Appeal No. 97-1315
Application 08/264,976
would understand from the specification and the claims that the upward curl applies to the sole when it
is in the free standing condition. It therefore is our view that indefiniteness does not exist on this basis.
The second part of this rejection pertains to claims 17-20, which the examiner asserts are
duplicates of claims 10, 12, 14 and 16. We agree. While the appellant has acknowledged that errors
in terminology appear in these claims and has suggested changes which in our view would cure the
problem (Revised Brief, page 3), the fact is that instances of indefiniteness stand uncorrected by
amendment, and therefore we have no choice but to sustain the Section 112 rejection of claims 17-20.
The Rejection Under 35 U.S.C. § 102(b)
It is the examiner’s position that claims 1 and 2 are anticipated by Shimada. We have
evaluated this rejection on the basis that anticipation is established only when a single prior art reference
discloses, either expressly or under the principles of inherency, each and every element of the claimed
invention. See In re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994).
Our conclusion is that the rejection cannot be sustained.
The essence of the appellant’s invention is that the outer sole has an upward curl, in its free
standing state, that is greater than that of the footwear over which it is to be worn, so that the toe (and
heel) of the outer sole press against the corresponding portions of the footwear to create a tight fit. This
provides resistance to the migration of snow or dirt in between the upper surface of the outer sole and
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