is "especially resiliently yieldable," Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 30 which would result in relative motion during push off and that Pagani relies on this relative motion for adherence and comfort, whereas Szentes teaches away from any relative motion (App. Br. 15-16). The Patent Owner further argues that because Pagani describes multiple through-channels 11 whereas Szentes relies on one fluid-filled cavity 4, "it is unclear precisely how and why - without the benefit of hindsight reasoning - one of ordinary skill in the art would combine these references to arrive at the Patent Owner's claims." (App. Br. 16). We agree with the Patent Owner's contention that impermissible hindsight is being applied by the Examiner. In our view, a fair reading of Szentes suggests not using a plurality of small channels such as that disclosed in Pagani, because Szentes disparages such a configuration (FF 3H). In this regard, rather than modifying the plurality of small channels in the sole of the prior art, Szentes suggests using a single, large cavity in all of the different embodiments disclosed. In addition, it is also evident that in order for the invention of Szentes to work, there must be contact between the upper and lower layers. While we agree with the Examiner that the inner surfaces of the upper and lower portions of Pagani will move toward one another when a load is absorbed, Pagani is silent as to any contact between the inner surfaces of the upper and lower portions, nor does Pagani discuss the extent of this movement. This silence is factually problematic, especially considering the small size and distribution of the channels along the sole (FF 4A, 4C). It is not apparent to us that channels of Pagani would necessarily be compressed to the extent wherein the upper and lower portions are "engaged" as recited in claim 1. Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 31 Whereas the Requester relies on the Declaration of Mr. Frederick (FF 5), the particular statement relied upon is unpersuasive because it is conclusory and unsubstantiated by persuasive objective evidence. In particular, we are not persuaded that the disclosure in Pagani that the channels make the sole tread especially resiliently yieldable and that the triangular embossments yield establishes that "the structure of the tread 10 is capable of undergoing a complete collapse of at least one of the channels 11 of the thread" as asserted by the declarant (id.). This opinion appears to be based on application of shoe loads that are "sufficiently large." (FF 4). However, the mere fact that the claims are silent as to the amount of the applied load does not mean that there is no implied limitation as to the amount of load considering the subject matter of the claims and the prior art are soles of shoes. Even the most rigid structures can "completely collapse" if the loads are "sufficiently large." Furthermore, it is not apparent why one of ordinary skill would apply the teachings of notches and ribs as applied to a large, singular cavity as taught in Szentes, to small channels shown in Pagani which is very different from the cavity disclosed in Szentes (compare FF 3A with FF 4A). Hence, we find merit in the Patent Owner's argument that the Examiner appears to be engaging in hindsight reasoning to arrive at the Patent Owner's claims. Thus, in view of the above considerations, whereas the Examiner has articulated a reason for modifying the sole of Pagani, and in view of the preponderance of the evidence before us, our impression is that the reason is based in impermissible hindsight. Correspondingly, the Examiner's rejection of claims 1-11 as obvious over the combination of Pagani and Szentes is not Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 32 sustained. The additional arguments such as those directed to dependent claim 8 are moot. Rejection of Claims 1-11 as Obvious Over Takahashi in View of Szentes The Examiner rejected claims 1-11 under 35 U.S.C. Â§ 103(a) as being unpatentable over Takahashi in view of Szentes (RAN 17, 23). Findings of Fact Regarding Takahashi 6. Takahashi discloses a shoe sole (pg. 1, Â¶ 1). Figure 1 of Takahashi is reproduced below. Figure 1 of Takahashi reproduced above shows a side view of an embodiment of shoe sole 1 including a plurality of ridge bodies 7 containing passage holes 6 (pg. 1, Â¶ 3; pg. 2, Â¶ 2; Fig. 1). Analysis The Examiner's rejection of the claims based on the combination of Takahashi and Szentes, and the arguments proffered by the Patent Owner and the Requester are substantively similar to the obviousness rejection based on the combination of Pagani and Szentes discussed supra (see RAN 17-19, 23; App. Br. 17-19; Resp. Br. 9-10; Decl. of Mr. Frederick, Â¶Â¶ 92- Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 33 107). The disclosure of Takahashi is substantively similar to that of Pagani (compare FF 4A with FF 6). Therefore, for substantively the same reasons already discussed with respect to the obviousness rejection based on the combination of Pagani and Szentes, we likewise conclude that the Examiner's obviousness rejection of claims 1-11 based on the combination of Takahashi and Szentes is based on impermissible hindsight, and is not sustained. Rejection of Claims 1-11 as Obvious Over Inohara in View of Szentes The Examiner rejected claims 1-11 under 35 U.S.C. Â§ 103(a) as being unpatentable over Inohara in view of Szentes (RAN 19, 23). Findings of Fact Regarding Inohara 7. Inohara discloses a shoe sole (Abstract). Figure 13 of Inohara is reproduced below. Figure 13 of Inohara reproduced above shows a side view of an embodiment of a shoe having an interlayer body 11 with a plurality of apertures 12 (col. 2, ll. 24-26; col. 5, ll. 16-24; Fig. 13). Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 34 Analysis The Examiner's rejection of the claims based on the combination of Inohara and Szentes, and the arguments proffered by the Patent Owner and the Requester are also substantively similar to the obviousness rejection based on the combination of Pagani and Szentes discussed supra (see RAN 19-21, 23; App. Br. 17-19; Resp. Br. 10; Decl. of Mr. Frederick, Â¶Â¶ 108- 121). The disclosure of Inohara is substantively similar to that of Pagani (compare FF 4A with FF 7). Therefore, for substantively the same reasons already discussed with respect to the obviousness rejection based on the combination of Pagani and Szentes, we likewise conclude that the Examiner's obviousness rejection of claims 1-11 based on the combination of Inohara and Szentes is based on impermissible hindsight, and is not sustained. Declarations The Patent Owner argues that the declarations of Mssrs. Bernhard, Corigliano and Sage were not given proper weight in favor of non- obviousness of the claimed invention (App. Br. 29; Rebuttal Br. 5-8). The Examiner states that the declarations relied upon by the Patent Owner are insufficient to overcome the obviousness rejections because "there is no showing that the objective evidence of nonobviousness is commensurate in scope with the claims (RAN 24). The Requester agrees (Resp. Br. 11-13). This issue is moot because the obviousness rejections are not sustained as discussed supra. As to the Examiner's rejections of the various claims under 35 U.S.C. Â§ 102(b) which have been sustained, the declarations Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 35 which attest to the superior results attained by certain commercially implemented shoes are not pertinent. In re Wiggins, 488 F.2d 538, 543 (CCPA 1973). ORDERS 1. A. Rejection of claims 1-5, 9 and 10 as anticipated by Okabe is AFFIRMED. B. Rejection of claims 8 and 11 as anticipated by Okabe is REVERSED. 2. Rejection of claims 1, 2 and 8-10 as anticipated by Szentes is AFFIRMED. 3. Rejection of claims 1-11 as obvious over Pagani in view of Szentes is REVERSED. 4. Rejection of claims 1-11 as obvious over Takahashi in view of Szentes is REVERSED. 5. Rejection of claims 1-11 as obvious over Inohara in view of Szentes is REVERSED. 6. Rejection of claim 11 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite is REVERSED. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. Â§Â§ 1.956 and 41.77(g). AFFIRMED-IN-PART Appeal 2012-009494 Reexamination Control 95/001,320 Patent US 7,181,866 B2 36 cu Patent Owner: NDQ Special Reexam Group 1000 Louisiana Street, 53rd Floor Houston, TX 77002 Third Party Requester: Oblon, Spivak, McClelland Maier & Neustadt, L.L.P. 1425 K Street, N.W. Suite 800 Washington, DC 20005