Sole Supports, Inc.

Patent Trials and Appeals Board

Jul 16, 2020

15147560 - (D) (P.T.A.B. Jul. 16, 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.
15/147,560 05/05/2016 Ty Totty 834.00101 6472
153348 7590 07/16/2020
Pitchford Fugett, PLLC
110 Meadowpointe W
Hendersonville, TN 37075
EXAMINER
KAVANAUGH, JOHN T
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
07/16/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TY TOTTY and KENNETH BURKS
____________________

Appeal 2019-0068641
Application 15/147,560
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

FINAMORE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–3, 5, 7–12, 14, and 16–18. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The citations herein refer to the Specification filed May 5, 2016 (“Spec.”),
Final Office Action mailed October 23, 2017 (“Final Act.”), Appeal Brief
filed September 20, 2018 (“Appeal Br.”), Examiner’s Answer mailed
November 27, 2018 (“Ans.”), and Petition to Revive as Necessary and
Accept Appeal Forwarding Fee Pursuant to MPEP 1215.04(III), and
Consider Reply Brief filed February 4, 2019 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Sole Supports, Inc. Appeal Br. 2.
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SUBJECT MATTER ON APPEAL
The invention relates to orthotic shoe inserts. Spec. ¶ 5. Claims 1
and 10 are independent. Independent claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A weight adjustable orthotic insert system comprising:
an orthotic insert having an arch support portion
configured to engage an arch of a foot of a user, wherein the
orthotic insert is configured to substantially fully correct the arch
of the foot of the user when the user is in a standing position; and
a weight adjusting leaf configured to releasably attach to
the orthotic insert.
Appeal Br., Claims App.

REJECTIONS
Claims
Rejected 35 U.S.C. § References
1–3, 5, 10–12, 14 102(a)(1) Krebs3
1–3, 5, 10–12, 14 102(a)(1) Nickerson4
1–3, 5, 7, 8,
10–12, 14, 16, 17 102(a)(1) Avent
5
9, 18 103 Krebs
9, 18 103 Nickerson
9, 18 103 Avent

ANALYSIS
Anticipation Based on Krebs
Appellant argues independent claims 1 and 10 as a group. Appeal
Br. 5–7; Reply Br. 2–3. We select independent claim 1 as representative,

3 Krebs, US 1,729,725, issued Oct. 1, 1929.
4 Nickerson, US 1,907,997, issued May 9, 1933.
5 Avent et al., US 7,707,751 B2, issued May 4, 2010 (“Avent”).
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with independent claim 10 standing or falling therewith. 37 C.F.R.
§ 41.37(c)(1)(iv).
In finding that Krebs anticipates independent claim 1, the Examiner
relies on Krebs’s insertion sole for disclosing the recited orthotic insert and
insertions d, e, and f for disclosing the recited weight adjusting leaf. Final
Act. 2–3. Krebs’s Figure 2, reproduced below, shows the insertion sole and
insertions.

Figure 2 is a side elevation of the insertion sole. Krebs, l. 25. As shown in
the figure, the insertion sole includes two outer layers a and two inner
layers b. Id. at ll. 27–33. Layers a and b are stitched together along seam c,
and not at portion B, so as to form three open pockets at portion B. Id. at
ll. 33–42. These pockets are designed to receive insertions therein. Id. at
ll. 47–48. The lower pocket is designed to receive insertion d, which is
made from a hard material and has a profile adapted to the hollow of the foot
for support. Id. at ll. 48–53. The middle pocket is designed to receive
insertion e, which is made from cork or a similar material and adapts itself to
the profile of insertion d to act as an equalizing layer. Id. at ll. 53–58. The
upper pocket is for receiving insertion f, which is made from a soft material
to form a comfortable support of the sensitive plant of the foot. Id. at
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ll. 58–61. Insertions d, e, and f are removable so that the orthopædic-profile
can be adapted to the shape and conditions of the foot. Id. at ll. 61–64.
Appellant contends that Krebs fails to disclose “an orthotic
insert . . . configured to substantially fully correct the arch of the foot of the
user when the user is in a standing position,” as recited in independent
claim 1, because “[Krebs’s] insertion sole does not provide ANY arch
correction without additional components.” Appeal Br. 6. Appellant’s
contention is not persuasive of error because the Examiner is not relying on
just Krebs’s insertion sole for disclosing the recited orthotic insert. Rather,
the Examiner finds the insertion sole with one or two insertions discloses the
recited orthotic insert. Ans. 4–5 (explaining the recited orthotic insert is “the
combination of the insertion sole and one and/or two of the insertions (d, e,
f) and the weight adjustable leaf (being the remainder of the insertions (d, e,
f)”).
Appellant further contends “swapping inserts changes the amount or
shape of static correction, not the spring rate of the orthotic insert as
described and claimed in the present Application.” Reply Br. 3. At the
outset, we disagree with Appellant that independent claim 1 recites changing
the spring rate of the orthotic insert. Rather, the claim recites “an orthotic
insert . . . configured to substantially fully correct the arch of the foot of the
user when the user is in a standing position.” Appeal Br., Claims App. To
the extent Appellant’s contention is premised on “configured to substantially
fully correct the arch of the foot of the user when the user is in a standing
position” requiring changing the spring rate, Appellant nonetheless fails to
apprise us of error.
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The recited orthotic insert is defined in terms of its function, i.e.,
substantially fully correcting the arch of the foot. “A patent applicant is free
to recite features of an apparatus either structurally or functionally. Yet,
choosing to define an element functionally, i.e., by what it does, carries with
it a risk.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (citation
omitted). Namely,
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteristic
of the prior art, it possesses the authority to require the applicant
to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.
Id. (quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)).
Appellant’s Specification describes the orthotic insert is able to
provide arch correction by supporting the arch of the user’s foot at a first
height that provides full correction when a user is standing on both feet and
flexing to a second height that is less than the first height when the user is
walking. Spec. 9. The Specification further describes the orthotic insert is
dynamic, in that it is flexible and resilient (id. at 8), and has a spring rate
selected as a function of at least one of the user’s weight, additional load,
foot flexibility, and activity level. Id. at 9–10.
Krebs’s insertion d is made from a hard material, such as sheet-steel,
and has a profile adapted to the hollow, i.e., arch, of the foot. Krebs,
ll. 48–53. Like Appellant’s orthotic insert, Krebs’s insertion d has a first
height, and flexes to a second height upon application of a higher load. Also
similar to Appellant’s orthotic insert, insertion d is dynamic and has a
particular spring rate, at least in view of its shape and material. See, e.g.,
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Reply Br. 3 (acknowledging that Krebs’s insertion d of sheet-steel has a
spring rate). In view of the similarities between Appellant’s orthotic insert
and Krebs’s insertion d, the Examiner has a reason to believe that, like
Appellant’s orthotic insertion, Krebs’s insertion d would substantially fully
correct the arch of the foot. Absent a showing to the contrary, Appellant
does not apprise us of error in the Examiner’s finding that Krebs’s insertion
sole with insertion d discloses “an orthotic insert . . . configured to
substantially fully correct the arch of the foot of the user when the user is in
a standing position,” as recited in independent claim 1.
Appellant also contends Krebs’s insertions do not disclose “a weight
adjusting leaf configured to releasably attach to the orthotic insert,” as
recited in independent claim 1. More specifically, Appellant argues the
insertions are not releasably attached to the orthotic insert because they are
inserted into pockets in the insertion sole and permanently secured by
sewing flap g to the top cover. Appeal Br. 6–7; Reply Br. 3. Appellant’s
contention does not apprise of error because Krebs discloses that “insertions
d, e and f are removable so that the orthopædic-profile can be adapted to the
shape and to the conditions of the foot.” Krebs, ll. 61–64. Moreover, Krebs
does not refer to the sewing of flap g as a permanent securement, but instead
discloses that sewing flap g is to “close the free ends of the pockets and to
prevent slipping out of the insertions.” Id. at ll. 74–77.
In view of the foregoing, Appellant does not apprise us of error in the
Examiner’s rejection of independent claim 1. We, therefore, sustain the
rejection of independent claim 1, with independent claim 10 falling
therewith.
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Appellant argues that claims 2, 3, and 5 are patentable for the same
reasons as independent claim 1, and that claims 11, 12, and 14 are patentable
for the same reasons as independent claim 10. Appeal Br. 7. As Appellant
does not apprise us of error in the Examiner’s rejection of independent
claims 1 and 10, we sustain the rejection of claims 2, 3, 5, 11, 12, and 14.

Anticipation Based on Nickerson
In finding Nickerson anticipates independent claim 1, the Examiner
relies on Nickerson’s permanent insole 12 for disclosing the recited orthotic
insert. Final Act. 4; Ans. 5. Nickerson’s Figure 1, reproduced below, shows
a portion of a shoe including permanent insole 12.

Figure 1 is a longitudinal section of a portion of a shoe having an arch
support system. Nickerson, p. 1, ll. 22–25. The arch support system
includes the heel portion and the curved shank portion of permanent
insole 12 of a shoe, as well as curved shank piece 13. Id. at p. 1, ll. 55–68.
Appellant argues “[a] shoe’s permanent, required insole is not an
insert at all, and a standard leather shoe’s permanent insole is flat, providing
no arch correction at all.” Reply Br. 3–4. We agree with Appellant that the
Examiner has not explained sufficiently why a person of ordinary skill in the
art would understand a permanent insole to be an insert. See, e.g., Dayco
Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed.
Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether
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one skilled in the art would reasonably understand or infer from the [prior
art reference’s] teaching’ that every claim element was disclosed in that
single reference.” (alterations in original) (quoting In re Baxter Travenol
Labs., 952 F.2d 388, 390 (Fed. Cir. 1991))). For example, a permanent
insole is a permanent part of a shoe, whereas, as its names implies, an
orthotic insert is inserted into a shoe.
As the Examiner has not demonstrated sufficiently that Nickerson
discloses the orthotic insert recited in independent claim 1, we do not sustain
the rejection of independent claim 1 and claims 2, 3, and 5 depending
therefrom. Independent claim 10 similarly recites an orthotic insert (Appeal
Br., Claims App), and, for the same reasons as independent claim 1, we do
not sustain the rejection of independent claim 10 and claims 11, 12, and 14
depending therefrom.

Anticipation Based on Avent
Appellant argues independent claims 1 and 10 as a group. Appeal
Br. 9–12; Reply Br. 4. We select independent claim 1 as representative, and
independent claim 10 stands or falls therewith.
In rejecting independent claim 1, the Examiner finds Avent’s
adjustable orthotic discloses the recited orthotic insert. Avent’s Figure 3a,
reproduced below, shows the adjustable orthotic.
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Figure 3a is a bottom view of the adjustable orthotic with an insert.
Avent 1:43–45. The adjustable orthotic includes shell layer 300 for
supporting the arch cavity, with support and comfort added by cushioning
layer 306. Id. at 8:11–13. Shell layer 300 includes opening 309 for
receiving removable insert 303. Id. at 8:20–23. According to Avent: “The
shell layer itself has a hardness and stiffness that can provide comfort and
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support to a user. If the user wants light support, the orthotic may be worn
without an insert. . . . Inserts may be inserted to alter the comfort and support
properties of the shell layer.” Id. at 10:48–56.
Appellant contends that Avent fails to describe “an orthotic insert . . .
configured to substantially fully correct the arch of the foot of the user when
the user is in a standing position,” as recited in independent claim 1, because
Avent’s shell layer provides light arch support, as opposed to substantially
full arch correction. Appeal Br. 12; Reply Br. 4. We, however, agree with
the Examiner that “[f]eet vary from individual to individual and therefore,
one thickness and/or shape might not provide full correction for one
particular foot but could for another individual’s foot.” Ans. 4. Moreover,
in view of the similarities between Appellant’s orthotic insert and Avent’s
shell layer, the Examiner has a reason to believe that the ability to
substantially fully correct the arch of the foot of the user is an inherent
characteristic of Avent’s shell layer. Avent’s shell layer 300 is curved to
support the arch of the foot, and is made from a plastic having a hardness
from 90A–100A or least below 59D–64D. Avent 9:51–57, 10:31–36, Fig. 7.
In view of its shape and material, Avent’s shell layer has a first height, and
flexes to a second height upon application of a higher load, similar to
Appellant’s orthotic insert.
For these reasons, Appellant does not apprise us of error in the
Examiner’s rejection of independent claim 1. We, thus, sustain the rejection
of independent claims 1 and 10.
Appellant also disputes the rejection of claim 2. Appeal Br. 11.
Claim 2 recites “[t]he weight adjustable orthotic insert system of claim 1,
wherein the weight adjusting leaf is configured to releasably attach to the
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orthotic insert such that the weight adjusting leaf contacts the arch support
portion of the orthotic insert.” Id. at Claims App. Appellant contends that
Avent teaches away from the subject matter of claim 2 because “the
insert 303 is an addition to the orthotic 300 changing areas of the orthotic
other than just the arch support area of the orthotic.” Appeal Br. 11.
As an initial matter, a reference may anticipate even if it teaches away
from the claimed subject matter. Celeritas Techs. Ltd. v. Rockwell Int’l
Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). Moreover, Avent describes
insert 303 as releasably attaching itself to shell layer 300 by means of
tabs 305, 310. Avent 8:35–40, Figs. 3a, 10. Insert 303 contacts shell
layer 300, which is the arch support portion of the adjustable orthotic. Id.
at 8:11–13, Fig. 10 (showing insert 303 in contact with shell layer 300). For
these reasons, Appellant does not apprise us of error in the rejection of
claim 2, and we sustain the rejection of claim 2.
Appellant argues that claims 3, 5, 7, and 8 are patentable for the same
reasons as independent claim 1, and that claims 11, 12, 14, 16, and 17 are
patentable for the same reasons as independent claim 10. Appeal Br. 13. As
Appellant does not apprise us of error in the Examiner’s rejection of
independent claims 1 and 10, we sustain the rejection of claims 3, 5, 7, 8, 11,
12, 14, 16, and 17.

Obviousness over Krebs, Nickerson, or Avent
The Examiner’s obviousness rejection based on Nickerson does not
remedy the deficiency in the anticipation rejection based on Nickerson
discussed above. See Final Act. 7–8 (determining it would have been
obvious to modify the weight adjusting leaves taught by any of Krebs,
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Nickerson, and Avent to have the recited spring rates). Accordingly, we
similarly do not sustain the obviousness rejection based on Nickerson.
In regard to the obviousness rejections based on either Krebs or
Avent, Appellant argues that claim 9 is patentable for the same reasons as
independent claim 1, and that claim 18 is patentable for the same reasons as
independent claim 10. Appeal Br. 7, 13. As set forth above, Appellant does
not apprise us of error in the Examiner’s anticipation rejections of
independent claims 1 and 10 based on Krebs and Avent, and we, therefore,
sustain the obviousness rejections of claims 9 and 18 based on Krebs and
Avent.

CONCLUSION
We sustain the rejection of claims 1–3, 5, 10–12, and 14 under 35
U.S.C. § 102(a)(1) based on Krebs, and we likewise sustain the rejection of
claims 9 and 18 under 35 U.S.C. § 103 based on Krebs. We do not sustain
either the rejection claims 1–3, 5, 10–12, and 14 under 35 U.S.C. § 102(a)(1)
based on Nickerson, or the rejection of claims 9 and 18 under 35 U.S.C.
§ 103 based on Nickerson. We sustain the rejection of claims 1–3, 5, 7, 8,
10–12, 14, 16, and 17 under 35 U.S.C. § 102(a)(1) based on Avent, and we
similarly sustain the rejection of claims 9 and 18 under 35 U.S.C. § 103
based on Avent. Consequently, we affirm the Examiner’s decision to reject
claims 1–3, 5, 7–12, 14, and 16–18.

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DECISION SUMMARY
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5,
10–12, 14 102(a)(1) Krebs
1–3, 5,
10–12, 14
1–3, 5,
10–12, 14 102(a)(1) Nickerson
1–3, 5,
10–12,
14
1–3, 5, 7,
8, 10–12,
14, 16, 17
102(a)(1) Avent
1–3, 5, 7,
8, 10–12,
14, 16, 17

9, 18 103(a) Krebs 9, 18
9, 18 103(a) Nickerson 9, 18
9, 18 103(a) Avent 9, 18
Overall
Outcome
1–3, 5,
7–12, 14,
16–18

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). 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED