Thomas Hofbauer

Patent Trials and Appeals Board

Aug 23, 2021

2020005711 (P.T.A.B. Aug. 23, 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.
12/880,847 09/13/2010 Thomas J. Hofbauer 23128-0003001 9912
26211 7590 08/23/2021
FISH & RICHARDSON P.C. (NY)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
KANE, KATHARINE GRACZ
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
08/23/2021 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS J. HOFBAUER

Appeal 2020-005711
Application 12/880,847
Technology Center 3700
____________

Before JAMES P. CALVE, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision rejecting claims 40–43. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
“Thomas J. Hofbauer and his estate.” Appeal Br. 3.
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ILLUSTRATIVE CLAIM
40. Footwear comprising:
a sole made of a resilient material;
a thong connected to said sole;
an insert-member made of metal, plastic, or rubber;
wherein said insert member is disposed substantially
within the center of said sole;
wherein said insert-member is disposed such that it
deforms said sole; such that when said footwear is
not being worn by the user, said sole includes a
fore portion upwardly inclined relative to the
horizontal plane of an aft portion of said sole;
wherein said aft portion of the sole is thereby structured
to maintain substantially continuous contact with
the heel of the wearer’s foot while walking;
wherein the footwear does not include any material
designed to secure the user’s heel to said aft
portion of said sole.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Maling US 2,926,435 March 1, 1960
Fukuoka US 3,290,802 Dec. 13, 1966
Schwartz US 3,757,435 Sept. 11, 1973

REJECTION
Claims 40–43 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Maling, Fukuoka, and Schwartz.
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FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Among the arguments presented, the Appellant contends that the
Examiner erred in rejecting independent claim 40, because — contrary to the
Examiner’s position — the cited Maling reference does not teach or suggest
the recited “insert member . . . disposed substantially within the center of
said sole.” See Appeal Br. 5–8; Reply Br. 2–6.
According to the Examiner, Maling’s teachings, bearing upon the
limitation in question, are shown in Figures 1, 5, and 6 of the reference. See
Non-Final Act. 3; Answer 3–4.
Maling’s Figure 1 is reproduced below.

Figure 1 is a top plan view of a footwear embodiment, showing covering
element 12 forming a transversely extending arch 20, where indicated. See
Maling col. 1, ll. 56–57, col. 2, ll. 22–34.
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Maling’s Figure 5 is reproduced below:

Figure 5 is a cross-sectional side elevation view of the embodiment shown in
Figure 1, with the section cut along line 3–3 and having the perspective
indicated in Figure 1, above. Maling col. 1, ll. 60, 62–3. Maling’s Figure 5
shows covering element 12 forming a transversely extending arch 20 (see id.
col. 2, ll. 22–34), as well as stretchable element 26 “secured to the under
surface of covering element 12 to act as a stretchable·reinforcement of the
covering at the region of its extent or it may be otherwise embodied between
the covering element and innersole member 10” (id. col. 2, ll. 68–72).
Maling’s Figure 6 is reproduced below:

Figure 6 is a cross-sectional front elevation view of the embodiment of
Figures 1 and 5, with the section cut along the line 6–6 and having the
perspective indicated in Figure 5, above. See Maling col. 1, l. 64. Maling’s
Figure 6 shows covering element 12 forming the transversely extending
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arch 20, the stretchable element 26 disposed on the underside of covering
element 12 (see id. col. 2, ll. 22–34, 68–70), as well as the securement of
covering element 12 to innersole member 10. See id. col. 2, ll. 18–22
(“[W]hile member 10 is held substantially flat, the relatively unstretched
margins of element 12 are wrapped over the edge of member 10 and secured
to its under margin all around the innersole member 10 as indicated at 18.”)
The Examiner (Non-Final Act 3) maps the claimed “insert-member”
to Maling’s stretchable element 26, which — as shown in Figures 5 and 6 of
the reference — is disposed beneath covering element 12 and above
innersole member 10. Mindful of the precise recitation of claim 40 (“said
insert member is disposed substantially within the center of said sole”), the
Examiner maintains that the claimed “sole,” of claim 40, “is the entire
element shown in [Maling’s] Figures 1, 5 & 6,” which includes “[t]he
combination of reference characters 10, 12 & 26.” Answer 3. Further
elaborating this position, the Examiner states:
The claim is not limited to the sole consisting of one element,
since [claim 40] is a comprising claim which can incorporate
various elements (additional pieces) and the appellant has not
further defined the sole as such. As interpreted, element 26 is
disposed within the center of the entire sole. It is located within
the elements 10 & 12, as well [as] situated in a center location,
inasmuch as applicant has defined what the center of the sole
[is]. See Maling Figures 1, 5 & 6.
Id. at 3–4.
According to the Appellant:
[T]he Examiner is wrong that Maling discloses [the recited]
“insert member [26] is disposed substantially within the center
of said sole” (Rejection at 3) because Maling’s [element] 26 is
“a stretchable element at the underside of covering element 12”
(Maling 2:65–66) and element 12 is a “covering element” and
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not part of the sole. Indeed, as seen in Figure 5 . . . , cov[er]ing
element 12 is a cover to the sole (hence the name) and stretched
tight over the top of the sole.
Appeal Br. 5–6.
The dispute reflected in the Examiner’s and the Appellant’s respective
positions turns, primarily, on the construction of the term “sole” in claim 40.
According to the Examiner, Maling’s innersole member 10, stretchable
element 26, and covering element 12 — if considered collectively — may be
properly regarded as the claimed “sole.” See Answer 3–4. By contrast, the
Appellant — although seemingly conceding that Maling’s innersole
member 10, by itself, might satisfy the requirements of the recited “sole”
(see Appeal Br. 6) — maintains that covering element 12, at least, is not part
of the “sole” and, consequently, Maling’s stretchable element 26 (i.e., the
structure that the Examiner maps to the recited “insert-member”) cannot be
“disposed substantially within the center of said sole” (id. at 5–6).
Among the guidance provided by our reviewing courts, on matters of
claim construction, the Federal Circuit has explained:
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is
not simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e., an interpretation that is “consistent with the
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997) (citation and internal quotation marks omitted); see also
In re Suitco Surface, 603 F.3d 1255, 1259–60 (Fed. Cir. 2010).
In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017). In Smith,
the Federal Circuit reviewed the Board’s construction of the term “body” in
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the context of claims reciting an expandable downhole drilling tool. The
related Specification, for the claims at issue in Smith, described the “body”
as an element distinct from various other identified components of the tool
(such as a “mandrel,” “piston,” and “drive ring”). Smith, 871 F.3d at 1377–
78. Likewise, the prior art reference (Eddison), discussed in Smith,
separately described a “body” and other drilling tool components (such as a
“mandrel” and “cam sleeve”). Id. at 1380. Yet, in determining that the
reference taught the claimed “body,” the Board and the Examiner interpreted
“the term ‘body’ as a broad term that may encompass other components
such as ‘mandrel’ and ‘cam sleeve,’ reasoning that only the term ‘body’ is
recited in the claims without further limiting features and that the
specification neither defines the term ‘body’ nor prohibits the examiner’s
broad reading of it.” Id. at 1380–81. Reversing the Board’s decision, the
Federal Circuit explained:
The [Specification] separately identifies and describes
various components of its drilling tool, such as the “body,”
“moveable arms,” “mandrel,” “piston,” and “drive ring,” which
do not support the Board’s broad reading of the claim term
“body.” Furthermore, Eddison’s descriptions of its own drilling
tool distinguish and separately describe its “body,” “mandrel,”
and “cam sleeve.” The PTO fails to point to any description of
the body that would support its strained construction of “body,”
and its urging that the term “body” in the . . . claims
corresponds to the “body,” “mandrel,” and “cam sleeve” of
Eddison is thus unsupported. We therefore conclude that the
“body” in the . . . claims is a component distinct from other
separately identified components in the specification, such as
the mandrel, and cannot be understood to include the “cam
sleeve” in Eddison.
Id. at 1383 (citations omitted).
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The Federal Circuit’s analysis in Smith provides instructive guidance
for the present Appeal.
The Appellant’s Specification discloses multiple embodiments,
including embodiments wherein a “sole” is distinct from a covering material.
Figures 12A and 12B of the Specification are particularly helpful in
understanding such embodiments. Figure 12A of the Specification is
reproduced below:

Figure 12A is a cross-sectional side view of a disclosed embodiment, cut
lengthwise, showing sole 18 and insert 17 disposed inside the sole. Spec.
¶¶ 69, 99. “The insert could be molded within the sole or inserted later,
depending upon the manufacturing process” and “the sole 18 in this
embodiment may be made with a slot or a slit to accommodate and aid in the
installation of the insert 17.” Id. ¶ 99. Figure 12B of the Specification is
reproduced below:

Figure 12B is a cross-sectional side view of another disclosed embodiment,
cut lengthwise, showing “attachment 17B” atop “sole 18B.” Id. ¶¶ 70, 102.
The Specification emphasizes the difference between the embodiment of
Figure 12A and that of Figure 12B, calling attachment 17B “an alternative to
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or a variation of the insert,” which is “applied to the exterior of the sole, in
this case on the top surface of the sole, to act as or function as an insert, not
within the sole, however, but on the sole.” Id. ¶ 102. The Specification also
discloses that the embodiment of Figure 12B may also have “a layer of
material” on the outside of attachment 17B: “To further enhance its use, a
layer of material could be applied over it. That is, the layer would isolate the
attachment from the foot of the wearer if it was installed on the top surface
of the sole.” Id.
The Specification’s embodiment of Figure 12B, with the additional
“layer of material . . . applied over” the “attachment 17B” (Spec. ¶ 102), is
similar to the embodiment of Maling’s Figures 1, 5, and 6, discussed above.
The Specification’s “sole 18B,” “attachment 17B,” and “layer of material”
(see id.) correspond, respectively, to Maling’s innersole member 10,
covering element 12, and stretchable element 26 (see Maling col. 2, ll. 5–7,
66–72).
Maling’s innersole member 10, covering element 12, and stretchable
element 26 are all elements that the Examiner maps to the recited “sole” of
claim 40 in the Appeal. See Answer 3–4. Yet — in a circumstance similar
to that addressed in Smith, 871 F.3d at 1383, wherein the Federal Circuit
construed the term “body” to exclude various distinct and separately
identified elements (e.g., the “mandrel”) — the Appellant’s Specification
explicitly describes the elements corresponding to Maling’s covering
element 12 and stretchable element 26 (i.e., the Specification’s “layer of
material” and “attachment 17B,” respectively) as distinct and separate from
the “sole 18B” (Spec. ¶ 102). Indeed, the Specification sharply demarcates
the boundaries of “attachment 17B” and “sole 18B,” explaining that
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“attachment 17B” (of Figure 12B) is “applied to the exterior of the sole” and
is “not within the sole, . . . but on the sole” — a distinction that is
emphasized further, by using the term “attachment,” as opposed to the term
“insert” (the latter term conveying interiority and being applied to, e.g., the
related element in the Figure 12A embodiment, wherein the “sole 18”
entirely surrounds “insert 17”). Id. ¶¶ 99, 102; see also Chicago Bd. Options
Exch., Inc. v. Int’l Sec. Exch., LLC, 677 F.3d 1361, 1369 (Fed. Cir. 2012)
(referring to “[t]he general presumption that different terms have different
meanings”). Such a distinction applies with even greater force to the
Specification’s “layer of material,” which is not only outside of the
“sole 18B,” but is outside “attachment 17B,” as well. Spec. ¶ 102. In view
of these boundaries drawn in the Specification, it would be incongruous to
conflate Maling’s elements that correspond to the Specification’s “layer of
material” and “sole 18B” — as the Examiner does, by mapping both
Maling’s covering element 12 and innersole 10 to the recited “sole” of
claim 40. See Non-Final Act 3; Answer 3–4. In view of the Examiner’s
error in construing the term “sole” of claim 40, we do not sustain the
rejection.
In addition to interpreting claims in view of the Specification and in a
manner consistent therewith (see Smith, 871 F.3d at 1382–83), claims “must
be read and interpreted with reference to claims that have been cancelled or
rejected, and the claims allowed cannot by construction be read to cover
what was thus eliminated from the patent.” Schriber-Schroth Co. v.
Cleveland Trust Co., 311 U.S. 211, 220–221 (1940) (addressing allowed
claims in the context of litigation proceedings).
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In the present Appeal, the language of pending and canceled claims in
the record reinforce the interpretation of the claim language, discussed
above. The distinctions found in the Specification’s language describing an
“insert” that is inside the “sole” (in the manner of Figure 12A of the
Specification) — as opposed to describing an “attachment” that is outside
the “sole,” albeit beneath an additional “layer of material” (in the manner of
Figure 12B) (see Spec. ¶¶ 99, 102) — are also manifest in the Appellant’s
claiming strategy. Original claims 2 and 9 are drawn to the configuration
shown in the Figure 12A embodiment, requiring “a resilient insert member
that is adapted to be inserted into said sole” (claim 2) or “a resilient insert
member that is adapted to reside in said sole” (claim 9). See id. at 44, 45
(original claims filed, Sept. 13, 2010) (emphasis added). By contrast,
original claims 3 and 10 are drawn to the configuration shown in the
Figure 12B embodiment, requiring “an external resilient and angled member
attached to said sole” (claim 3) or “an external resilient member attached to
said sole” (claim 10). Id. (emphasis added). Claims 2, 3, 9, and 10 are no
longer pending. However, the only independent claim in this Appeal (claim
40) recites “said insert member is disposed substantially within the center of
said sole” (emphasis added) — thereby employing the language of
interiority (i.e., “insert” and “within the center”) that applies to the
Specification’s Figure 12A embodiment (in a manner similar to original
claims 2 and 9), but eschewing the language of exteriority that appears in
original claims 3 and 10 (e.g., “external” and “attached to”) that applies to
the configuration of the Figure 12B embodiment.
Thus, certain of the Appellant’s claims narrowly recited the
“sole”/“insert” configuration of the Figure 12A embodiment (e.g., original
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claims 2, 9, and pending claim 40), while other claims narrowly recited the
“sole”/“attachment” configuration of the Figure 12B embodiment (e.g.,
original claims 3 and 10). The cancelation of claims drawn specifically to
the Figure 12B embodiment does not expand the scope of the pending
claims, which are drawn specifically to the Figure 12A embodiment.
Rather, the presence, in the record, of claims drawn to aspects of the
Figure 12B embodiment helps to confirm the particular meaning of the
recited “sole”/“insert member” relationship that is recited in, e.g., pending
independent claim 40. Although the Specification’s Figure 12B
embodiment does not meet the “insert member” limitation of claim 40, our
claim construction reflects the concept that, in certain circumstances, “the
prosecution history requires a claim construction that excludes some but not
all of the preferred embodiments.” Rheox, Inc. v. Entact, Inc., 276 F.3d
1319, 1327 (Fed. Cir. 2002).
For the reasons discussed above, claim 40’s recitation of “said insert
member is disposed substantially within the center of said sole” reads on
neither the Specification’s Figure 12B embodiment, nor that of Maling’s
Figures 1, 5, and 6.
Therefore, in view of the foregoing, we do not sustain the rejection of
independent claim 40 and dependent claims 41–43 under 35 U.S.C. § 103(a).
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
40–43 103(a) Maling, Fukuoka,
Schwartz
40–43
REVERSED