L.P. ROYER INC.

Patent Trials and Appeals Board

Jul 30, 2021

2021000679 (P.T.A.B. Jul. 30, 2021)

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.
15/287,046 10/06/2016 FRANCIS LACROIX 05201332-6US 7269
20988 7590 07/30/2021
NORTON ROSE FULBRIGHT CANADA LLP
1, PLACE VILLE MARIE
SUITE 2500
MONTREAL, QUEBEC H3B 1R1
CANADA
EXAMINER
PRANGE, SHARON M
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
07/30/2021 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):
NRFCUSPTOMAIL@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCIS LACROIX and SIMON LA ROCHELLE
Appeal 2021-000679
Application 15/287,046
Technology Center 3700
Before JENNIFER D. BAHR, LISA M. GUIJT, and LEE L. STEPINA,
Administrative Patent Judges.
BAHR, 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 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

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 L.P.
ROYER INC. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention is directed “to footwear and, more
specifically, to safety footwear of the type used to protect the feet of a user,
for example in the construction industry, in warehouses, in manufactures,
etc.” Spec. ¶ 2. Claims 1 and 12 are independent. Claim 1, reproduced
below, is illustrative of the claimed subject matter.
1. An item of footwear comprising:
an upper adapted to receive a foot of the wearer and
having a front-end portion and a heel-end portion;
a outsole forming a bottom surface of the item of
footwear, the outsole being single-piece monolithic and having
a concave outsole shell receiving in its outsole concavity at
least part of the front-end portion, the concave outsole shell
sized to cover the wearer’s toe in the front-end portion; and
a midsole being single-piece monolithic extending from
the front-end portion to the heel-end portion of the upper, a
direct-attach connection joint being formed between the upper
and midsole, another direct-attach connection joint being
formed between the midsole and the outsole, the midsole
having a concave midsole shell between the concave outsole
shell and the front-end portion, the concave midsole shell
receiving in its midsole concavity at least part of the front-end
portion.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Keene US 2,486,953 Nov. 1, 1949
Keen US 7,631,440 B2 Dec. 15, 2009
Morgan US 2010/0236098 A1 Sept. 23, 2010
La Rochelle US 8,359,772 B2 Jan. 29, 2013

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REJECTIONS
Claims 1–6 and 8–10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Keen in view of Morgan.
Claims 12–14 and 20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Keen.
Claims 2 and 7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Keen in view of Morgan, further in view of Keene.2
Claims 15–18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Keen in view of Keene.
Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Keen in view of Morgan, further in view of La Rochelle.3
Claim 19 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Keen in view of La Rochelle.

2 We understand the Examiner’s statement of the rejection of claims 2, 7,
and 15–18 as being based on “Keen or Keen and Morgan, as applied to
claim 1 or 12, further in view of Keene” (Final Act. 6) to be shorthand for
stating that claims 2 and 7 are rejected based on Keen in view of Morgan,
further in view of Keene, and that claims 15–18 are rejected based on Keen
in view of Keene. We reach this understanding because claim 1, from which
claims 2 and 7 depend, stands rejected based on Keen in view of Morgan,
and claim 12, from which claims 15–18 depend, stands rejected based on
Keen alone.
3 Much like the rejections of claims 2 and 7 and 15–18, we understand the
Examiner’s statement of the rejection of claims 11 and 19 as being based on
“Keen or Keen and Morgan, as applied to claim 1 or 12, further in view of
La Rochelle” (Final Act. 7) to be shorthand for stating that claim 11 is
rejected based on Keen in view of Morgan, further in view of La Rochelle,
and that claim 19 is rejected based on Keen in view of La Rochelle.
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OPINION
Claims 1–6 and 8–10
The Examiner finds that Keen discloses an item of footwear
comprising substantially all of the structure recited in claim 1, including an
upper (bootie 1108), an outsole (outsole 1102), and a midsole
(superstructure 1104). Final Act. 3 (relying on the embodiment of Figures
19–20 of Keen). The Examiner additionally finds that Keen discloses a
variety of different techniques for attaching the upper to the midsole and the
midsole to the outsole, but that Keen “does not specifically disclose
direct-attach connection joints.” Final Act. 3 (citing Keen, col. 27, ll. 27–61;
col. 6, ll. 58–60). The Examiner finds, however, that Morgan evidences that
it was known in the art to construct an article of footwear by forming
direct-attach connection joints between the upper and midsole and between
the midsole and outsole. Final Act. 3 (citing Morgan ¶¶ 7, 13). The
Examiner determines it would have been obvious to provide “direct-attach
connection joints between the upper and midsole, and midsole and upper [of
Keen], in order to provide a flexible and resilient shoe construction which
does not utilize adhesives.” Final Act. 3–4.
Appellant’s Specification does not expressly define “direct-attach,”
but discusses “direct-attach construction” in several places. The
Specification describes molding bumper toes “during the molding of a
midsole in a direct-attach construction, for example by injection molding or
pouring.” Spec. ¶ 5. The Specification also discloses “a midsole being
single-piece monolithic and being in direct-attach connection between the
upper and the outsole.” Spec. ¶ 8. The Specification also states:
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The figures illustrate that the concave sole shell 14 may have a
portion that is seamlessly part of the outsole 12, and another
portion that is seamlessly part of the midsole 13, as a result of a
molding of the outsole 12 as a single piece, and the subsequent
direct-attach injection of the midsole 13 between the upper 11
and the outsole 12, such that the concave sole shell 14
encapsulates a front portion of the upper 11. Hence, the sole
12/13 is overmolded or molded by direct injection with the
concave sole shell 14 onto the upper 11, to use other
expressions describing the direct-attach molding, according to
an embodiment. Other manufacturing processes are
contemplated, such as stitching, gluing, cementing, etc[.], in
accordance with other methods. The direct-attach process may
be in numerous steps, including the molding of the outsole 12,
the positioning of the upper 11 and the outsole 12 in a mold,
with a space between, and the subsequent injection of the
midsole 13 in the space between the upper 11 and the outsole
12. This may require some forms of automation or
manipulations, and adapted tooling, considering that the upper
11 must be inserted in the outsole component of the concave
sole shell 14, prior to the injection of the midsole 13 to
direct-attach the upper 11, the outsole 12[,] and the midsole 13.
Spec. ¶ 19 (emphasis added).
Further, Appellant’s Specification discloses that, “[i]n the direct-
attach process, the outsole 12 may be made of a rubber or other polymers,”
and “[t]he midsole 13 . . . is made of a polymer such as polyurethane, which
is known to form a permanent bond to given materials it interconnects.”
Spec. ¶ 20. Further, “the outsole 12 is a single piece resulting from its
manufacturing (molding or heat-pressing), and . . . the midsole 13 is a single
integrally-formed piece resulting from the direct-attach injection process.”
Spec. ¶ 20. The Specification also expressly distinguishes “the direct-attach
process” from cementing. Spec. ¶ 30 (stating that “the arrangement of Fig. 6
may be achieved by the direct-attach process or by cementing”).
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Based on the description of the “direct-attach” construction or process
in the portions of Appellant’s Specification discussed above, we construe a
“direct-attach connection joint” as claimed to mean a direct bond formed
between the materials of structural components (i.e., the upper, midsole, and
outsole), for example, by injection molding one component to immediately
adjacent components (i.e., injection molding the midsole between the upper
and the outsole) without the use of extraneous materials, such as cement or
adhesive, between the components. Morgan’s description of “a direct attach
bond” and “direct attaching” process is consistent with Appellant’s use of
“direct-attach.” See Morgan ¶¶ 7, 13. Specifically, Morgan teaches
“placing the upper and the outsole shell adjacent one another so that a
midsole cavity is formed therebetween” and “introducing a material into the
midsole cavity so that the material direct attaches to at least one of the upper
and the sole board, and so that the material direct attaches to the outsole
shell, the material forming a midsole including a midsole stitch flange.”
Morgan ¶ 13. Morgan also teaches stitching the midsole stitch flange to the
outsole flange with a lock stitch, but this is not part of the direct-attach
process or connection. Morgan ¶ 13.
Appellant argues that modifying Keen by direct-attaching the midsole
(superstructure 1104) to outsole 1102 “would change the principle of
operation of Keen” and “would be out of the question” because forming a
direct-attach connection joint would entail filling the lacing channels.
Appeal Br. 8–9 (underlining omitted); see Keen, Fig. 20 (illustrating, but not
labeling, lacing channels extending along the underside of superstructure
1104 to accommodate laces 1118 between superstructure 1104 and outsole
1102). Appellant contends that “[t]he person of ordinary skill in the art
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would know that the material of the midsole, e.g., a molten rubber, would
naturally flow into and fill the gap between upper and outsole, during
direct-attach injection,” and that, “[c]onsequently, it would not be possible to
define channels if direct-attach injection were used in the manner” proposed
in the rejection. Appeal Br. 9.
Appellant’s arguments are not persuasive. The Examiner finds that
those of ordinary skill in the art would appreciate that known techniques,
some of which are disclosed by Keen in discussing earlier embodiments, can
be used to retain the lacing channels even with superstructure 1104 being
direct-attached to outsole 1102 in an injection molding process. Ans. 3–4
(citing Keen, col. 8, ll. 6–11; col. 8, l. 66–col. 9, l. 2; col. 9, ll. 12–14). For
example, the Examiner notes that Keen teaches that lacing channels may be
in either the midsole or outsole structure, and that the channels may be fully
enclosed. Ans. 3. The Examiner explains that, “[fo]r example, the channels
may be formed as fully enclosed channels within the outsole, which would
then not be affected by the liquid midsole” or “may be punched out of the
midsole or outsole subsequent to a molding operation.” Ans. 4.
Alternatively, a separate component could be placed within the mold during
the molding operation to define the channels while liquid midsole material
flows around the separate component forming the channels. Ans. 4; see
Keen, col. 26, ll. 59–62 (disclosing that “separate low-friction tube
structures . . . may be inserted into the lacing channels to reduce friction and
protect against abrasion”).
Appellant does not persuasively explain why direct-attach molding
Keen’s superstructure 1104 to outsole 1102, while still retaining lacing
channels using one of these or other known techniques, would have been
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beyond the level of ordinary skill in the art. “A person of ordinary skill is
also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421(2007).
Moreover, Keen discloses that, in the embodiment of Figures 19–20,
although “the outsole 1102 is preferably fabricated as a component separate
from the superstructure 1104[,] . . . an alternative configuration may include
the outsole 1102 as part of the superstructure 1104.” Keen, col. 24,
ll. 28–32. Keen’s disclosure of this alternative configuration belies any
notion that outsole 1102 and superstructure 1104 must be formed separately
as solid components before being attached together, thus undermining
Appellant’s argument that a direct-attach connection between superstructure
1104 and outsole 1102 would change Keen’s principle of operation or be out
of the question.
Appellant also argues that “claim 1 pertains to a sturdy footwear
construction,” while, in contrast, “Keen relates to a leisure shoe, particularly
suited to climbing, hiking, water sports[,] and similar activities.” Appeal
Br. 12 (citing Keen, col. 1, ll. 24–25). Appellant submits that “Keen simply
does not teach claimed limitations, due to the nature of the Keen footwear,
forcing the Office to speculate.” Appeal Br. 12.
Aside from alluding to “sturdy footwear construction,” Appellant does
not identify any particular claim limitation beyond the direct-attach
connection joint, discussed above, that Keen does not satisfy. Thus,
Appellant’s argument is unavailing because it appears to be predicated on a
limitation (i.e., “sturdy” construction) that is not recited in claim 1. It is well
established that limitations not appearing in the claims cannot be relied upon
for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
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Moreover, as the Examiner points out, “Keen explicitly discloses that
‘the invention is not limited to any specific type of footwear or activity’”
(citing Keen, col. 1, ll. 25–26) and “that the ‘footwear 1100 is adapted to
meet the rigorous demands of hiking and climbing, among other active
pursuits’ and ‘is suitable for extreme environmental conditions’” (citing
Keen, col. 24, ll. 11–14).” Ans. 5. The Examiner correctly observes that
“[t]here are no limitations within the claims that limit the invention to a
work boot,” and adds that “Keen clearly teaches footwear which could
utilize sturdy construction and/or a protective feature.” Ans. 5.
For the above reasons, Appellant does not apprise us of error in the
rejection of claim 1 as being unpatentable over Keen in view of Morgan.
Accordingly, we sustain the rejection of claim 1, and of claims 2–6 and
8–10, for which Appellant does not present any separate arguments.4
Claims 2, 7, and 11
Appellant does not present any separate arguments directed
specifically to the rejections of claims 2, 7, and 11, which depend from
claim 1. See Appeal Br., Claims App. 1–2. Thus, for the reasons discussed
above, we also sustain the rejection of claims 2 and 7 as being unpatentable

4 Although claim 9 recites that “the shock absorbing pad is made of a
material attenuating an impact force by at least 60% in a flat surface impact
test, single drop of a 8.5 kg mass, at 1.0 m/s velocity” (Appeal Br., Claims
App. 2), which is the focus of one of Appellant’s arguments against the
rejection of claim 12 (see Appeal Br. 11), Appellant does specifically assert
this line of argument against the rejection of claim 9. However, to the extent
that Appellant intends for the arguments regarding the material properties of
the shock absorbing pad asserted against the rejection of claim 12 to apply to
the rejection of claim 9, our discussion below addressing these arguments in
regard to claim 12 is likewise applicable to claim 9.
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over Keen in view of Morgan, further in view of Keene, and the rejection of
claim 11 as being unpatentable over Keen in view of Morgan, further in
view of La Rochelle.
Claims 12–14 and 20
The Examiner finds that Keen discloses an item of footwear
comprising all of the structural elements recited in claim 12, including, in
pertinent part, an upper (bootie 1108), a sole (outsole 2202 and
superstructure 1104) forming a concave shell receiving in its concavity at
least part of the front-end portion of the upper, and a shock-absorbing pad
(rubberized material cover 1115) between the concave shell and the
front-end portion of the upper. Final Act. 5; see also Final Act. 8 (finding
that “the portion of the cover 1115 that covers the toe protector 1110 is
between the concave shell (of the outsole) and the front-end portion of the
upper”). However, the Examiner finds that Keen “does not disclose the
specific material properties of the shock absorbing pad.” Final Act. 5. The
Examiner determines that it would have been obvious to make Keen’s
“shock absorbing pad of a material attenuating an impact force by at least
60% in a flat surface impact test, single drop of a 8.5 kg mass, at 1.0 m/s
velocity in order to provide improved comfort and durability to the toe of the
shoe.” Final Act. 5 (noting that “[i]t has been held to be within the general
skill of a worker in the art to select a known material on the basis of its
suitability for the intended use as a matter of obvious design choice”). Final
Act. 5 (citing In re Leshin, 277 F.2d 197, 199 (CCPA 1960)).
Appellant contends that the Examiner “fails to provide the required
factual support” for the finding that Keen’s toe protector 1110 is between the
concave shell of outsole 1102 and the front-end portion of the upper (bootie
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1108). Appeal Br. 11. Thus, Appellant asserts that Keen lacks “a shock-
absorbing pad between the concave shell and the front-end portion of the
upper,” as recited in claim 12. Appeal Br. 11 (emphasis omitted).
The Examiner emphasizes that Keen discloses an embodiment in
which rubberized cover 1115 may be positioned over all of superstructure
1104. Ans. 4 (citing Keen, col. 24, ll. 52–53). Thus, in this disclosed
embodiment, the Examiner finds that “the cover 1115 will necessarily be
between the outsole 1102 and the superstructure 1104, because the outsole
1102 covers the superstructure 1104.” Ans. 4.
Appellant contends that Figure 19C of Keen appears to show toe
protector 1110 disposed “side by side with the outsole 1102.” Reply Br. 5.
Thus, Appellant insists that there is no evidence that Keen’s toe protector
1110 (and hence cover 1115 covering the toe protector) is “between the
concave shell and the front-end portion of the upper,” as recited in claim 12.
Reply Br. 5 (emphasis omitted). Further, Appellant contends that, “[d]ue to
a lack of detail, the person of ordinary skill in the art would likely
understand that the cover 1115 covers only the exposed parts of the
superstructure 1104” because, “[w]hen concealed by the superstructure,
[cover 1115] would not perform its functions of ‘enhanced traction and/or
durability’ (Keen, column 24, line 26).” Reply Br. 6.
Appellant’s arguments are not persuasive because they are not
directed to, and ignore, the embodiment relied on by the Examiner, namely,
the rubberized cover being positioned over all of superstructure 1104.
Ans. 4 (citing Keen, col. 24, ll. 52–53). Keen’s Figures 19B, 19C, 19D, and
20, when viewed together, convey that the concave shell portion at the
front/toe end of outsole 1102 curves rearward to cover part of the concave
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front portion of superstructure 1104, which, in turn, covers a front-end
portion of the upper (bootie 1108). Thus, in the embodiment cited by the
Examiner in which cover 1115 is positioned over all of superstructure 1104,
Keen’s drawings show, by a preponderance of the evidence, that cover 1115
is disposed “between the concave shell and the front-end portion of the
upper,” as recited in claim 12.
Appellant also argues that Keen’s rubberized material of cover 1115
“is for ‘enhanced traction and/or durability[,]’” and “is not a ‘material
attenuating an impact force by at least 60% in a flat surface impact test,
single drop of a 8.5 kg mass, at 1.0 m/s velocity’” as called for in claim 12.
Appeal Br. 11. Thus, Appellant submits that the Examiner’s reasoning that a
material having the claimed impact attenuating property “would aid in
durability by not breaking down or tearing when subjected to impacts” as
compared to the rubberized material of cover 1115, amounts to unsupported
speculation. Appeal Br. 12. Finally, Appellant contends that the Examiner
has failed to prove that Keen teaches a material having the claimed impact
attenuating property. Reply Br. 6.
Appellant’s argument regarding lack of proof that Keen’s rubberized
material of cover 1115 has the claimed impact attenuating property is
unavailing because the Examiner does not find that Keen discloses the
specific material properties of the shock absorbing pad. See Final Act. 5.
Rather, the Examiner reasons that it would have been obvious to use a
known material based on its suitability for the intended use, including
choosing a material having properties that provide improved comfort and
durability to the toe of a shoe. Final Act. 5, 8. Further, the Examiner
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reasons that “a material which attenuates force would aid in durability by not
breaking down or tearing when subjected to impacts.” Final Act. 8.
Additionally, the Examiner finds that Appellant’s Specification
evidences that there are a variety of known materials, including several
varieties of rubbers, that possess the claimed impact attenuating
characteristic. Ans. 4–5 (citing Spec. ¶ 23 and noting that Keen discloses a
rubberized material for cover 1115). According to the Examiner, “[t]here is
no novelty or unexpected results from incorporating one of these known
materials into a pad within a shoe.” Ans. 5.
Appellant does not persuasively refute the Examiner’s findings or
reasoning with regard to the selection of a rubberized material for Keen’s
cover 1115. Comfort and durability are well recognized in the art as being
favorable attributes of footwear, and incorporating materials that would
attenuate impact forces would predictably contribute to the comfort and
durability of footwear. Thus, the Examiner’s reasoning in concluding that
the use of a material having the claimed impact attenuating property would
have been obvious has rational underpinnings.
Appellant additionally asserts that “[c]laim 12 relates to a protective
feature for the item of footwear,” in contrast to Keen’s shoe, which “relates
to a leisure shoe, particularly suited to climbing, hiking, water sports and
similar activities.” Appeal Br. 12 (citing Keen, col. 1, ll. 24–25). Appellant
contends that “Keen simply does not teach claimed limitations, due to the
nature of the Keen footwear, forcing the Office to speculate.” Appeal
Br. 12.
These arguments are unavailing, for essentially the same reasons
discussed above in regard to similar arguments directed to claim 1.
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Appellant does not identify any particular claim limitations beyond the
limitations directed to the shock-absorbing pad, discussed above, that Keen
does not satisfy. As the Examiner points out, “Keen explicitly discloses that
‘the invention is not limited to any specific type of footwear or activity’”
(citing Keen, col. 1, ll. 25–26) and “that the ‘footwear 1100 is adapted to
meet the rigorous demands of hiking and climbing, among other active
pursuits’ and ‘is suitable for extreme environmental conditions’” (citing,
Keen, col. 24, ll. 11–14). Ans. 5. The Examiner correctly observes that
“[t]here are no limitations within the claims that limit the invention to a
work boot,” and adds that “Keen clearly teaches footwear which could
utilize sturdy construction and/or a protective feature.” Ans. 5.
For the above reasons, Appellant fails to apprise us of error in the
Examiner’s rejection of claim 12 as being unpatentable over Keen.
Accordingly, we sustain the rejection of claim 12, and of claims 13, 14, and
20, for which Appellant does not present any separate arguments, as being
unpatentable over Keen.
Claims 15–19
Appellant does not present any separate arguments directed
specifically to the rejections of claims 15–19, which depend from claim 12.
See Appeal Br., Claims App. 2–3. Thus, for the reasons discussed above, we
also sustain the rejection of claims 15–18 as being unpatentable over Keen
in view of Keene, and the rejection of claim 19 as being unpatentable over
Keen in view of La Rochelle.
CONCLUSION
All of the Examiner’s rejections of claims 1–20 are sustained.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 8–10 103 Keen, Morgan 1–6, 8–10
12–14, 20 103 Keen 12–14, 20
2, 7 103 Keen, Morgan,
Keene
2, 7
15–18 103 Keen, Keene 15–18
11 103 Keen, Morgan,
La Rochelle
11
19 103 Keen, La Rochelle 19
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
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