HOOD INC.

Patent Trials and Appeals Board

Sep 27, 2021

2021002024 (P.T.A.B. Sep. 27, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/320,423 12/20/2016 Yukihiko YAMADA 9068/0001PUS1 3758
60601 7590 09/27/2021
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
Fairfax, VA 22033
EXAMINER
LYNCH, MEGAN E
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
09/27/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
MAILROOM@MG-IP.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUKIHIKO YAMADA

Appeal 2021-002024
Application 15/320,423
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
BRUCE T. WIEDER, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4–6, and 17–21. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
“HOOD INC.” Appeal Br. 2.
Appeal 2021-002024
Application 15/320,423

2

STATEMENT OF THE CASE
Claimed Subject Matter
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below with bracketed notations added.
1. An inner boot made of a thermoplastic plastic removably
inserted into an outer boot for either skiing or snowboarding,
the inner boot comprising:
[(i)] a bottom plate (10) that is disposed in the outer boot;
and
[(ii)] a foot wrap portion (20) that is formed at the bottom
plate such that the foot wrap has a boot height designed for
either skiing or snowboading [sic], the foot wrap potion [sic]
having a malleolus portion (28) that is to wrap a malleolus of a
user, and a calf portion (29) that extends from an upper side of
the malleolus portion and so as to go along a calf of the user,
wherein:
[(iii)] the inner boot is integrally formed with a single
thermoplastic material wherein the thermoplastic material is
foamed during only a single foam molding process such that the
bottom plate and the foot wrap portion, which has the malleolus
portion and the calf portion, are made as a single piece and
another member is not disposed on either the malleolus portion
or the calf portion of the foot wrap portion, and
[(iv)] the thermoplastic material is a mixed resin that
comprises a foaming agent and at least two types of ethylene
vinyl acetate copolymer resins (or EVAs) that are a first EVA
and a second EVA, both of which being comprised of ethylene
and vinyl acetate wherein the foaming agent, the first EVA and
the second EVA are present in a mixed state,
[(v)] the first EVA is contained in the thermoplastic
material within a range from more than 0% to 28% by weight
and
[(vi)] the second EVA is contained in the thermoplastic
material within a range from 4% to 13% by weight,
[(vii)] each of the first and second EVAs contains
ethylene and vinyl acetate at content percentages by weight and
Appeal 2021-002024
Application 15/320,423

3

has a predetermined melt flow rate value (or MFR value) and a
predetermined hardness,
[(viii)] the content percentage of the ethylene in the first
EVA is greater than the content percentage of the ethylene in
the second EVA,
[(ix)] the content percentages of the vinyl acetate in the
first and second EVAs are ranged from 25% to 43%, and the
content percentage of the vinyl acetate in the first EVA is
smaller than the content percentage of the vinyl acetate in the
second EVA by around 14% or more,
[(x)] the MFR values of the first and second EVAs are
ranged from 7.0g/10 min to 52.0g/10 min, and the MFR of the
first EVA is smaller than that of the second EVA,
[(xi)] a product hardness of the inner boot is ranged from
33°to 43°when measured with an Asker C type durometer,
[(xii)] the foaming agent is contained such that the foot
wrap expands to reach the boot height through the single foam
molding process.
Appeal Br., Claims App.
References
The prior art relied upon by the Examiner is:
Name Reference Date
Hozan US 6,604,477 B1 Aug. 12, 2003
Shen et al. (“Shen”) US 2014/0066530 A1 Mar. 6, 2014
Zhao et al. (“Zhao”) US 2012/0144700 A1 June 14, 2012
Palau FR 2,971,918 Aug. 31, 2012
Crawford, (https://www.sciencedirect.com/topics/chemistry/vinyl-
acetate; Rotational Molding Technology, 2002).
Rejections
Claims 1, 4, and 17–21 are rejected under 35 U.S.C. § 103 as
unpatentable over Zhao and Shen, as evidenced by Crawford.
Claim 5 is rejected under 35 U.S.C. § 103 as unpatentable over Zhao,
Shen, and Palau.
Appeal 2021-002024
Application 15/320,423

4

Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over Zhao,
Shen, and Hozan.

ANALYSIS
The Examiner finds that the combined teachings of Zhao and Shen, as
evidenced by Crawford, teach the subject matter of claim 1, except for some
of the properties of the raw materials of the claimed “thermoplastic
material,” including:
• “the first EVA is contained in the thermoplastic material
within a range from more than 0% to 28% by weight,” as
recited in limitation (v);
• “the content percentage of the ethylene in the first EVA is
greater than the content percentage of the ethylene in the
second EVA,” as recited in limitation (viii);
• “the content percentage of the vinyl acetate in the first EVA
is smaller than the content percentage of the vinyl acetate in
the second EVA by around 14% or more,” as recited in
limitation (ix); and
• “the MFR of the first EVA is smaller than that of the second
EVA,” as recited in limitation (x).
Final Act. 3–7. The Examiner determines:
[I]t would have been obvious to one having ordinary skill in the
art . . . to have modified the first and second EVAs of combined
Zhao and Shen to have the claimed percentages by weight,
ethylene content percentages, and vinyl acetate percentages, in
order to produce the optimum material for cushioning and
durability. Further, since the claimed values are merely an
optimum or workable range, it has been held that where the
general conditions of a claim are disclosed in the prior art,
discovering the optimum or workable ranges involves only
routine skill in the art. . . . Additionally, Applicant has no
criticality for the specific material or percentages claimed of
material composition.
Appeal 2021-002024
Application 15/320,423

5

Final Act. 7 (citing MPEP § 2144.05 “Obviousness of Similar and
Overlapping Ranges, Amounts, and Proportions”); see In re Aller, 220 F.2d
454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.”); MPEP § 2144.05(II)(A)
(“Optimization Within Prior Art Conditions or Through Routine
Experimentation”).
The reason for the Examiner’s proposed modification is “to produce
the optimum material for cushioning and durability.” Final Act. 7. We
understand this reason to be tied directly to a principle of law (i.e., the
holding of Aller). An exception to the rule of Aller that the discovery of an
optimum value of a variable in a known process is normally obvious, is the
case where a parameter optimized was not recognized to be a result-effective
variable. See In re Antonie, 559 F.2d 618, 620 (CCPA 1977); MPEP
§ 2144.05(II)(B) (“There Must Be an Articulated Rationale Supporting the
Rejection”). It is apparent to us from the reasoning in the rejection that the
Examiner considers cushioning and durability to be result-effective
variables. However, the Examiner fails to sufficiently explain how the prior
art recognizes the above-recited portions of limitations (v), (viii), (ix), and
(x) as variables that optimize cushioning and durability. Therefore, we
determine that the Examiner’s rejection fails to adequately establish on the
record that cushioning and durability are result-effective variables.
Furthermore, with regard to the Examiner’s determination that the
“Applicant has no criticality for the specific material or percentages claimed
of material composition” (Final Act. 7), the Appellant argued that the
working examples described in the Specification provide criticality for
Appeal 2021-002024
Application 15/320,423

6

specific materials and percentages. See Reply Br. 3 (citing Spec. ¶¶ 55–63
(Tables 1, 2)); Appeal Br. 15. The Appellant points out that the testing
results of “Good” for “Formability” and “Wear Comfort” for sports inner
boots are exhibited in working examples 3–5, but not working examples 1,
2, and 6. See Reply Br. 3 (citing Spec. ¶ 63 (Table 2)). In response, the
Examiner does not explain why the materials having testing results of
“Good” for “Formability” and “Wear Comfort” are not critical. Instead, the
Examiner appears to dismiss the Appellant’s argument by stating that the
reason for further modifying the combined teaching of Zhao and Shen does
not have to be for the exact same reason as the Appellant’s invention.
Ans. 6. Here, the Examiner’s dismissal of the Appellant’s argument
confuses the requirement that a rejection on obvious grounds is required to
have “some articulated reasoning with some rational underpinning,” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)), with a sufficient response
that is needed to rebut the Appellant’s argument that the working examples
provide criticality. In this case, the Appellant provides support for the
assertion that the claimed composition of materials is critical in light of the
working examples in the Specification and the Examiner’s response fails to
explain why the support provided does not show criticality.
Additionally, we note that the Examiner determines that “the claimed
limitation lacks criticality as it recites ‘around 14% or more’, which includes
both percentages below 14% and up to 100%.” Ans. 6 (emphasis added).
This determination is based on a faulty understanding of limitation (ix). The
entirety of limitation (ix) recites:
[(ix)] the content percentages of the vinyl acetate in the
first and second EVAs are ranged from 25% to 43%, and the
Appeal 2021-002024
Application 15/320,423

7

content percentage of the vinyl acetate in the first EVA is
smaller than the content percentage of the vinyl acetate in the
second EVA by around 14% or more.
Appeal Br., Claims App. Limitation (ix) sets forth the minimum value for
the content percentages of the vinyl acetate in the first EVA at 25% and the
maximum value for the content percentage of the vinyl acetate in the second
EVA at 43%. The difference between 25% and 43 % is 18%. So, contrary
to the Examiner’s determination, the range of percentages is not between
below 14% and up to 100%, rather the range is between around 14%, which
may be below 14%, and up to 18%, which is difference of about 4%. See,
e.g., Spec. ¶ 59 (describing EVA-1 as having a content percentage of vinyl
acetate of 26% and EVA-2 as having a content percentage of vinyl acetate of
40%). Therefore, the Examiner’s determination that the claimed limitation
lacks criticality because it includes percentages up to 100% is based on a
faulty premise. Moreover, we note that the Examiner’s determination does
not shed light on the Appellant’s rebuttal that the working examples in the
Specification provide criticality.
In the Answer, the Examiner appears to add some reasoning in
support of the conclusion of obviousness in that at least some of the above-
recited portions of limitations (v), (viii), (ix), and (x) would have been
obvious to one of ordinary skill in the art apart from a lack of criticality. See
Ans. 5–6. However, the Examiner does not provide adequate findings
and/or reasoning to remedy the deficiency in the Examiner’s rejection as
discussed above.
Thus, we do not sustain the Examiner’s rejection of independent
claim 1 and dependent claims 4 and 17–21. Also, the Examiner fails to rely
on the teachings of Palau or Hozan in any manner that would remedy the
Appeal 2021-002024
Application 15/320,423

8

deficiency in the Examiner’s rejection as discussed above. Therefore, we
likewise we do not sustain the Examiner’s rejection of dependent claims 5
and 6.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 17–21 103 Zhao, Shen2

1, 4, 17–21
5 103 Zhao, Shen, Palau 5
6 103 Zhao, Shen, Hozan 6
Overall
Outcome
1, 4–6,
17–21

REVERSED

2 As evidenced by Crawford.