Ex Parte Adair et al

Patent Trials and Appeals Board

Feb 12, 2019

13867436 - (D) (P.T.A.B. Feb. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/867,436 04/22/2013 Michael R. Adair
34399 7590 02/14/2019
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.
ATZ00005 1066
EXAMINER
LYNCH, MEGAN E
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
02/14/2019 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
Appeal 2018-004634
Application 13/867 ,436 1
Technology Center 3700
Before LINDA E. HORNER, MICHAEL L. HOELTER, and
BRENT M. DOUGAL, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's rejections of claims 1-4 and 8-11. Final Office Action
(November 16, 2016, "Final Act."). Claims 5-7 and 12-14 are withdrawn
from consideration as being directed to non-elected species. Id. at 1. We
have jurisdiction under 35 U.S.C. § 6(b ).
1 Admark Athletic Ventures, LLC, now by change of name Athalonz, LLC,
("Appellant") is the applicant under 3 7 C.F .R. § 1.46 and is identified as the
real party in interest. Appeal Brief (October 16, 2017, "Br.") 2.
Appeal 2018-004634
Application 13/867,436
The Examiner rejected all of the claims on appeal as anticipated by
the prior art and as unpatentable under the doctrine of obviousness-type
double patenting over claims of an issued patent. Appellant contests the
Examiner's findings underlying the anticipation rejection. Appellant does
not present any arguments addressing the double patenting rejection. For the
reasons explained below, we agree with Appellant that the Examiner has
failed to show by a preponderance of the evidence that the claims are
anticipated by the cited prior art. Thus, we do not sustain the anticipation
rejection. Because Appellant does not contest the double patenting
rejection, we summarily sustain this rejection of the claims. As all of the
claims remain under rejection, we AFFIRM the Examiner's decision of
unpatentability.
CLAIMED SUBJECT MATTER
The claimed invention relates to "athletic positioning footwear."
Specification (April 22, 2013, "Spec."), 1: 18-19. For example, the footwear
may be a pair of baseball spikes that, when worn by a player, render the
player's toes and ball of foot as a primary contact point with the ground and
shift the player's weight to the inside of the player's legs and cause a slight
bend in the player's knees. Id. at 11: 19-31. Claims 1 and 8 are the
independent claims on appeal. Claim 1 is illustrative of the subject matter
on appeal and is reproduced below.
1. An athletic shoe comprises:
an upper section;
an athletic specific bottom section; and
an athletic positioning sole coupled to the upper section
and the athletic specific bottom section, wherein the athletic
positioning sole has a geometric shape that, when the athletic
2
Appeal 2018-004634
Application 13/867,436
shoe is worn on a foot of an athlete, the athlete is standing, and
the athletic specific bottom section is in contact with ground:
the athletic positioning sole has a uniform height
from an outer edge to an inner edge of the athletic shoe
along the rear edge of a heel section of the athletic shoe to
position, from a rear perspective, a heel of the foot to be
parallel to the ground;
the athletic positioning sole has a first decreasing
slope along the inner edge of the athletic positioning sole
in a mid-foot section and into a toe section of the athletic
positioning sole, has a second decreasing slope along the
outer edge of the athletic positioning so le in the mid-foot
section and into the toe section, and has a third decreasing
slope from the outer edge to the inner edge of the athletic
positioning sole in the mid-foot section and into the toe
section to position the heel above a mid-foot and a ball-of-
foot of the foot and to position an outer edge of the mid-
foot and the ball-of-foot above an inner edge of the mid-
foot and the ball-of-foot.
Br. 11 (Claims Appendix).
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 1--4 and 8-11 are rejected under pre-AIA 35 U.S.C.
§ I02(b) as anticipated by Chapman (US 2008/0163513 Al,
published July 10, 2008). Final Act. 4.
2. Claims 1--4 and 8-11 are rejected on the ground of non-statutory
obviousness-type double patenting as unpatentable over claims
1-12 of U.S. Patent No. 8,631,592. Id. at 9.
3
Appeal 2018-004634
Application 13/867,436
Anticipation
ANALYSIS
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Independent claims 1 and 8 recite that the athletic
positioning sole has "a uniform height from an outer edge to an inner edge
of the athletic shoe along the rear edge of a heel section of the athletic shoe."
Br. 11, 12. The Examiner found that Chapman discloses an athletic shoe
comprising an athletic positioning sole 100 that has "a uniform height (200
as seen in Fig. 5)l2J from an outer edge (140) to an inner edge (150) of the
athletic shoe along the rear edge (heel end edge) of a heel section ( from heel
end edge to marker 5 seen in Fig. 3) of the athletic shoe." Final Act. 4
(addressing independent claim 1); see also id. at 6 (same findings in
addressing independent claim 8).
Appellant contests the Examiner's finding that Chapman's Figure 5
shows the claimed uniform height. Br. 6-7. We agree with Appellant that
"[t]his level of detail is not show[n] in Figure 5." Id. at 7. Specifically,
Chapman's Figure 5 does not provide detail as to the rear edge of the heel
section of sole 100.
Figures 3 and 5 of Chapman, on which the Examiner relies, are
reproduced below.
2 Reference number 200 denotes the upper surface of shoe sole 100.
Chapman , 3 0.
4
Appeal 2018-004634
Application 13/867,436
100
<:
\
f
,<.-."2~.--·, / 1 0
10/ /:?~/ -)~;_J10
40._/t=-. --,;-. __ , .A i'---.320
j ~:~~~·-:f"<,_~::// · 30
71 l1 ii }t,,·' ,7
'·· 1 \ ii Jf-----350'
~ 1~~~1~~jl~"" ;6
--- , t"--,:·c' .... _____ '':.::-Al .. 7 20 -
SL. \'.~::::::~:::~:::~)/ _j 5
'<::::: ... ::~~~~::.-·:~/
FIG 3
J10
FIG. 5
Figure 3 is a plan view of the bottom surface of shoe sole 100.
Chapman ,r 15. Figure 5 is a transverse slice of shoe sole 100 across rear
heel area 120 taken along the line marked 5-5 in Figure 3. Id. ,r,r 17, 30.
The line 5-5 in Figure 3 is forward of the rear edge of sole 100. Thus,
Figure 5 is a cross-sectional view taken at a point forward of the rear edge
and does not provide detail of the rear edge of heel area 120. Chapman does
not provide any other figure that shows a back view of shoe sole 100
depicting the rear edge of heel area 120 of sole 100.
Further, Chapman's Figure 5 and the description of Figure 5 provided
in Chapman do not support a finding that the sole has a uniform height from
an outer edge to an inner edge of the sole within the heel section. As noted
by Appellant (Br. 7), Chapman describes that in the heel area, as depicted in
cross-section in Figure 5, outer side 140 of upper surface 200 is "slightly
lower" than inner side 150 "to promote a roll of the foot to the outer side
5
Appeal 2018-004634
Application 13/867,436
during the first half of the step motion." Chapman ,r 3 5. Contrary to this
description, Chapman's Figure 5 appears to depict outer side 140 of upper
surface 200 as slightly higher than inner side 150. Despite this internal
inconsistency between the figures and description in Chapman, it is clear
that Chapman's sole does not have a "uniform height from an outer edge to
an inner edge" of the shoe sole at the rear heel section taken along line 5-5.
For these reasons, the Examiner has not shown by a preponderance of
the evidence that Chapman anticipates an "athletic positioning sole [having]
a uniform height from an outer edge to an inner edge of the athletic shoe
along the rear edge of a heel section of the athletic shoe," as recited in
independent claims 1 and 8, and their dependent claims 2--4 and 9-11.
Thus, we do not sustain the rejection of these claims under 35 U.S.C.
§ 102(b) as anticipated by Chapman.
Obviousness-Type Double Patenting
Appellant presents no arguments contesting the obviousness-type
double patenting rejection of claims 1--4 and 8-11 over issued claims 1-12
of U.S. Patent No. 8,631,592. "If an appellant fails to present arguments on
a particular issue - or, more broadly, on a particular rejection-the Board
will not, as a general matter, unilaterally review those uncontested aspects of
the rejection." Ex parte Frye, 94 USPQ2d 1072, 1076 (BPAI 2010)
(precedential). Thus, we summarily sustain this rejection.
DECISION
We do not sustain the rejection of claims 1--4 and 8-11 under
35 U.S.C. § 102(b). We summarily sustain the rejection of claims 1-4 and
8-11 under the doctrine of obviousness-type double patenting. Thus, we
6
Appeal 2018-004634
Application 13/867,436
affirm the adverse decision of the Examiner as to the patentability of claims
1--4 and 8-11.
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)(l )(iv).
AFFIRMED
7