Ex Parte Elbaz et al

Patent Trial and Appeal Board

Dec 12, 2013

12636800 (P.T.A.B. Dec. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte AVI ELBAZ and AMIT MOR
____________________

Appeal 2011-010772
Application 12/636,800
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, WILLIAM A. CAPP, and
BEVERLY M. BUNTING, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010772
Application 12/636,800

2
STATEMENT OF THE CASE
Avi Elbaz and Amit Mor (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 20-29. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
Claim 20, reproduced below, is illustrative of the claimed subject
matter.
20. Footwear comprising:
a support member having an upper surface adapted to a
foot, and two bulbous protuberances, a forward bulbous
protuberance and rearward bulbous protuberance, each having a
curved outer contour, protruding from a lower surface of said
support member on opposite sides of a latitudinal midline
thereof, said latitudinal midline being halfway between a
calcaneus support portion and a phalanges support portion of
said support member, and wherein a centerline extends from a
calcaneus support portion of said support member to at least
one of a metatarsals support portion and phalanges support
portion of said support member, and wherein at least one of
said protuberances is offset from said centerline of said support
member, and wherein said footwear is adapted to support the
foot only by said two bulbous protuberances when said two
protuberances are placed on a ground surface.

Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Kraeuter US 2002/0092201 A1 Jul. 18, 2002
Ritter FR 1.128.009 Jan. 2, 1957
Kierkels NL 8502659 Apr. 16, 1987
Wood WO 02/37995 A1 May 16, 2002
Appeal 2011-010772
Application 12/636,800

3
Rejections
Appellants request our review of the following rejections under
35 U.S.C. § 103(a):
(1) claims 20-26 and 28 as being unpatentable over Kierkels and
Kraeuter;
(2) claim 27 as being unpatentable over Kierkels, Kraeuter, and Ritter;
and
(3) claim 29 as being unpatentable over Kierkels, Kraeuter, and Wood.
OPINION
Rejection (1)
Appellants do not present any separate arguments for claims 21-26
and 28 apart from those presented for claim 20. Thus, we decide the appeal
of this rejection on the basis of claim 20, with claims 21-26 and 28 standing
or falling with claim 20.
Appellants argue that Kierkels does not disclose at least one of the
protuberances being “offset from said centerline of said support member,” as
called for in claim 20. App. Br. 6. According to Appellants, Kierkels’
spring elements are aligned with the centerline. Id. (referencing an
annotated reproduction of Kierkels’ figure 5 at App. Br. 7 depicting what
Appellants identify as “centerline A”).
The Examiner, on the other hand, draws a “centerline” through the
sole depicted in figure 5 of Kierkels, extending from a calcaneus support
portion to at least a metatarsals support portion and phalanges support
portion, and finds that the spring element 7 is offset from this “centerline.”
See Final Rej. 4.
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Appeal 2011-010772
Application 12/636,800

5
Spec. 5. Appellants’ Specification also describes “a longitudinal axis 34
offset from centerline 28,” again referring to figure 4. Id. Appellants’
figure 4 shows a top view of the support member 12 having a shape which
does not appear to be symmetrical about the “centerline” 28 marked thereon.
The depicted support member 12 has an irregular shape, with its periphery
following the general contour of the periphery of a human foot2 and, thus,
certainly cannot have sides that are equidistant from any longitudinal axis
along the entirety of the axis. Moreover, neither the Specification nor
Appellants’ drawings, which are not identified as being drawn to scale,
specifies any particular region of the support member 12 at which the
“centerline 28” is centered. Further, the Examiner is correct that claim 20
fails to specify the portion of the support member, if any, on which the
recited “centerline” is centered. Rather, the only limitation placed on the
“centerline” by claim 20 is that it extend “from a calcaneous support portion
of said support member to at least one of a metatarsals support portion and
phalanges support portion of said support member.” Against this
background, the “centerline” identified by the Examiner reasonably satisfies
the limitations of claim 20.
We find no error in the Examiner’s determination that Kierkels’
spring member 7 is offset (i.e., not centered about) the “centerline”
identified by the Examiner. We recognize that Kierkels’ drawings are not
described as being to scale. However, that fact does not detract from the
point made by the Examiner, namely, that a “centerline” can be drawn from
the center of the calcaneus support portion of Kierkels’ sole to and through

2 The Examiner refers to this conventional foot support contour as “a
standard ‘kidney bean’ style shape.” Ans. 7.
Appeal 2011-010772
Application 12/636,800

6
the metatarsals support portion and phalanges support portion of the sole and
not pass through the center of the spring support 7.
For the above reasons, we are not persuaded that the Examiner erred
in finding that Kierkels satisfies the limitation in claim 20 that at least one of
the protuberances is offset from the centerline of the support member. Thus,
we need consider neither the Examiner’s alternative position that it would
have been obvious in view of the combination of Kierkels and Kraeuter to
modify Kierkels to satisfy this limitation nor Appellants’ arguments against
such combination.
Appellants additionally argue that Kierkels’ spring elements “cannot
support the foot only by the two spring elements when the two spring
elements are placed on a ground surface, as recited in claim 20.” App. Br. 7.
Appellants’ argument is premised on the contention that the claimed offset
location of the protuberances “is critical for balancing a user and therefore is
essential to the functionality of the footwear claimed herein.” App. Br. 6.
According to Appellants, “the asymmetric inherent anatomy of the human
foot” will not allow Kierkels’ “symmetric sole and spring elements aligned
with a centerline to support a human foot.” App. Br. 7.
Appellants’ contention is not supported by their Specification, which
attributes no criticality to the offset arrangement. To the contrary,
Appellants’ Specification describes as suitable both the arrangement wherein
the protuberances are positioned on a common longitudinal axis, such as the
centerline of the support member, and the arrangement wherein one of the
protuberances is aligned on a longitudinal axis offset from the centerline and
the other is positioned on the centerline. Spec. 5. In fact, Appellants’
Specification adds that these specifically-enumerated alternatives “are just
Appeal 2011-010772
Application 12/636,800

7
some examples of positioning the protuberances 22, and many other
possibilities exist within the scope of the invention.” Id. Thus, Appellants
fail to persuade us that Kierkels’ sole is incapable of supporting the foot
“only by said two bulbous protuberances when said two protuberances are
placed on a ground surface,” as required in claim 20.
In light of the above, Appellants’ arguments fail to apprise us of error
in the Examiner’s rejection of claim 20. We sustain the rejection of claim 20
and of claims 21-26 and 28, which fall with claim 20.
Rejection (2)
In contesting the rejection of claim 27, Appellants argue that Ritter
does not overcome the asserted deficiencies of Kierkels and/or Kraeuter vis-
à-vis claim 20. App. Br 11. Having been apprised of no such deficiencies
by Appellants’ arguments asserted against the rejection of claim 20, for the
reasons discussed above, we find this argument unconvincing.
Appellants additionally contend that the Examiner’s determination
that it would have been obvious, in view of the teachings of Ritter, to modify
Kierkels by providing varying height protuberances “is improperly, solely,
based on mischaracterizations of Ritter’s figure 4.” App. Br. 11.
Appellants’ observations with respect to the rear peg of Ritter’s foot support
being placed under a heel of a shoe (App. Br 12) are insufficient to rebut the
clear showing of protuberances of different heights on Ritter’s foot support.
Moreover, Appellants’ arguments fail to identify error in the Examiner’s
reasoning that it would have been obvious to provide Kierkels with varying
height protuberances to “provide the user with an alternative balance point
and allow them to exercise different aspects of foot muscles.” Ans. 4.
We sustain the rejection of claim 27.
Appeal 2011-010772
Application 12/636,800

8
Rejection (3)
The only argument presented by Appellants against the Examiner’s
rejection of claim 29, aside from those asserted against the rejection of claim
20 and found unconvincing for the reasons discussed above, is that
“[e]lement 34 according to Wood is a groove (see page 4 last paragraph) and
not a non-bulbous protuberance as asserted by the Examiner.” App. Br. 13.
In response, the Examiner “contends that element 34 protrudes from
base 10” and “does not have a bulbous shape, thus making it a non-bulbous
protuberance.” Ans. 8-9.
Appellants are correct that Wood uses the reference numeral 34 to
denote a groove 34 in the insert 16. Wood, p. 4, 5; fig.3. However,
Appellants’ argument overlooks the fact that Wood also uses the reference
numeral 34 to denote a “projection 34 [extending] from the inner wall of the
receptacle 28” into the groove 34 of bulbous insert 16 to lock the insert 16
within the receptacle 28. Wood, p. 5; figs. 2, 4. The Examiner’s stated
rationale for the proposed modification of Kierkels (Ans. 5) and comments
responding to Appellants’ argument (Ans. 8-9) clearly convey that the
Examiner relies on the projection 34, not the groove 34, as the non-bulbous
protuberance.
Appellants identify error neither in the Examiner’s finding that
Wood’s projection 34 is a non-bulbous protuberance nor in the Examiner’s
articulated reasoning for modifying Kierkels to provide such a supporting
protuberance (Ans. 5), and thus fail to apprise us of error in the Examiner’s
rejection of claim 29.
We sustain the rejection of claim 29.

Appeal 2011-010772
Application 12/636,800

9
DECISION
The Examiner’s decision rejecting claims 20-29 is affirmed.
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

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