Ex Parte Leo

Patent Trial and Appeal BoardAug 21, 2017

13421927 (P.T.A.B. Aug. 21, 2017)

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. 13/421,927 03/16/2012 Susan Leo 5046-0003 6605 90363 7590 08/21/2017 Hansen IP Law PLLC P.O. Box 300069 Waterford, MI 48330 EXAMINER TRIEU, TIMOTHY K ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 08/21/2017 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) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SUSAN LEO ____________ Appeal 2016-003516 Application 13/421,927 Technology Center 3700 ____________ Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and BRANDON J. WARNER, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Susan Leo (“Appellant”) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–28, which are all the pending claims. See Appeal Br. 1; Reply Br. 1. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2016-003516 Application 13/421,927 2 CLAIMED SUBJECT MATTER Appellant’s disclosed invention relates “to the field of shoes.” Spec., p. 1, l. 8. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A charm holder device comprising: an attachment portion having a female socket; a base having a first side including a male protrusion for snapping into the female socket and a second side coupled to a nipple; a charm engaging portion coupled to the nipple of the base comprising a charm keeper for receiving charms; wherein the charm keeper is moveable from a first open position in which charms may be received to a second closed position in which charms are detained on the charm keeper. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Hiss US 1,484,785 Feb. 26, 1924 Lancaster US 2,174,521 Oct. 3, 1939 Eiben US 3,357,063 Dec. 12, 1967 Reid US 5,461,814 Oct. 31, 1995 Golove US 2009/0100869 A1 Apr. 23, 2009 Appeal 2016-003516 Application 13/421,927 3 REJECTIONS The following rejections are before us for review:1 I. Claims 1, 3, 4, 6, 11–13, 20, 21, and 23 stand rejected under 35 U.S.C. § 102(b) as anticipated by Lancaster. Final Act. 4–6.2 II. Claims 2, 8, 9, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lancaster and Golove. Id. at 6–7.3 III. Claims 5 and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lancaster and Eiben. Id. at 8. 1 We note that a rejection of claims 1, 6, 20, 24, 26, and 28 on the ground of nonstatutory obviousness-type double patenting has been withdrawn by the Examiner and thus is not before us for review as part of the instant appeal. Ans. 2; see also Final Act. 3. 2 Although the Examiner included claims 3 and 4 in this rejection, these claims depend from claim 24, which stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Hiss and Lancaster. See Appeal Br. 22, Claims App.; Final Act. 8–9. Because dependent claims 3 and 4 include the limitations of base claim 24, it is illogical for these claims to be rejected based on Lancaster alone when the base claim is rejected only based on a combination of Hiss and Lancaster. Compare Rejection I, with Rejection VI. 3 Although the Examiner included claims 18 and 19 in this rejection, these claims depend from claim 26, which stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Reid and Lancaster. See Appeal Br. 24, Claims App.; Final Act. 9–10. Because dependent claims 18 and 19 include the limitations of base claim 26, it is unclear on the record before us how dependent claims 18 and 19 stand rejected based on a combination of only Lancaster and Golove (i.e., without Reid). Compare Rejection II, with Rejection IV. Appeal 2016-003516 Application 13/421,927 4 IV. Claims 7, 10, and 26–28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Reid and Lancaster. Id. at 9–10. V. Claims 14–16 and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lancaster. Id. at 7–8. VI. Claims 24 and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hiss and Lancaster. Id. at 8–9. ANALYSIS Claims 1–5, 24, and 25 Independent claim 1 recites, in relevant part, “a charm engaging portion coupled to the nipple of the base comprising a charm keeper for receiving charms; wherein the charm keeper is moveable from a first open position in which charms may be received to a second closed position in which charms are detained on the charm keeper.” Appeal Br. 22, Claims App. (emphasis added). Appellant argues that Lancaster, as relied on in the rejections of these claims, fails to disclose such a limitation. See Appeal Br. 3–8; Reply Br. 2–5. We agree. In rejecting independent claim 1, the Examiner found that Lancaster discloses a charm holder including, inter alia, a base (disk 3a having inner surface facing upward and an outer surface facing downward to contact element 7, fig.8) having . . . a second side coupled to a nipple (3a’); [and] a charm engaging portion (elements 4, 5a, 5, 7 …) coupled to the nipple of the base comprising a charm keeper (5a, 6a, 7) for receiving charms (4); wherein the charm keeper is moveable from a first open position in which charms may be received or removed to a second closed Appeal 2016-003516 Application 13/421,927 5 position in which charms are detained on the charm keeper (fig.8). Final Act. 4 (italics omitted). Appellant asserts that “Lancaster’s alleged ‘charm keeper’ is not moveable from a first open position to a second closed position while (1) the alleged ‘charm engaging portion’ (of which the ‘charm keeper’ is a part) is coupled to the nipple of a base.” Reply Br. 5 (emphasis omitted). In particular, Lancaster discloses “a plurality of sharp spurs, 3a′, 3a′, on the under side of the socket-plate 3a.” Lancaster, p. 2 (right column), ll. 69–71. Lancaster also discloses “an annular groove 5x in the upper side of the shank-plate 5, in a position to receive the spurs.” Id. at p. 2 (right column), l. 75 – p. 3 (left column), l. 1 (emphasis added). According to Lancaster, “screwing the threaded stem 5a into the threaded socket 3, [allows] the sharp spurs, 3a′, 3a′, to enter the annular groove 5x′ in the upper surface of the shank-plate 5.” Id. at p. 3 (left column), ll. 15–19 (emphasis added). Although we agree with the Examiner that a portion of Lancaster’s device (i.e., shank-plate 5, threaded stem 5a, shank-cap 7) is movable from an open position to a closed position (i.e., by screwing threaded stem 5a into threaded socket 3) such that it is capable of receiving and detaining charms (see Ans. 2–3), the Examiner does not identify—nor do we discern—any disclosure in Lancaster that this portion is “coupled to the nipple” (spur 3a′) of the base. In other words, to the extent that Lancaster discloses a charm engaging portion (i.e., shank-plate 5 with annular grooves 5x′, threaded stem 5a, shank-cap 7) and a nipple (spur 3a′), Lancaster at most discloses that the annular grooves 5x′ of the charm engaging portion “receive” the nipple. Thus, the Examiner has not established by a preponderance of the evidence that Lancaster discloses, either expressly or inherently, “a charm Appeal 2016-003516 Application 13/421,927 6 engaging portion coupled to the nipple of the base comprising a charm keeper for receiving charms,” as recited in independent claim 1. In short, the Examiner has not sufficiently established a finding, supported by a preponderance of the evidence, that Lancaster discloses the disputed limitation as claimed. This unsupported finding pervades the rejections of claims 1–5, 24, and 25. See Final Act. 4–5, 7–9. We note that the rejections of dependent claims 2–5, 24, and 25 are premised on the same purported disclosure from Lancaster, and that Golove, Eiben, and Hiss are relied on for teaching additional features, but not to cure the deficiency of Lancaster discussed above. See id. at 7–9. Accordingly, based on the record before us, the Examiner has not met the burden of establishing a proper case of anticipation or obviousness. On this basis, we do not sustain the rejection of claims 1, 3, and 4 under 35 U.S.C. § 102(b) as anticipated by Lancaster. Likewise, we do not sustain the rejections of claims 2, 5, 24, and 25 under 35 U.S.C. § 103(a). Claims 6 and 11–13 In rejecting independent claim 6, the Examiner found that Lancaster discloses a shoe engaging portion (3, 5a’) coupled to the attachment portion; and a charm engaging portion (elements 4, 5a, 5, 5’, 5x’ 7 …) mounted to the shoe engaging portion comprising a charm keeper (3a, 5a, 7, 6a) for receiving charms (4), wherein the charm keeper is moveable (wherein element 7, 5, 4, 3a can [be] opened/closed and/or removable from the element 3, fig.8) from a first open position in which charms may be received or removed to a second closed position in which charms are Appeal 2016-003516 Application 13/421,927 7 detained on the charm keeper (element 5a unscrew[s] to release element 4 and tight receive element 4, fig.1 or 8). Final Act. 5 (italics omitted). The Examiner explains that the language reciting that the charm keeper is “movable” represents an intended use recitation, which only requires that the prior art structure be capable of performing the intended use. See Ans. 2. According to the Examiner, Lancaster discloses a “charm keeper having two portions[:] a first portion (such as elements 1, 2, 3, 1’ 3a, 3a’) . . . and a second portion . . . (such as elements 5a, 6, 6a, 7).” Id. at 3 (including an annotated reproduction of Figure 3 of Lancaster); see also id. (explaining that “[t]he second portion is being screwed/moved into the thread socket 3 [of] the upper/first portion by the thread stem 5a”). Appellant argues that “Lancaster fails to disclose the limitation wherein ‘the charm keeper is moveable from a first open position in which charms may be received to a second closed position in which charms are detained on the charm keeper.’” Reply Br. 4. In particular, Appellant asserts that “[t]he Examiner’s analysis conflates statements of intended use with functional features,” and “fails to explain why such statements [in the claim] are allegedly mere statements of intended use instead of functional features.” Id. at 3 (emphasis omitted). According to Appellant, “[t]he limitations at issue here are in the body of the claims and define how the apparatus is capable of operating, not a mere intended use of it.” Id. at 4. We do not find this argument persuasive. Although we agree with Appellant that the language reciting that the charm keeper is moveable from an open position to a closed position represents a functional limitation, the language specifying that such open and closed positions are for respectively receiving and detaining charms Appeal 2016-003516 Application 13/421,927 8 pertains to the intended use of the charm keeper structure. Notably, the claim does not recite a charm as an element in combination with the charm keeper, and the claim does not limit charm to any particular form or structure.4 Moreover, the claim does not specify any particular structural limitations for the charm keeper that would require anything more than a structure that is capable of moving between an open position and a closed position. We agree with the Examiner that at least a portion of Lancaster’s device (i.e., shank-plate 5, threaded stem 5a, shank-cap 7) is movable from an open position to a closed position (i.e., by screwing threaded stem 5a into threaded socket 3), such that it is capable of receiving and detaining charms. See Ans. 2–3. For example, Figure 9 of Lancaster depicts the Examiner’s identified charm keeper portion (i.e., shank-plate 5, threaded stem 5a, shank- cap 7) in a “closed position” because stem 5a is screwed into socket 3 such that socket-plate 3a and shank-plate 5 are closed upon an item (e.g., fabric 4 or a charm). It logically follows that unscrewing stem 5a from socket 3 would move socket-plate 3a and shank-plate 5 away from each other such that the device is movable to an “open position” in which an item (e.g., fabric 4 or a charm) could be received. Furthermore, as discussed above, Appellant’s claim does not limit the charms to any particular form or structure, and, additionally, does not exclude charms having fabric features. Appellant also argues that “Lancaster’s alleged ‘charm keeper’ is not moveable from a first open position to a second closed position while . . . the 4 We note that the Specification describes that “charm or ornament 44 may be of any design that can be removeably attached to the charm keeper.” Spec., p. 7, ll. 21–22. Appeal 2016-003516 Application 13/421,927 9 alleged charm engaging portion is mounted to a shoe engaging portion (as recited in claim 6).” Reply Br. 5 (emphasis omitted). To the extent that Appellant argues that Lancaster fails to disclose a charm keeper that is both movable between open and closed positions and mounted to the shoe engaging portion, this argument is unconvincing. As discussed above, the Examiner’s rejection of claim 6 relies on Lancaster’s socket 3 as corresponding to the shoe engaging portion and on Lancaster’s shank-plate 5 as corresponding to the charm engaging portion. See Final Act. 5. In this regard, Lancaster discloses that stem 5a of shank-plate 5 screws into socket 3. See Lancaster, p. 2 (left column), ll. 38–39, 49–50 (disclosing that “threads on the stem 5a are adapted to mesh with the internal threads of the socket 3” in order “to screw the stem firmly into the threaded socket 3”). Appellant does not proffer any evidence or persuasive technical reasoning that “mounted,” as recited in the claim, requires anything more than the threaded connection between socket 3 and stem 5a. Thus, Appellant does not apprise us of error in the Examiner’s findings as to the disclosure of Lancaster, which are supported by a preponderance of the evidence. Accordingly, we sustain the rejection of claim 6, and of dependent claims 11–13, for which Appellant does not present any separate arguments, under 35 U.S.C. § 102(b) as anticipated by Lancaster. Claims 8 and 9 In rejecting dependent claims 8 and 9, the Examiner acknowledged that “Lancaster does not disclose [that] the attachment strip is magnetic.” Final Act. 7. However, the Examiner found that “Golove teaches a similar ornament device ring 700 having a setting 716 [that] has a magnetic post 718 Appeal 2016-003516 Application 13/421,927 10 (or a magnet attached to the post) and/or a magnet [that] is disposed inside the basket 714.” Id. (citing Golove, Fig. 21, ¶ 52). The Examiner concluded that, given the teachings of the prior art, it would have been obvious “to have made the attachment strip . . . magnetic . . . by employing the teaching of Golove in order to provide faster connection for removing and attaching of the charm device.” Id. Appellant argues that Lancaster and Golove are non-analogous art. See Appeal Br. 11–12. In particular, Appellant asserts that “neither Lancaster nor Golove endeavor to solve the problem of removably attaching a charm to a shoe.” Id. at 11. We are not persuaded by Appellant’s argument. The proper two-prong test to define the scope of analogous prior art is (1) “whether the art is from the same field of endeavor, regardless of the problem addressed,” and (2) even “if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (internal citation omitted). In this regard, Lancaster and Golove are analogous art at least because the references are in the field of Appellant’s endeavor of fashion accessories. In particular, Lancaster “relates to mechanically-adjustable and detachable buttons for heavy or lightweight garments.” Lancaster, p. 1 (left column), ll. 1–3. Golove “relates broadly to jewelry” and, “[m]ore particularly, . . . to rings, necklaces, earrings, bracelets, and pendants having interchangeable and/or movable settings and attachable charms.” Golove ¶ 2. Appellant’s Specification describes that “[t]he invention pertains to the field of shoes” and, “[m]ore particularly, . . . to a holder device of charms on shoes.” Spec., Appeal 2016-003516 Application 13/421,927 11 p. 1, ll. 8–9. Additionally, independent claims 1, 6, and 20 call for “[a] charm holder device.” Appeal Br. 22–23, 24, Claims App. Appellant’s contention that the field of endeavor should be restricted to “[b]oots, shoes, and leggings” (see id. at 11) is too narrow a field of endeavor in light of the overall disclosure of the Appellant’s invention, which is directed to a type of fashion accessory (i.e., charm holder). Regarding claim 9, Appellant also argues that the proposed modification would “render Lancaster unsuitable for its intended purpose.” Appeal Br. 11, 12. In particular, Appellant asserts that “Lancaster indicates that these components are meant to be fixedly attached by riveting,” and “magnetically connecting Lancaster’s ‘broad-head 3’ and ‘head-plate 2’ to be separable would defeat Lancaster’s purpose.” Id. at 10 (emphasis omitted) (citing Lancaster, p. 3 (left column), ll. 15–22). According to Appellant, “[t]his suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [Lancaster] as well as a change in the basic principles under which the [Lancaster] construction was designed to operate.” Id. (brackets in original) (quoting In re Ratti, 270 F.2d 810, 813 (CCPA 1959)). This argument is not persuasive. Under Ratti, “a change in the basic principles” refers to change that is fundamental in scope so as to relate to scientific or technical principles under which the invention is designed to operate. We are not persuaded that a “change in basic principles” (i.e., scientific or technical principles) occurs by modifying Lancaster to include a magnetic attachment, since a magnetic attachment continues to function as a means of attachment. Moreover, Appellant does not specifically address the Examiner’s reasoning articulated in support of the proposed modification of Lancaster or explain why this Appeal 2016-003516 Application 13/421,927 12 reasoning is in error. See Final Act. 7 (reasoning that such modification would “provide faster connection for removing and attaching . . . the charm device”). After careful consideration of all the evidence, Appellant’s arguments do not apprise us of error in the Examiner’s findings or reasoning in support of the conclusion of obviousness. We sustain the rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as being unpatentable over Lancaster and Golove. Claims 14–16 Dependent claims 14–16 recite that the body of the charm engaging portion comprises one of a skull, a cylindrical shaft, and an irregular polygon. See Appeal Br. 23, Claims App. The Examiner acknowledged that Lancaster does not disclose these features, but determined that “it would have been obvious to one of ordinary skill in the art at the time the invention was made to have substituted/changed a skull or cylindrical shaft or an irregular polygon or a shape of a hand for the element (4, 5, 7) of . . . Lancaster.” Final Act. 8. The Examiner reasoned that “a change in form or shape or substitution from one part/device to another is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results.” Id. (citing In re Dailey, 357 F.2d 669 (CCPA 1966)). According to the Examiner, “[a] [c]hange in aesthetic (ornamental) design generally will not support patentability.” Id. (citing In re Seid, 161 F.2d 229, 231 (CCPA 1947)). Appellant argues that there is no evidence that the claimed features are within the level of ordinary skill, and the Examiner has not met the requirements for official notice. See Appeal Br. 13. Appellant asserts that Appeal 2016-003516 Application 13/421,927 13 “[t]he mere possibility that one skilled in the art could have provided the additionally recited features of claims 14–16 and 22 ignores the threshold question of whether the skilled artisan would have had any reason to do so.” Id. at 13–14. This argument is not persuasive of error because it is not responsive to the rejection as articulated by the Examiner. The Examiner did not make a finding of Official Notice, but rather, as discussed above, determined that the skull, cylindrical shaft, and irregular polygon would have been obvious as mere changes in shape of the body, which do not yield unexpected results. See Final Act. 8 (citing In re Dailey, 357 F.2d 669 (CCPA 1966)). In this regard, the present case is analogous to the facts of Dailey, in which the appellants claimed a disposable nursing container for infants shaped as “a portion of a sphere less than a hemisphere.” Dailey, 357 F.2d at 670. The court held that the appellants had failed to establish the significance of the configuration of the container, so that the claimed shape was merely one of numerous shapes a person of ordinary skill in the art would find obvious. See id. at 672–73. Here, Appellant likewise has failed to establish the significance of the shape of the body, which appears to be but one of numerous shapes a person of ordinary skill in the art would find obvious. Moreover, Appellant does not persuasively refute the Examiner’s determination that the particular shapes recited in claims 14–16 are aesthetic or ornamental. The particular shapes of the body relate to ornamentation only, have no mechanical function whatsoever, and thus cannot be relied on for patentability. See In re Seid, 161 F.2d at 231. After careful consideration of all the evidence, Appellant’s arguments do not apprise us of error in the Examiner’s findings or reasoning in support Appeal 2016-003516 Application 13/421,927 14 of the conclusion of obviousness. We sustain the rejection of claims 14–16 under 35 U.S.C. § 103(a) as being unpatentable over Lancaster. Claim 17 Claim 17 recites that “the charm keeper is movable between a first open position to a second closed position through a hinge.” Appeal Br. 23, Claims App. The Examiner acknowledged that “Lancaster does not disclose a hinge device for closing and opening connection device,” but found that “Eiben teaches a charm device having hinge device (15, 16, fig.1) for closing and opening of the ring.” Final Act. 8. The Examiner concluded that, given the teachings of the prior art, it would have been obvious to “modif[y] the charm keeper having hinge device for opening and closing for Lancaster as taught by Eiben, [as] such modification would be considered . . . a simple substitution of one know[n] element/device for another to obtain predictable results.” Id. Appellant contends that “[t]he Examiner’s proposed modification of Lancaster is unclear.” Appeal Br. 14. In particular, Appellant asserts that “[t]he Examiner does not specifically identify what portion of Lancaster’s button it would have been ‘obvious’ to modify by using an opening and closing spring ring of the type disclosed by Eiben.” Id. at 15. We agree that a sustainable case of obviousness has not been established. Rejections based on obviousness must rest on a factual basis; in making such a rejection, the Examiner has the initial burden 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. See In re Warner, Appeal 2016-003516 Application 13/421,927 15 379 F.2d 1011, 1017 (CCPA 1967). Here, absent improper hindsight reconstruction, we do not see a reasoned explanation based on a rational underpinning as to how or why one of ordinary skill in the art would have been led to modify the device of Lancaster based on the teachings of Eiben, and a reason for such modification is not otherwise evident from the record. Accordingly, based on the record before us, the Examiner has not met the burden of establishing a proper prima facie case of obviousness of the subject matter of claim 17. On this basis, we do not sustain the rejection of claim 17 under 35 U.S.C. § 103(a) as being unpatentable over Lancaster and Eiben. Claims 20–23 In contesting the rejection of independent claim 20, Appellant argues that “Lancaster fails to disclose the limitation wherein ‘the charm keeper is moveable from a first open position in which charms may be received to a second closed position in which charms are detained on the charm keeper.’” Reply Br. 4. This argument is substantially similar to an argument presented for patentability of claim 6 and, for the same reasons discussed above, is not persuasive of error in the rejection of claim 20. Appellant also argues that “Lancaster’s alleged ‘charm keeper’ is not moveable from a first open position to a second closed position while . . . the alleged charm engaging portion is mounted to an attachment portion (as recited in claim 20).” Reply Br. 5 (emphasis omitted). This argument is unconvincing. The Examiner found that Lancaster’s head-cap 1 and head- plate 2 correspond to the attachment portion, socket 3 corresponds to the charm engaging portion, and shank-plate 5 corresponds to the charm keeper. Appeal 2016-003516 Application 13/421,927 16 See Final Act. 6. In this regard, Lancaster discloses that stem 5a of shank- plate 5 screws into socket 3, and socket 3 is riveted to head-plate 2. See Lancaster, p. 2 (left column), ll. 16–20, 38–39, 49–50. Thus, Appellant does not apprise us of error in the Examiner’s findings as to the disclosure of Lancaster, which are supported by a preponderance of the evidence. Accordingly, we sustain the rejection of claim 20, and of dependent claims 21 and 23, for which Appellant does not present any separate arguments, under 35 U.S.C. § 102(b) as anticipated by Lancaster. In contesting the rejection of claim 22, which depends from claim 20, Appellant relies on the same arguments presented for patentability of claims 14–16. See Appeal Br. 13–14. For the same reasons that Appellant’s arguments do not apprise us of error in the rejection of claims 14–16, these arguments likewise do not apprise us of error in the rejection of claim 22. Accordingly, we sustain the rejection of claim 22 under 35 U.S.C. § 103 as being unpatentable over Lancaster. Claims 7, 10, 18, 19, and 26–28 Claim 26 is directed to a shoe that includes, in relevant part, “the device of claim 6, wherein the attachment strip of the attachment portion is attached directly to the outer sole at the heel breast.” Appeal Br. 25, Claims App. Claim 28 is directed to a shoe that includes, in relevant part, “the device of claim 20, wherein the attachment portion is attached directly to the outer sole at the heel breast.” Id. In contesting the Examiner’s rejection of these claims, Appellant argues that “[o]ne skilled in the art would have had no reason to modify Lancaster’s threadless button to attach it to the sole of a shoe.” Id. at 19. We agree. Appeal 2016-003516 Application 13/421,927 17 In rejecting claims 26 and 28, the Examiner found that “Reid discloses a shoe (a footwear article having an insole, outsole and an upper, a breast region between a heel region [and] a forefoot region, see fig.8).” Final Act. 9 (italics omitted). The Examiner acknowledged that Reid “does not disclose[] the device of claim 6, wherein the attachment strip of the attachment portion is attached directly to the outer sole at the heel breast,” and relied on Lancaster for disclosing this feature. Id. at 9–10. The Examiner concluded that, given the teachings of the prior art, it would have been obvious to “modif[y] the device of claim 6, wherein the attachment strip of the attachment portion is attached directly to the outer sole at the heel breast for the footwear article of Reid as taught by Lancaster.” Id. at 10. According to the Examiner, “such modification would be considered a mere . . . substitut[ion] of one known device for another [and] would have yielded [a] predictable result,” namely, “substitut[ing] a dispenser for the attachment portion as discussed in claim 6 to form a similar result.” Id. We find deficient the Examiner’s reasoning provided in support of the conclusion of obviousness. In particular, the Examiner has not sufficiently articulated reasoning based on rational underpinnings as to why one skilled in the art would have been prompted to combine the teachings of Reid and Lancaster. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (stating that “[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))). Here, the reasoning provided in the rejection makes a conclusory proposal to “substitute” the attachment device from Lancaster in place of the scent Appeal 2016-003516 Application 13/421,927 18 dispenser on the shoe of Reid without adequately explaining how or why one of ordinary skill in the art would have been led to make such a substitution. Moreover, Lancaster disclosing the device of claims 6 and 20 does not necessarily mean that it would have been obvious to modify Reid as proposed by the Examiner. We note that a claim “composed of several [features] is not proved obvious merely by demonstrating that each [feature] was, independently, known in the prior art.” KSR Int’l Co., 550 U.S. at 418. Rather, a sustainable obviousness rejection further needs to explain the reasoning by which those findings support the Examiner’s conclusion of obviousness. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–30 (Fed. Cir. 2009). In this case, the rejection simply fails to meet this required standard. Accordingly, based on the record before us, the Examiner has not met the burden of establishing a prima facie case of obviousness. On this basis, we do not sustain the rejections of claims 26 and 28, or of claims 7, 10, 18, 19, and 27, depending from claim 26, under 35 U.S.C. § 103(a). DECISION We AFFIRM the Examiner’s decision rejecting claims 6, 8, 9, 11–16, and 20–23, as set forth above. We REVERSE the Examiner’s decision rejecting claims 1–5, 7, 10, 17–19, and 24–28, as set forth above. Appeal 2016-003516 Application 13/421,927 19 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART