HBN SHOE, LLC

Patent Trials and Appeals Board

Feb 19, 2020

15905482 - (D) (P.T.A.B. Feb. 19, 2020)

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.
15/905,482 02/26/2018 Brian G. R. Hughes HBN 17.01 7730
27667 7590 02/19/2020
HAYES SOLOWAY P.C.
4640 E. Skyline Drive
TUCSON, AZ 85718
EXAMINER
CARTER, CAMERON A
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
02/19/2020 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):
admin@hayes-soloway.com
dlandau@hayes-soloway.com
nsoloway@hayes-soloway.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN G.R. HUGHES and HOWARD DANANBERG
____________

Appeal 2019-005214
Application 15/905,482
Technology Center 3700
____________

Before BIBHU R. MOHANTY, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–9 and 11–18. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as HBN SHOE,
LLC. (Appeal Br. 2).
Appeal 2019-005214
Application 15/905,482

2

CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to a contoured insole or
shoe insert (Spec. 3, lines 14–18). Claim 1, reproduced below, is
representative of the subject matter on appeal.

1. A shoe or device for insertion into a shoe having a foot
supporting upper surface, wherein the shoe or device has an upward
facing shallow channel on the foot supporting upper surface adapted
to underlie the first metatarsal shaft and heel ward of the first
metatarsal head of the wearer, wherein the channel is adapted to
specifically extend in a direction from the toe end of the shoe heel
ward only under the first metatarsal shaft to short of the first
metatarsal head of the wearer, and is pitched or rotated 4 ± 1 degrees
plantargrade, with a toeward end of the channel lower than the
heelward end of the channel, and wherein the channel is rolled or
sloped in a lateral to medial direction downward 9 ± 2 degrees, in the
frontal plane, and wherein the channel is yawed or rotated 10 ± 5
degrees clockwise relative to a superior view of the transverse plane,
for the left foot shoe, and yawed or rotated 10 ± 5 degrees
counterclockwise relative to a superior view of the transverse plane
for the right foot shoe, and wherein the shoe or device is contoured
and has a dome or raised area supporting surface having its highest
point configured to underlie between the first and second metatarsal
shafts rearward of the first and second metatarsal heads of the wearer.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 1–9, 11–14, and 18 are rejected under 35 U.S.C. § 103
as unpatentable over Manoli, II et al., (US 6,604,301 B1; issued Aug. 12,
2003) and Lin (US 5,685,094; issued Nov. 11, 1997).
2. Claims 15 and 16 are rejected under 35 U.S.C. § 103 as
unpatentable over Manoli, II, Lin, and, Litchfield et al. (US 2010/0251565
A1; published Oct. 7, 2010).
Appeal 2019-005214
Application 15/905,482

3

3. Claim 17 is rejected under 35 U.S.C. § 103 as unpatentable
over Manoli, II, Lin, and Greenawalt (US 5,787,608; issued Aug. 4, 1998).

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.

ANALYSIS
Rejection under 35 U.S.C. § 103
The Appellant argues that the rejection of claim 1 is improper because
the prior art fails to show or disclose a channel as claimed that extends “in a
direction from the toe end of the shoe heelward only under the first
metatarsal shaft to short of the first metatarsal head of the wearer” as well as
the particular claimed channel pitch, rolled or sloped, and yawed or rotated
angles (Appeal Br. 10–12; Reply Br. 4) (emphasis omitted).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 3–5; Ans. 3–5).
We agree with the Appellant. Initially, the Appellant argues that
Manoli, II fails to disclose a channel as claimed that extends “in a direction
from the toe end of the shoe heelward only under the first metatarsal shaft to
short of the first metatarsal head of the wearer” (Appeal Br. 10). The
Appellant argues that in contrast, Manoli discloses a depression “under the

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2019-005214
Application 15/905,482

4

metatarsal head” (Appeal Br. 10). Appellant also argues that the claim
limitations that the channel
is pitched or rotated 4 ± 1 degrees plantargrade, with a toeward end
of the channel lower than the heelward end of the channel, and
wherein the channel is rolled or sloped in a lateral to medial direction
downward 9 ± 2 degrees, in the frontal plane, and wherein the
channel is yawed or rotated 10 ± 5 degrees clockwise relative to a
superior view of the transverse plane, for the left foot shoe, and yawed
or rotated 10 ± 5 degrees counterclockwise relative to a superior view
of the transverse plane for the right foot shoe

is not an obvious modification (Appeal Br. 10, emphasis added). We agree
with the Appellant. In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007)
the Supreme Court at 418 noted that in an obviousness analysis that
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” Here, even taking the Manoli, II reference to have a channel
that extends in a direction “to short of the first metatarsal head of the
wearer,” the cited rejection requires the combination of Lin and the
particular claimed four further modifications to obtain the channel having
the four particular pitch, roll, and yaw angles in construction. Such a
modification here would not have been obvious without impermissible
hindsight. Here, the rejection of record lacks articulated reasoning with
rational underpinning to support the legal conclusion of obviousness.
For these reasons, the rejection of claim 1 is not sustained. The
remaining rejections on the dependent claims fail to cure the deficiency of
the base rejection and the rejection of these claims is not sustained.

Appeal 2019-005214
Application 15/905,482

5

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting the claims as listed in the Rejections section above.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–9, 11–14,
18
103 Manoli, II, Lin 1–9, 11–14,
18
15, 16 103 Manoli, II, Lin,
Litchfield
15, 16
17 103 Manoli, II, Lin,
Greenawalt
17
Overall
Outcome
1–9, 11–18

REVERSED