Appeal No. 97-1315
Application 08/264,976
suggested the claimed subject matter to one of ordinary skill in the art. (See In re Bell, 991 F.2d 781,
783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993)).
In the first rejection under Section 103, the examiner’s position is that the subject matter in
dependent claims 3-6,9-14 and 17-19 would have been obvious in view of the combined teachings of
Shimada and Beneteau. Shimada is relied upon for disclosing the subject matter recited in claim 1,
from which all of these claims depend, and Beneteau for teaching that the gripping properties of the sole
of a shoe can be improved by providing transverse ridges thereon. From our perspective, even
considering Shimada in the light of Section 103, this rejection fails at the outset for the same reason as
did the rejection of the independent claim, that is, Shimada’s failure to disclose or teach the claimed
upward curl of the outer sole in the free standing state. This deficiency is not cured by Beneteau, even
assuming, arguendo, that it would have been obvious to combine the teachings of the two references.
This being the case, it is our view that the combined teachings of Shimada and Beneteau fail to
establish a prima facie case of obviousness with regard to the subject matter of claims 3-6, 9-14 and
17-19, and we will not sustain this rejection.
We reach the same conclusion with regard to the Section 103 rejection of claims 7, 8, 15, 16
and 20, which is based upon the teachings of Shimada in view of Beneteau and Smith, the last being
cited for its showing of self tapping screws being used in the sole of a shoe to improve traction. As was
the case with Beneteau, the shortcoming in Shimada regarding the curvature of the outer sole is not
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007