Elisha George. Pierce et al.

Patent Trials and Appeals Board

Dec 5, 2019

13831347 - (R) (P.T.A.B. Dec. 5, 2019)

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.
13/831,347 03/14/2013 Elisha George Pierce 106073-5001-US 4863
7590 12/05/2019
George Pierce
7even Dynamics, Inc.
1013 Amarillo Avenue
Palo Alto, CA 94303
EXAMINER
NGUYEN, BAO-THIEU L
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
12/05/2019 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 ELISHA GEORGE PIERCE and THOMAS JELMYER
____________________

Appeal 2017-011818
Application 13/831,3471
Technology Center 3700
____________________

Before MICHAEL C. ASTORINO, TARA L. HUTCHINGS, and
MATTHEW S. MEYERS, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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
7EVEN DYNAMICS, Inc. Appeal Br. 3.
Appeal 2017-011818
Application 13/831,347

2
STATEMENT OF THE CASE
The Appellant filed a request for rehearing under 37 C.F.R. § 41.52 on
November 4, 2019 (hereinafter “Request”).2 The Request seeks
reconsideration of a decision, mailed September 4, 2019 (hereinafter
“Decision”).3
In the Decision we reversed the Examiner’s rejections of claims 1, 5–
8, and 10 under pre-AIA 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement (Rejection I) and claim 5
under pre-AIA 35 U.S.C. § 112, second paragraph, as incomplete for
omitting essential structural cooperative relationships of elements
(Rejection II). Decision 3–7. We entered a new ground of rejection of
claims 1, 5–8, and 10 under 35 U.S.C. § 112, second paragraph, as indefinite
for failing to particularly point out and distinctly claim the subject matter
which applicant regards as the invention. Id. at 7–12. As a result of this
indefiniteness, we reversed pro forma the Examiner’s rejections of claims 1,
5–8, and 10 under § 103(a) as unpatentable over Davis et al. (US
2007/0277398 A1, pub. Dec. 6, 2007) (“Davis”) and Borsoi et al. (US
6,560,898 B2, iss. May 13, 2003) (“Borsoi”) (Rejection III) and Davis,
Borsoi, and Steinberg (US 3,258,820, iss. July 5, 1966) (Rejection IV). Id.
at 7. We have jurisdiction over the Request under 35 U.S.C. § 6(b).

2 The Request refers to the signed copy of the request for rehearing, which
lacks page numbers. We designate page 1 as the page that includes the
heading “Request for Rehearing by the Board upon the same Record Filed
November 4, 2019” and number the remaining pages in the Request
consecutively therefrom.
3 The Appellant filed a request for an oral hearing on October 25, 2019. The
oral hearing request is not an appropriate response after a decision is
rendered. See 37 C.F.R. § 41.47(b).
Appeal 2017-011818
Application 13/831,347

3
In the Request, the Appellant seeks to overcome the new ground of
rejection of claims 1, 5–8, and 10 under 35 U.S.C. § 112, second paragraph,
as indefinite. See Request 1–3. Additionally, the Appellant briefly
comments on Davis’ disclosure. Id. at 2, 3. To the extent that the comments
concern the Examiner’s rejections of the pending claims based in-part on
Davis’s disclosure (i.e., Rejections III & IV), these rejections have been
reversed pro forma. Therefore, any argument premised thereon is moot.
However, to the extent that the comments seek to overcome the new ground
of rejection of the pending claims under 35 U.S.C. § 112, second paragraph,
as indefinite, we will discuss the comments in the analysis below.
ANALYSIS
Claims 1, 5–8, and 10 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite because each of independent claims 1, 5, and 6
recite the term “canopy.” See Decision 7–12. The support for rejection is
in-part based on following:
• “the claims do not provide a meaningful limitation which
enlightens a skilled artisan as to the meaning of the term
‘canopy’” (id. at 9);
• the Specification of the present application does not provide
an explicit definition of the term “canopy” (id.);
• there is no showing in the record that “the term ‘canopy’ is
a well-known term in the art of footwear” (id.);
• dictionary definitions of the term “canopy,” e.g., “a
covering, usually of fabric, supported on poles or suspended
above a bed, throne, exalted personage, or sacred object,”
“fail[s] to provide proper context for the claimed ‘canopy’
Appeal 2017-011818
Application 13/831,347

4
of a ‘tongueless shoe’” (id. at 10 (citing Canopy def.,
DICTIONARY.COM, https://www.dictionary.com/
browse/canopy (last visited Aug. 21, 2019))); and
• the Examiner’s application of the Davis reference in the
rejections under § 103(a) implied a construction of the term
“canopy” that was different than the construction advanced
by the Appellant (id. at 8–9).
The first reason for the rejection of independent claims 1, 5, and 6 is
best exemplified by the question, what is the claimed “canopy” being used to
cover? Id. at 10. As stated in the Decision, “one of ordinary skill in the art
would understand that the claimed ‘canopy’ of the ‘tongueless shoe’ may
cover a user’s foot (e.g., the instep of the foot), a portion of a shoe (e.g., the
upper and/or side of the shoe), or both.” Id. at 10–11.
The Appellant does not cogently answer this first question. The
Appellant asserts that the use of the term “canopy,” as it relates to the upper
pattern design of the shoe, redefines the traditional limits of the term
“vamp.” See Request 1. The Appellant cites to a dictionary definition of the
term “vamp,” meaning “the part of a shoe upper or boot upper covering
especially the forepart of the foot and sometimes also extending forward
over the toe or backward to the back seam of the upper.” Id.; see Vamp
Definition 2 (noun), MERRIAM-WEBSTER’S ONLINE DICTIONARY,
https://www.merriam-webster.com/dictionary/vamp (last visited Nov. 15,
2019). The Appellant explains how the canopy upper pattern design is
inventive as compared to a traditional shoe vamp in that “a single piece of
shoe upper material opens substantially asymmetrically from the top of the
shoe and closes ‘rearwardly’ along an axis line (as diagramed) toward the
Appeal 2017-011818
Application 13/831,347

5
foot heel using a plurality of methods in claims 1,5–8[,] and 10.” Request 1.
Additionally, the Appellant asserts that the canopy upper pattern design has
various functional benefits for “a variety of populations –stroke, MS,
Parkinsons, severe traumas” and accommodates a variety of foot conditions,
e.g., bunions, hammer toes, high insteps, etc. Id. at 1–2.
However, the Appellant does not provide an explicit definition of the
claim term “canopy” or assert that the term is a well-known term in the art of
footwear or shoemaking. Additionally, the Appellant does not explain how
a dictionary definition of the claim term “canopy” has a particular meaning
in context with the claims. Rather, the Appellant seeks to define the term
“canopy” by contrasting the term “vamp” with the functionality and benefits
of the invention as a whole. See id. In view of the foregoing, we determine
that the metes and bounds of the claim term “canopy” remain unclear for the
first reason.
The second reason for the rejection of independent claims 1, 5, and 6
is best exemplified by the question, “what are the limits set forth by the term
‘substantially’ in ‘substantially covers a side of a shoe’?” Decision 11. This
question is in response to the Appellant’s construction of the “claim term
‘canopy as an article within the upper of a shoe that substantially covers a
side of a shoe’ (Reply Br. 9).” Id. As stated in the Decision,
Although one of one skill in the art may look to the drawings of
the present application (e.g., Figures 2A–C) to obtain examples
of a canopy that ‘substantially covers a side of a shoe,’ these
examples are unclear as to the limits (i.e., the metes and
bounds) of what substantially covering a side of a shoe may
entail.
Id.
Appeal 2017-011818
Application 13/831,347

6
The Appellant does not respond to this question. Therefore, we
determine that the metes and bounds of the claimed term “canopy” remain
unclear for the second reason.
The third reason for the rejection of independent claims 1, 5, and 6 is
best exemplified by the question, what are the limits set forth by the term
“substantial” in substantial asymmetry of the upper of the shoe? See
Decision 11. This question is in response to the Appellant’s assertion that
“the claimed ‘canopy’ ‘introduces substantial asymmetry to the upper of the
shoe with respect to the sides of the shoe’ (Reply Br. 9).” Id. This question
assumes, arguendo, that the claim term “canopy” requires a substantial
asymmetry of the upper of the shoe. In the Decision we explained that “[a]t
best, an asymmetry that is created in the upper of the shoe is an unclaimed
characteristic of a canopy and not part of its definition.” Id.
The Appellant does not cogently answer this third question. Rather,
the Appellant appears to focus on the importance of a single piece of
material –– i.e., “one-piece canopy,” as recited in claims 1, 5, and 6 –– “that
opens with ‘substantial asymmetry’ along a dotted axis line on the top of the
shoe” (Request 2), without explaining why the claim term “canopy” includes
in its definition substantial asymmetry. Additionally, the Appellant does not
explain how this characteristic is required by the claims. Therefore, we
determine that the metes and bounds of the claimed term “canopy” remain
unclear for the third reason.
Lastly, we note that the Appellant contrasts Davis’ invention with the
inventiveness of the present invention. See id. at 2, 3. We do not understand
the Appellant’s comments as to the differences of the Davis’ invention and
the present invention to be persuasive as to any of the three reasons
Appeal 2017-011818
Application 13/831,347

7
discussed above. However, the comments underscore the need to
understand the metes and bounds of the term “canopy” before making
determinations considering issues involving patentability over the prior art.
In conclusion, we have considered the Appellant’s argument, but fail
to be persuaded for the reasons discussed above.
DECISION
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C.
§
Reference(s)
/Basis
Denied Granted
1, 5–8, 10 112,
second
paragraph
Indefiniteness 1, 5–8, 10

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
1, 5–8, 10 112,
first
paragraph
Written
Description
1, 5–8, 10
5 112,
second
paragraph
Omitting
Essential
Elements
5
1, 6–8, 10 103(a) Davis,
Borsoi
1, 6–8, 10
5 103(a) Davis,
Borsoi,
Steinberg
5
1, 5–8, 10 112,
second
paragraph
Indefinite 1, 5–8, 10
Overall
Outcome
1, 5–8, 10 1, 5–8, 10
DENIED