Ex Parte Adair et alDownload PDFPatent Trial and Appeal BoardOct 24, 201814563135 (P.T.A.B. Oct. 24, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/563,135 12/08/2014 Michael R. Adair 34399 7590 10/26/2018 GARLICK & MARKISON 106 E. 6th Street, Suite 900 AUSTIN, TX 78701 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 ATTORNEY DOCKET NO. CONFIRMATION NO. ATZ00002C4 1078 EXAMINER BAYS, MARIE D ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 10/26/2018 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): MMurdock@TEXASPATENTS.COM bpierotti@texaspatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL R. ADAIR and TIMOTHY W. MARKISON 1 Appeal2018-000332 Application 14/563,135 Technology Center 3700 Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and WILLIAM A. CAPP, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from the Examiner's Final Rejection of claims 1-17. Final Act. 1 (Office Action Summary). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we find error in some of the Examiner's rejections. Accordingly, we AFFIRM-IN-PART. 1 Athalonz, LLC ("Appellant") is the applicant as provided in 37 C.F.R. § 1.46 and is identified as the real party in interest. Br. 2. Appeal2018-000332 Application 14/563,135 THE CLAIMED SUBJECT MATTER The disclosed subject matter "relates generally to footwear and more particularly to athletic positioning footwear." Spec. 1 :21-22. Apparatus claims 1 and 9 are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. An apparatus comprises: a heel platform section having a width and a length, wherein the width is from an inner edge of the apparatus to an outer edge of the apparatus and the length is from a rear edge of the apparatus to a first intersection line, wherein the heel section has substantially zero slope from the inner edge of the apparatus to the outer edge of the apparatus; a mid-foot section juxtaposed to the heel platform section along the first intersection line, wherein the mid-foot section includes a first slope from a second intersection line to the first intersection line along a first line of the mid-foot section, a second slope from the second intersection line to the first intersection line along a second line of the mid-foot section, and a third slope from the second line of the mid-foot section to the first line of the mid-foot section, wherein the first slope is greater than the second slope, and wherein the third slope has a first variable angle based on a difference between the first slope and the second slope; and a toe section juxtaposed to the mid-foot section along the second intersection line, wherein toe section includes a fourth slope from a front edge of the apparatus to the second intersection line along a third line of the toe section, a fifth slope along a fourth line of the toe section from the front edge of the apparatus to the second intersection line, and a sixth slope from the third line of the toe section to the fourth line of the toe section, wherein the fourth slope is greater than the fifth slope, wherein the sixth slope has a variable angle based on a difference between the fourth slope and the fifth slope, and wherein, when the apparatus is worn, the first through sixth slopes cause imbalanced weight bearing forces with more of the weight bearing forces 2 Appeal2018-000332 Application 14/563,135 being at a ball-of-foot and big toe area than in other areas of the toe and mid-foot sections. REFERENCE RELIED ON BY THE EXAMINER Talarico, II us 4,620,376 Nov. 4, 1986 THE REJECTIONS ON APPEAL Claim 17 is rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims 1-17 are rejected under 35 U.S.C. § 102(b) as anticipated by Talarico II. ANALYSIS The rejection of claim 17 as being indefinite The Examiner addresses such recited phrases as "baseball spikes," "basketball tread pattern," "tennis tread pattern," "golf soft cleats," "cross- trainer tread pattern," and the like. Final Act. 2. The Examiner contends that these phrases "are vague, indefinite, and have no known conventional meaning and therefore it is not clear what structural limitations applicant intends to encompass with such language." Final Act. 2. Appellant disagrees stating, "A person of ordinary skill in the art knows that different tread patterns, cleats, etc., may be specific to a type of shoe" and that "one of ordinary skill in the athletic industry would know that different types of athletic shoes have different tread patterns." Br. 7, 8. The Examiner is not disputing that "different types of athletic shoes have different tread patterns." Instead, the Examiner is asserting, "[ t ]hese phrases do not have any known definition" and that "there is no clear known structures that would be encompassed by such." Final Act. 2; see also 3 Appeal2018-000332 Application 14/563,135 Ans. 2 ("there is no definition of any specific tread pattern for specific intended uses."). There is merit to the Examiner's position. For example, "baseball spikes" may identify a spike for use in the sport of baseball, but Appellant does not explain how such a "spike" identifies a well-known and particular structure. This is even more evident with respect to the numerous claim limitations directed to a "tread pattern." Appellant does not explain what particular structure or arrangement the "tread pattern" is to have, other than that it is employed in certain sports. For example, Appellant does not explain how a "basketball tread pattern" differs from a "tennis tread pattern," or how either of these differ from a "cross-trainer tread pattern." Appellant does not identify that which might structurally distinguish the one from the other except by stating, by way of example, "one of average skill in the art would know that a golf shoe includes a golf shoe tread pattern." Br. 8. Guidance on this point is provided by MPEP § 2173 which states, "[ t ]he primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent." Here, there is no clarity as to what the boundaries of these "spikes" or "tread patterns" might be, other than that shoes worn while participating in a certain sport may have "baseball spikes" or a "basketball tread pattern," and the like. Accordingly, we agree with the Examiner that the phrases highlighted by the Examiner (see Final Act. 2) render claim 17 indefinite. 4 Appeal2018-000332 Application 14/563,135 The rejection of claims 1-17 as anticipated by Talarico II Appellant argues claims 1-17 together. Br. 8-12. We select claim 1 for review, with claims 2-17 standing or falling with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). Claim 1 includes such limitations as first and second "intersection lines," first through fourth "lines," and first through sixth "slopes." These limitations address the geometry between and within the recited heel, mid- foot, and toe sections. The Examiner states that claim 1 is anticipated because "Talarico II shows a shoe having a sole with a heel platform with substantially zero slope (see figure 10), and midfoot (see figure 11) and a toe section (see figure 12) with slopes as claimed." Final Act. 3; see also Ans. 3 (referencing Talarico II Figs. 9-14). The Examiner's discussion of Talarico II (Final Act. 3; Ans. 3--4), Talarico II's own written description, and Talarico II's drawings leave a lot to be desired as to what structure in Talarico II the Examiner is or might possibly be correlating to the above recited "intersection lines," "lines," and "slopes." To assist in underscoring the Examiner's somewhat incomplete description and/or correlation to Talarico II, we are reproducing figures 9-14 of Talarico II below. 5 Appeal2018-000332 Application 14/563,135 9 __ .;tn ~·-· \/" /.'( ~ ,~- Above Figure 9 from Talarico II illustrates the various cut or section lines that have been taken and which are further illustrated in Figures 10-14. Claim 1 recites a length of the heel section as extending "from a rear edge of the apparatus to a first intersection line." The Examiner fails to identify what is considered to be the "first intersection line" in Talarico II. 6 Appeal2018-000332 Application 14/563,135 Claim 1 further recites "a first slope [ that extends] from a second intersection line to the first intersection line along a first line of the mid-foot section." Again, the Examiner is silent as to where Talarico II discloses the "first slope," the "second intersection line," and how this slope extends along a "first line." Many other examples of the Examiner failing to correlate the various recited claim limitations to Talarico II can be provided. Suffice it to say, the Examiner failed to provide such niceties stating instead that Talarico II "does show slopes on both the medial side (see 14 Min figures 9-14) and the lateral side (14L in figures 9-14)." Final Act. 3. While technically true (i.e., Talarico II depicts slopes extending from one side to the other), claim 1 recites specific slopes that extend for a certain distance in a certain direction along a certain path, and/ or between certain lines; none of which are identified in Talarico II by the Examiner with any clarity. For example, claim 1 recites "a third slope from the second line of the mid-foot section to the first line of the mid-foot section" and "a fifth slope [that extends] along a fourth line of the toe section." The Examiner merely states that Talarico II discloses slopes "shown in figures 9-14 and more specifically shown at the cross section/transverse direction between 14L and 14M." Ans. 3. Such a general assessment presented by the Examiner is not sufficient. We are instead instructed, "[a]n examiner's belief, however, must be tethered to or grounded in some rationale so as to establish a prima facie case of anticipation." In re Chudik, 674 Fed. Appx. 1011, 1015 (Fed. Cir. 2017) (referencing In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997)). We are further informed that anticipation requires "[t]he identical invention 7 Appeal2018-000332 Application 14/563,135 [to] be shown in as complete detail as is contained in the patent claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). Not only must each claim element be shown in a single reference, but the elements must be "arranged or combined in the same way as recited in the claims." Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008). Further instructions from our reviewing court state that "[i]f examination at the initial stage does not produce a prima facie case of unpatentability, then without more the Appellant is entitled to grant of the patent." In re Oetiker, 977 F.2d 1443, 1446 (Fed. Cir. 1992). While it is not within our power to "grant" a patent, it is within our power to reverse a rejection rendered by the Examiner. We hereby do so. Accordingly, and based on the record presented, we do not sustain the Examiner's rejection of claims 1-17 as being anticipated by Talarico II. DECISION The Examiner's rejection of claim 17 as being indefinite is affirmed. The Examiner's rejection of claims 1-17 as being anticipated by Talarico II is reversed. No time period for taking any subsequent action in connection with this appeal (see 37 C.F.R. § 1.136(a)(l)) may be extended (see 37 C.F.R. § 1.136(a)(l )(iv)). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation