Appeal No. 2004-0107 Page 7
Application No. 09/963,122
impacts, as would occur in adding any layer to those already present.” See Answer,
page 6. The appellants argue there is no suggestion to combine the references in the
manner proposed by the examiner, in view of the limitation that the rubber layer also
must be thin enough to provide better elasticity to improve the kicking action of the shoe
and the lack of any teaching that waterproofing the shoe would result in such an
improvement (Brief, page 9).
Dreschler discloses a waterproof shoe comprising a leather outer layer 1, to the
inside of which is cemented a rubber layer 2. Dreschler explains that this construction
provides the appearance of an ordinary shoe or boot, but has the added advantage of
making the shoe waterproof without the necessity to treat the outer surface. As we
understand the examiner’s position, it is that (1) one of ordinary skill in the art would
have found suggestion in Dreschler to make a soccer shoe waterproof by adding a
rubber layer adhered to the inside of the outer coat, (2) the addition of a waterproofing
rubber layer inherently would provide such elasticity to contribute to repulsive force of
the shoe against the ball, and (3) the addition of a waterproofing layer also inherently
would provide an elasticity that would alleviate the pain of the foot caused by kicking the
soccer ball (Answer, pages 13-15). In our opinion, none of these conclusions is
supported by evidence.
To conclude that a soccer shoe would be improved by adding a waterproof layer
is merely conjecture on the part of the examiner. There is no suggestion to this effect in
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