Young, Sheena

Patent Trials and Appeals Board

Feb 18, 2020

14712132 - (D) (P.T.A.B. Feb. 18, 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.
14/712,132 05/14/2015 Sheena Young Young-DoubleShoe-CIP 9709
7590 02/18/2020
Sheena Young
14 Horseman Court
Randallstown, MD 21133
EXAMINER
GRACZ, KATHARINE
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
02/18/2020 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 SHEENA YOUNG
____________________

Appeal 2019-0017981
Application 14/712,132
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, JEREMY M. PLENZLER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

FINAMORE, Administrative Patent Judge.

DECISION ON APPEAL

1 We reference herein the Specification filed May 14, 2015 (“Spec.”), Final
Office Action mailed October 18, 2017 (“Final Act.”), Appeal Brief filed
May 17, 2018, as corrected August 16, 2018 (“Appeal Br.”), Examiner’s
Answer mailed October 30, 2018 (“Ans.”), and Reply Brief filed
December 6, 2018 (“Reply Br.”).
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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–3, 9–12, and 19.3 We have
jurisdiction under § 6(b). We AFFIRM.
SUBJECT MATTER ON APPEAL
The invention
relates generally to footwear, and more particularly, to a double
shoe combination footwear comprising an inner shoe and outer
shoe, wherein the inner shoe is adapted to fit within the shoe
cavity of the outer shoe and may be entirely concealed within the
outer shoe, regardless of the shape of the upper of the outer shoe.
Spec. ¶ 2. Claims 1 and 12 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter.
1. A double shoe combination footwear with a concealed
inner shoe, comprising:
a first shoe; and
a second shoe;

2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the inventor, Sheena Adrienne Young, as the real party in interest.
Appeal Br. 4.
3 In the Final Office Action, the Examiner indicates claims 1–3, 9–14, and
19 are rejected. Final Act. 1 (Office Action Summary). The Examiner’s
rejections in the Final Office Action, however, do not include claims 13 and
14. Moreover, in the previous Non-Final Office Action mailed February 9,
2017 (“Non-Final Act.”), the Examiner explains that claims 13 and 14 are
withdrawn from consideration. Non-Final Act. 2. Similarly, in Appellant’s
reply thereto, namely the Response filed July 20, 2017 (“Resp.”), Appellant
acknowledges claims 13 and 14 are withdrawn. Resp. 9. For these reasons,
we understand claims 13 and 14 are withdrawn from consideration such that
only claims 1–3, 9–12, and 19 are before us on appeal, and our
understanding appears to be consistent with Appellant’s understanding of the
claims on appeal. Appeal Br. 10, Claims App. (including only claims 1–3,
9–12, and 19).
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wherein said first shoe comprises a first upper and a first
outsole, said first outsole being stiffer than said first
upper;
wherein said first outsole is attached to said first upper and
extends from a proximal end to a distal end of said
first shoe;
wherein said second shoe comprises a second upper and a
second outsole, said second outsole being stiffer
than said second upper;
wherein said second outsole is attached to said second
upper and extends from a proximal end to a distal
end of said second shoe;
wherein said second shoe is adapted to fit matingly within
a shoe cavity of said first shoe;
wherein said second upper is substantially similar in size
and shape to said first upper, such that, when said
second shoe is inside said shoe cavity of said first
shoe, said second shoe fits snugly and matingly
within said shoe cavity of said first shoe;
wherein said second shoe is adapted to be worn both
separately from said first shoe and in conjunction
with said first shoe by a single foot of a user when
said second shoe is inside said shoe cavity of said
first shoe; and
wherein said second upper of said second shoe is not larger
in size than said first upper of said first shoe, such
that, when said second shoe is inside said shoe
cavity of said first shoe, an outer surface of said
second upper of said second shoe is entirely
concealed within said first shoe;
wherein said second upper of said second shoe comprises:
a heel portion configured to cover at least a portion
of a heel of said single foot of said user.
Appeal Br., Claims App. (claim status identifier omitted).
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REJECTIONS
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis
1–3, 11, 12 103 Tomaro,4 Wigutow5
9, 10, 19 103 Tomaro, Wigutow, Beattie6

ANALYSIS
Obviousness Based on Tomaro and Wigutow
Independent Claim 1
The Examiner relies on Tomaro for disclosing most of the limitations
of independent claim 1. Final Act. 3–4. Tomaro discloses “rugged high-top
hiking boot 10 equipped with replaceable, watertight bootie 12 sized and
shaped to fit snugly within the volume of the boot.” Tomaro 2:28–30,
Fig. 1. The Examiner acknowledges Tomaro does not disclose the claim
limitations reciting “said first outsole being stiffer than said first upper” and
“said second outsole being stiffer than said second upper.” Final Act. 4. For
these limitations, the Examiner relies on Wigutow. Id. Wigutow teaches
pack boot 10, which includes outer boot 13 and inner bootie 26.
Wigutow 2:31–34, Fig. 3. The Examiner finds Wigutow discloses outsoles
that are stiffer than the uppers because Wigutow teaches uppers made from
layers of fabric and insulation and soles made from rubber. Final Act. 4
(citing Wigutow 2:27–67). The Examiner then determines it would have
been obvious to modify the disclosure of Tomaro’s footwear to include
outsoles that are stiffer than the uppers, as Wigutow teaches, “to provide a
sturdy and durable outsole surface in which a user can walk on.” Id.

4 US 5,499,459, issued Mar. 19, 1996.
5 US 7,051,459 B1, issued May 30, 2006.
6 US 3,063,172, issued Nov. 13, 1962.
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Appellant presents several arguments against the rejection of
independent claim 1. Appeal Br. 19–25, 27–28; Reply Br. 4–7. For the
reasons below, Appellant does not apprise us of error in the rejection. Being
unapprised of error, we sustain the rejection of independent claim 1.
Double shoe combination
Appellant argues the combination of Tomaro and Wigutow would not
have resulted in a double shoe combination, as recited in independent
claim 1. Appeal Br. 27–28; Reply Br. 7. Appellant contends a bootie, such
as Tomaro’s replaceable watertight bootie, is not a shoe because a bootie is
equivalent to a sock or stocking and not intended to be worn independently
or on rough terrain. Appeal Br. 27 (citing id. at App. J, Reference [2]);
Reply Br. 7 (citing id. at Apps. A–C); Tomaro 2:28–30). Appellant also
asserts a boot, like that of Wigutow, is distinguishable from a shoe, as
evidenced by the U.S. Patent and Trademark Office’s definition for class 36,
i.e., “Boots, Shoes, and Leggings.” Appeal Br. 27 (citing id. at App. J,
Reference [1]); Wigutow, Abstract.
Appellant’s arguments regarding Tomaro and Wigutow individually,
however, do not apprise us of error in the Examiner’s rejection, which is
based on the combined teachings of Tomaro and Wigutow. See In re Keller,
642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references.”). As set forth above, the Examiner proposes to
combine the disclosure of Tomaro’s footwear with Wigutow’s teaching of
outsoles that are stiffer than the uppers. Final Act. 4.
We agree with the Examiner that the combined teachings of Tomaro
and Wigutow would have resulted in a footwear comprising two shoes. The
Specification expressly defines “shoe” as “any footwear intended to protect
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and provide comfort [to] the human foot and comprises at least an upper and
a rigid, stiff outsole attached to the upper as a separate piece.” Spec. ¶ 32.
The Specification also provides examples of footwear that are not shoes,
namely “socks, stockings, hosiery, shoe liners, and removable lining[s].” Id.
The Examiner’s proposed combination of Tomaro and Wigutow
would have resulted in a footwear having an outer boot and a replaceable
bootie with an outsole that is stiffer than the upper. A boot falls within the
Specification’s definition of shoe, and is not included in the examples of
footwear that are not shoes. Similarly, a bootie modified to have an outsole
stiffer than the upper would fall within the Specification’s definition. See
Ans. 8–9 (explaining the modified bootie can be worn by itself). Thus, the
proposed combination of Tomaro and Wigutow would have resulted in a
combination footwear comprising two shoes.
Outsoles stiffer than the uppers
Appellant argues the combined teachings of Tomaro and Wigutow
would not have resulted in the limitations reciting “said first outsole being
stiffer than said first upper” and “said second outsole being stiffer than said
second upper.” Appeal Br. 19–20; Reply Br. 4. According to Appellant,
Wigutow’s upper is constructed from 1000 denier waterproofing coated
polyester. Appeal Br. 19 (citing Wigutow 4:17–19). Appellant contends the
prior art teaches that polyester and waterproof materials are stiff. Id. (citing
id. at Apps. G–I). Appellant’s assertion that Wigutow’s waterproof
polyester upper is stiff, however, does not apprise us of error in the
Examiner’s finding that Wigutow’s rubber outsole is stiffer than the upper.
Final Act. 4; Ans. 3–4.
Appellant also argues that the combined teachings of Tomaro and
Wigutow would not have resulted in these claim limitations because neither
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Tomaro nor Wigutow discloses two shoes. Appeal Br. 20; Reply Br. 4.
This argument is unpersuasive of error for the reasons set forth above.
Appellant further argues “Wigutow or Tomaro had no motivation to
have a less stiff upper for the pack boots (hiking boots).” Appeal Br. 20.
We disagree. According to Wigutow, the rubberized, i.e., stiff, sole provides
traction and eliminates slippage. Wigutow 2:66–3:2; Ans. 6. Thus,
Appellant does not apprise us of error in the Examiner’s reason for
combining Tomaro’s disclosed footwear with Wigutow’s teaching of
outsoles that are stiffer than the uppers, namely, “to provide a sturdy and
durable outsole surface in which a user can walk.” Final Act. 4.
Outsoles attached to uppers and extending from a proximal end to a
distal end of a shoe
Appellant argues the combination would not have resulted in the
limitations of independent claim 1 reciting “said first outsole is attached to
said first upper and extends from a proximal end to a distal end of said first
shoe” and “said second outsole is attached to said second upper and extends
from a proximal end to a distal end of said second shoe.” Appeal Br. 21–22;
Reply Br. 4–5. In particular, Appellant contends Tomaro’s boot has an
upper attached to a midsole, not an outsole. Appeal Br. 21 (citing id. at
Apps. L–M); Reply Br. 5. Even if we agree with Appellant, the outsole of
Tomaro’s boot 10 is still attached to the upper, albeit indirectly via the
midsole. Tomaro, Fig. 1. Appellant also asserts Tomaro discloses its bootie
includes an upper and an insole, but not an outsole. Appeal Br. 21; Reply
Br. 5 (citing id. at App. A). Nonetheless, Figure 1 of Tomaro depicts
bootie 12 having an outsole extending from a proximal end to a distal end
thereof. Thus, Appellant does not persuade us of error in the Examiner’s
finding that Tomaro discloses a first outsole attached to a first upper and
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extending from a proximal end to a distal end of a first shoe, and a second
outsole attached to a second upper and extending from a proximal end to a
distal end of a second shoe, as recited in these limitations.
Appellant further argues Wigutow does not disclose these limitations.
Appeal Br. 21–22; Reply Br. 5. This argument does not apprise us of error
because the Examiner relies on Tomaro, not Wigutow, for disclosing these
limitations. Final Act. 3.
Second shoe comprising a second upper and a second outsole
Appellant argues the combination of Tomaro and Wigutow would not
have resulted in the claim limitation reciting “wherein said second shoe
comprises a second upper and a second outsole.” Appeal Br. 22–24; Reply
Br. 5. According to Appellant, Tomaro discloses a bootie, not a shoe.
Appeal Br. 23; Reply Br. 5 (citing id. at Apps. A–C). This argument is
unpersuasive for the reasons discussed above. In particular, the Examiner’s
proposed combination of Tomaro and Wigutow would have resulted in a
footwear having an outer boot and a replaceable bootie with an outsole that
is stiffer than the upper, and a bootie modified to have an outsole stiffer than
the upper falls within the broadest reasonable interpretation of “shoe.”
Appellant additionally argues Tomaro discloses a bootie with no
outsole. Appeal Br. 22; Reply Br. 5 (citing id. at App. A). This argument is
not persuasive of error because, as set forth above, Figure 1 of Tomaro
depicts bootie 12 having an outsole.
Appellant also argues Wigutow does not disclose this limitation.
Appeal Br. 23; Reply Br. 5. This argument does not apprise us of error
because the Examiner relies on Tomaro, not Wigutow, for disclosing this
limitation. Final Act. 3.
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Second shoe fits snugly and matingly within first shoe
Appellant argues the combination of Tomaro and Wigutow would not
have resulted in the limitation reciting “said second shoe fits snugly and
matingly within said shoe cavity of said first shoe.” Appeal Br. 24–25;
Reply Br. 6. More specifically, Appellant argues Tomaro does not disclose
this limitation because Tomaro’s bootie is not a shoe. Appeal Br. 24; Reply
Br. 6 (citing id. at App. A). This argument is unpersuasive for the reasons
above.
Independent Claim 12
Independent claim 12 is similar to independent claim 1, and further
recites that the first shoe comprises a heel. Appeal Br., Claims App. The
claim also recites “wherein said heel is at least approximately 1.5 inches in
height.” Id.
The Examiner finds Tomaro discloses a first shoe having a heel, and
the Examiner provides an annotated version of a portion of Tomaro’s
Figure 1, reproduced below, identifying the heel. Final Act. 3; Ans. 7.
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Tomaro’s Figure 1 is a perspective view of a boot and a replaceable bootie,
and the Examiner annotated the portion of the figure showing the boot to
identify the heel. Tomaro 2:14–15; Ans. 7.
The Examiner acknowledges that neither Tomaro nor Wigutow
discloses a heel that is at least approximately 1.5 inches in height. Final
Act. 4. The Examiner determines it would have been obvious “to
experiment with different values of height/thickness for the heel in order to
achieve an optimal configuration for the purpose of protecting a user’s sole
from the ground surface, since discovering the optimum or workable ranges
of the heel involves only routine skill in the art.” Id. at 5.
Appellant presents several arguments against the rejection of
independent claim 12. Appeal Br. 25–35; Reply Br. 6–9. For the reasons
below, Appellant does not apprise us of error in the rejection, and we sustain
the rejection of independent claim 12.
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Double shoe combination
Appellant argues the combination of Tomaro and Wigutow would not
have resulted in a double shoe combination, as recited in independent
claim 12, because the boots and booties disclosed in Tomaro and Wigutow
are not shoes. Appeal Br. 29–31, 34; Reply Br. 6–9. For the same reasons
discussed above with respect to independent claim 1, this argument does not
apprise us of error in the rejection of independent claim 12.
Heel at least approximately 1.5 inches in height
Appellant argues Tomaro and Wigutow do not include a heel. Appeal
Br. 25–26, 29–31, 33–35; Reply Br. 6, 8–9. Appellant contends that the
Specification draws a distinction between “heel” and “heel portion,” and that
the Examiner’s use of “heel” is consistent with Appellant’s use of “heel
portion.” Appeal Br. 25, 31, 33 (citing Spec. ¶ 43). Appellant further argues
the portion of Tomaro’s boot the Examiner’s relies on for disclosing a heel is
instead a midsole. Id. at 26, 29, 31 (citing id. at Apps. J, L, M). Appellant
additionally argues a heel is an independent portion from the outsole, and
that Tomaro and Wigutow have only soles. Reply Br. 6, 8–9 (citing id. at
Apps. D–E). Appellant’s arguments do not apprise us of error.
As Appellant points out, the Specification defines a “heel” as “any
solid, raised base or support constructed of stiff material such as leather,
wood, rubber, and the like , attached to the sole portion of a shoe or boot
beneath the back portion of the foot.” Appeal Br. 25, 31; Spec. ¶ 34. As
depicted in the Examiner’s annotated version of Tomaro’s Figure 1, the
portion the Examiner identifies as the “heel” is a solid base that is raised in
the sense of being thicker than surrounding portions of the outsole and is
attached to the outsole in the sense that it is integral with the outsole.
Ans. 7. Thus, the portion of Tomaro’s boot that the Examiner relies on for
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disclosing a heel falls within Appellant’s definition of the term, and
Appellant does not apprise us of error in the Examiner’s finding that Tomaro
discloses a heel.
Additionally, Appellant argues there is no motivation to add a heel to
Tomaro’s hiking boot. Appeal Br. 26, 31–32, 34. Appellant also argues the
Examiner’s proposed modification to Tomaro’s disclosure to include a heel
that is at least 1.5 inches in height would change the function of the hiking
boot. Id. at 26, 31, 34.
As set forth above, the Examiner finds Tomaro’s boot includes a heel
because the portion of the sole located beneath the back of the foot is raised,
i.e., thicker, compared to the remainder of the sole. The Examiner proposes
to modify the heel height, i.e., thickness of the portion of the sole located
beneath the back of the foot, to be at least 1.5 inches for the purpose of
protecting a user’s foot from the ground. Final Act. 5. Appellant does not
show error in the Examiner’s reason for the proposed modification, nor does
Appellant explain how increasing the thickness of the portion of the sole
beneath the back of the foot would prevent the boot from acting as a hiking
boot.
Claims 2 and 3
Claim 2 recites the “double shoe combination footwear, according to
Claim 1, wherein said second upper of said second shoe comprises: a front
portion configured to cover at least a portion of one or more toes of said
single foot of said user.” Appeal Br., Claims App. Claim 3 recites the
“double shoe combination footwear, according to Claim 1, wherein said
second upper of said second shoe comprises: one or more side portions
configured to cover one or more side portions of said single foot of said
user.” Id.
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Appellant again argues the combination of Tomaro and Wigutow
would not have resulted in a double shoe combination because the boots and
booties disclosed in Tomaro and Wigutow are not shoes. Appeal Br. 36–37;
Reply Br. 9–10. For the same reasons discussed above with respect to
independent claim 1, this argument does not apprise us of error in the
rejection of claims 2 and 3.
With respect to claim 2, Appellant argues that neither Tomaro nor
Wigutow “disclose[s] any details in reference to toe configurations.” Appeal
Br. 36. Likewise, with respect to claim 3, Appellant argues that neither
Tomaro nor Wigutow “describe[s] any details regarding side configurations
of the footwear.” Appeal Br. 37. The Examiner, however, correctly finds
Figure 1 of Tomaro, as well as Figure 3 of Wigutow, depict booties having
front portions configured to cover the wearer’s toes and side portions
configured to cover side portions of the wearer’s feet. Final Act. 5;
Ans. 12–13.
In view of the foregoing, Appellant does not apprise us of error in the
rejection of claims 2 and 3. We, therefore, sustain the rejection of claims 2
and 3.
Claim 11
Claim 11 recites the “double shoe combination footwear, according to
Claim 1, wherein said second outsole and second upper are constructed of a
plantable material.” Appeal Br., Claims App. The Examiner acknowledges
Tomaro and Wigutow do not expressly disclose the second outsole and
second upper are constructed from a plantable material, and determines it
would have been obvious to modify the material of the second shoe to be a
plantable material because selecting a known material on the basis of its
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suitability for the intended use is a matter of obvious design choice. Final
Act. 5.
Appellant argues the Examiner has not provided evidence for the
motivation to modify the teachings of Tomaro and Wigutow to include
plantable materials. Appeal Br. 39. Appellant’s argument is not persuasive
of error. The Examiner correctly reasons that the selection of a known
material on the basis of its known suitability for the intended use is a matter
of obvious design choice. See, e.g., In re Leshin, 277 F.2d 197, 199 (CCPA
1960) (holding that the selection of a known material, i.e., plastic, based on
its suitability for the intended use, i.e., making a container, would have been
obvious). In support of this rationale, the Examiner finds that cotton, hemp,
and cork are plantable materials because they are biodegradable and
eco-friendly materials. Ans. 14; Spec. ¶ 36 (defining “plantable material” as
“any eco-friendly material such as biodegradable material with seeds
embedded into the material”). The Examiner further finds cotton, hemp, and
cork are known materials for making shoes. Id. Appellant does not refute
these findings, and does not apprise us of error in the Examiner’s
determination of obviousness.
Appellant also argues the Examiner’s proposed modification to make
the second outsole and second upper of a plantable material would change
the principle of operation of Tomaro’s footwear, which is intended to be
watertight. Appeal Br. 39. This argument does not apprise us of error.
Tomaro discloses an article of footwear, and, thus, the principle of operation
of Tomaro’s invention is to act as footwear. Tomaro, Abstract, 1:6.
Modifying Tomaro’s footwear to have a second outsole and second upper
made from plantable material would nonetheless result in a footwear.
Moreover, making the second upper and second outsole from plantable
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material would provide a more eco-friendly shoe. The fact that this
motivating benefit may come at the expense of another, namely
watertightness, does not nullify its use as a basis to modify the prior art
teachings, but instead the benefits both lost and gained, should be weighed
against one and another. Winner Int’l Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n.8 (Fed. Cir. 2000).
Additionally, Appellant reiterates the argument that the combination
of Tomaro and Wigutow would not have resulted in a double shoe
combination because the boots and booties disclosed in Tomaro and
Wigutow are not shoes. Appeal Br. 39; Reply Br. 10. For the same reasons
discussed above with respect to independent claim 1, this argument does not
apprise us of error in the rejection of claim 11.
For these reasons, Appellant does not apprise us of error in the
rejection of claim 11. We, therefore, sustain the rejection of claim 11.

Obviousness Based on Tomaro, Wigutow, and Beattie
Claims 9 and 19
Claim 9 recites:
The double-shoe combination footwear, according to Claim 1,
wherein said first shoe comprises a flap located at a rear distal
end portion of said first upper of said first shoe;
wherein said flap is configured to fold over a rear distal
end portion of said second upper and contact an
interior rear portion of said second shoe; and
wherein said flap secures said second shoe to said first
shoe when said flap is folded over said rear distal
end portion of said second upper and when said
double shoe combination footwear is worn by said
single foot of said user.
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Appeal Br., Claims App. Claim 19 depends from independent claim 12, and
includes similar limitations to claim 9. Id.
The Examiner acknowledges Tomaro and Wigutow do not disclose
the flap recited in each of claims 9 and 19, and relies on Beattie for teaching
the recited flap. Final Act. 7. Beattie describes shield 10 for protecting a
heel and counter of a women’s shoe from becoming soiled. Beattie 1:7–18.
Shield 10 has tab 12 and elastic strap 16 to secure the shield to the heel of
the women’s shoe. Id. at 1:66–2:5, Fig. 1. In use, tab 12 fits over the top
end of the counter of shoe 20. Elastic strap 16 fits over heel 22 of shoe 20.
Id. at 2:6–11, Fig. 2. When the back of a wearer’s foot presses against
tab 12 along the inside surface of the counter, the tab acts as a hook to
prevent the shoe from moving upwardly relative to shield 10. Id. at 3:4–20,
Fig. 2. The Examiner determines it would have been obvious “to modify the
fastening system of Tomaro by using the tab, as taught by Beattie, in order
to provide an easier means of securing a first shoe to a second shoe.” Final
Act. 7. The Examiner also determines it would have been obvious to modify
Tomaro’s fastening system to include Beattie’s fastening system having the
tab because “the substitution of one known fastening system for another
would have yielded predictable results to one of ordinary skill in the art at
the time of the invention.” Id.
Appellant repeats the argument that the combination of Tomaro and
Wigutow would not have resulted in a double shoe combination. Appeal
Br. 40; Reply Br. 10. For the same reasons discussed above with respect to
independent claim 1, this argument does not apprise us of error in the
rejection of claims 9 and 19.
Appellant also argues Beattie does not disclose the flap recited in each
of claims 9 and 19 because Beattie teaches including tab 12, i.e., a flap, in
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shield 10 intended to be secured to a shoe rather than on a shoe intended to
be secured to another shoe. Appeal Br. 40. Appellant’s argument regarding
Beattie, however, does not apprise us of error in the Examiner’s rejection,
which is based on the combination of Tomaro, Wigutow, and Beattie. See
supra In re Keller, 642 F.2d at 426. More specifically, Appellant does not
apprise us of error in the Examiner’s determination that the combined
teachings of Tomaro, Wigutow, and Beattie would have a resulted in the
footwear recited in each of claims 9 and 19. Beattie’s flap would operate in
essentially the same way, whether in its original context as described in
Beattie or in the Examiner’s proposed combination of Tomaro, Wigutow,
and Beattie. In both cases, the flap is held in place by pressure exerted by
the wearer’s foot against the inside surface of the counter of the shoe
touching the wearer’s foot, and the flap prevents the shoe touching the
wearer’s foot from moving upwardly relative to the structure including the
flap.
Appellant further argues that “Beattie demonstrated no motivation to
secure two shoes together,” and that “the [E]xaminer has provided no
evidence that there is motivation to combine Wigutow, Tomaro, and
Beattie’s art.” Appeal Br. 40. Appellant’s arguments are not persuasive of
error because, as the Examiner correctly determines, the substitution of one
fastening system for another to yield a predictable result is obvious. Final
Act. 7; KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result.” (citation
omitted)).
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Appellant contends that securing two shoes together would alter the
function of Tomaro and Wigutow, namely having a removable bootie.
Appeal Br. 40. The footwear resulting from the Examiner’s proposed
modification to the teachings of Tomaro and Wigutow to include Beattie’s
fastening system, however, would not have resulted in an irremovable bootie
because Beattie’s fastening system provides a temporary attachment.
Beattie 1:13–17 (“It is an object of the invention to provide an improved
protector that can be applied temporarily to the back of the shoe . . . .”
(emphasis added)). To the extent the Examiner’s proposed modification
would have resulted in a bootie that is more difficult to remove, the
modification still could have been obvious when weighing the benefits both
lost and gained by the modification. See supra Winner, 202 F.3d at 1349
n.8.
Appellant additionally argues “a flap system will require a slot, and
adding a slot will expose the inner layers of footwear to water [which] would
counteract the waterproof capabilities described by Wigutow and Tomaro.”
Reply Br. 10. Appellant’s argument is not persuasive of error. As the
Examiner finds, adding Beattie’s fastening system to Tomaro’s footwear
would provide an easier means of securing the first shoe to the second shoe.
Final Act. 7. The fact that this motivating benefit may come at the expense
of watertightness does not nullify its use as a basis to modify the prior art
teachings. See supra Winner, 202 F.3d at 1349 n.8.
In view of the foregoing, Appellant does not apprise us of error in the
Examiner’s rejection of claims 9 and 19. Accordingly, we sustain the
rejection of claims 9 and 19.
Appeal 2019-001798
Application 14/712,132
19
Claim 10
Claim 10 depends from claim 9, and recites “wherein said second
upper comprises a slot located at said rear distal end portion of said second
shoe; and wherein said slot is configured to releasably connect with said flap
for securing said second shoe to said first shoe.” Appeal Br., Claims App.
The Examiner determines the proposed combination of the teachings of
Tomaro, Wigutow, and Beattie for claim 9 would have resulted in the
subject matter of claim 10 because Beattie’s fastening systems includes a
slot. Final Act. 8.
Appellant’s arguments for claim 10 are similar to its arguments for
claim 9. Appeal Br. 41–42; Reply Br. 10–11. For the reasons set above
with respect to claim 9, these arguments do not apprise us of error in the
rejection of claim 10. We, therefore, sustain the rejection of claim 10.

DECISION SUMMARY
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 11,
12 103 Tomaro, Wigutow 1–3, 11, 12
9, 10, 19 103 Tomaro, Wigutow, Beattie 9, 10, 19
Overall
Outcome
1–3, 9–12,
19

AFFIRMED