Ex Parte Koo

Patent Trial and Appeal Board

Sep 30, 2014

12464812 (P.T.A.B. Sep. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN C. S. KOO
____________

Appeal 2012-009263
Application 12/464,812
Technology Center 3700
____________

Before ANNETTE R. REIMERS, JILL D. HILL, and
MICHAEL L. WOODS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1,2

John C. S. Koo (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision and to reject under 35 U.S.C. § 103(a) claims 1–16 as
unpatentable over Keen (US 2007/0011914 A1; iss. Jan. 18, 2007) and

1 The subject application is a continuation-in-part of Application No.
12/098,814. See Appeal Br. 2.
2 The Examiner has withdrawn the rejection of claims 1–3 and 9 under
35 U.S.C. § 102(b) as anticipated by Cass (US 6,029,376; iss. Feb. 29,
2000). See Ans. 4; Reply Br. 2.
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Application 12/464,812

2
Karasawa (US 6,718,658 B2; iss. Apr. 13, 2004).3 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The claimed subject matter “pertains to shoes/footwear.” Spec. 1,
para. 2, Figs. 12–14.
Claim 1, the sole independent claim, is representative of the claimed
subject matter and recites:
1. A shoe, comprising:
a sole having a main structure;
a strap anchor that has a plurality of attachment points
and is at least partially embedded within the main structure; and
a strap that is at least one of attached to and looped
through at least one of the attachment points of said strap
anchor and that is configured for strapping the shoe to a
wearer’s foot,
wherein the strap anchor comprises a plurality of strap
anchor components attached in a unit, each said strap anchor
component including a plurality of the attachment points and
being at least partially embedded within the main structure.

ANALYSIS

Independent claim 1 calls for a shoe including a strap anchor,
“wherein the strap anchor comprises a plurality of strap anchor components

3 On the record before us, Appellant does not appeal the Examiner’s
provisional obviousness-type double patenting rejection of claims 1–16 over
claims 1–21 of co-pending Application No. 12/098,814 (the ’814
application). Appeal Br. 3; Final Rej. 2–3. Accordingly, the provisional
obviousness-type double patenting rejection of claims 1–16 is not addressed
in this opinion.
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Application 12/464,812

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attached in a unit.” Appeal Br. C-1, Clms. App. The Examiner found that
“Keen does not teach the strap anchor comprising a plurality of separate
strap anchor components attached in a unit instead of being a one piece
integral unit.” Ans. 6. The Examiner found that Karasawa discloses
a method for making ready-made shoes fitting
individuals’ foot shapes; this method includes the
steps of forming a separate forefoot part (strap
anchor and attachment points) and a separate
rearfoot part, and connecting them detachably by
means of a connecting means to form a shoe body.
This makes it possible to easily produce sorts of
shoes of different widths for each size by forming
forefoot parts of different widths and/or rearfoot
parts of different widths, selecting any of these
parts of different widths and connecting the
forefoot and rearfoot parts.

Id. The Examiner concluded that
it would have been obvious to one of ordinary skill
in the art at the time the invention was made to
make the strap anchor of [Keen] from plurality of
separate strap anchor components as taught by
Karasawa to make it possible to easily produce
sorts of shoes of different widths for each size by
forming forefoot parts of different widths and/or
rearfoot parts of different widths, selecting any of
these parts of different widths and connecting the
forefoot and rearfoot parts for better fit adjustment.

Id. at 67. The Examiner further concluded that it would have been obvious
for a person of ordinary skill in the art “to make the strap anchor of Keen
from a plurality of separate strap anchor components, since it has been held
that constructing a formerly integral structure in various elements involves
only routine skill in the art.” Id. at 7 (citing Nerwin v. Erlichman,
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168 USPQ 177, 179 (Bd. Pat. Int. 1969)).
Appellant contends that the Examiner’s proposed structure would not
have been obvious in view of the teachings of Keen and Karasawa. Appeal
Br. 15. Specifically, Appellant contends that
Keen repeatedly emphasizes that its housing 104
(which the Examiner asserts [to be the] recited
strap anchor) must be of a unitary or one-piece
structure in order to appropriately secure the
wearer’s foot. See, e.g., paragraphs [0046],
[0047], [0051], [0052], [0072], [0083] and [0138]
of Keen. Using a two-part construction approach,
as proposed by the Examiner, would have been
inconsistent with using Keen’s housing 104 to
secure the wearer’s foot.
Id. at 13.
In response to Appellant’s argument, the Examiner took the position
that
[t]he combination of Keen-Karasawa would not
defeat Keen’s goal, since Keen discloses that the
specific placement, dimensions and/or angles of
the attachment points/fingers 112 may differ from
what is shown without departing from the spirit or
scope of the invention. The molded attachment
points/fingers 112 of the upper 104a increase
airflow to the foot and allow for breathability and
dissipation of water, as well as exceptional fit.
The attachment points/fingers 112 are preferably
flexible enough to work independently, adjusting
to the contours of the wearer’s foot. This
adaptability allows the shoe to fit a large subject
population having varying foot geometries. The
attachment points/fingers 112 enable fit
adjustment, with an emphasis on foot instep
adjustment as well as midfoot and forefoot width
adjustment. The geometry of the upper 104a
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allows for greater contour to the foot than in
conventional footwear. The fit of articles of
footwear of the present invention can
accommodate variances in forefoot height and
girth expected within the general population while
providing a secure and comfortable fit for each
wearer. Furthermore, the attachment
points/fingers 112 are able to accommodate
variations among the left and right feet of the
wearer. As seen in FIG. 1 (b), the attachment
points/fingers 112, the heel support 114 and the
midsole 104b may each include lacing channels or
paths 116 adapted to receive a lace therein.
Ans. 11–12. We disagree with the Examiner’s position for the following
reasons.
At the outset, we agree with Appellant that the Examiner does not
respond to Appellant’s argument (i.e., “Keen repeatedly emphasizes that its
housing 104 (which the Examiner asserts [to be the] recited strap anchor)
must be of a unitary or one-piece structure in order to appropriately secure
the wearer’s foot”). See Reply Br. 4. We further agree with Appellant that
the Examiner’s explanation (see Ans. 11–12) “simply indicates that Keen
already includes a structure for adapting to the size and shape of the wearer’s
foot.” Reply Br. 4. In other words, the reason proffered by the Examiner to
modify the teachings of Keen, i.e., “to easily produce sorts of shoes of
different widths for each size by forming forefoot parts of different widths
and/or rearfoot parts of different widths, selecting any of these parts of
different widths and connecting the forefoot and rearfoot parts for better fit
adjustment” (see Ans. 7), appears to already be performed by the Keen’s
attachment points/fingers 112. The Examiner has not provided any findings
that Keen recognized a problem with the attachment points/fingers 112.
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Without persuasive articulated reasoning based on rational underpinning for
modifying the reference as proposed, the Examiner’s rejection appears to be
the result of hindsight analysis. See KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 418 (2007) (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness[.]”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006). Therefore, absent hindsight, we fail to see why one having
ordinary skill in the art would have been led to replace the housing (strap
anchor) of Keen with the separate strap anchor components of Karasawa, as
the Examiner proposed.
Moreover, rejections based on 35 U.S.C. § 103 must rest on a factual
basis. In making such a rejection, the Examiner has the initial duty of
supplying the requisite factual basis and may not, because of doubts that the
invention is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in the factual basis. In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967). The Examiner’s statement that
“it has been held that constructing a formerly integral structure in various
elements involves only routine skill in the art” (see Ans. 7, 12) is not
supported in the record by underlying factual evidence, and thus cannot
properly serve as a basis for concluding that it would have been obvious to a
person of ordinary skill in the art to make Keen’s housing (strap anchor) 104
from separate strap anchor components.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
claims 1–16 as unpatentable over Keen and Karasawa cannot be sustained.

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Application 12/464,812

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DECISION
We REVERSE the decision of the Examiner to reject claims 1–16.

REVERSED

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