Appeal No. 1999-2107 Page 4
Application No. 08/926,299
It is the examiner’s view that there is no basis in the specification for the limitation in
claims 27 and 30 that the shoe comprises “a generally flexible upper.” The appellant’s
response is that such a limitation is implicit to one of ordinary skill in the art in the
description of the invention in the specification, and is conveyed to the artisan by Figure
14. We agree, and we will not sustain this rejection.
The Rejection Under Section 112, Second Paragraph
The only one of the issues under this rejection that remains subsequent to the entry
of the amendment after the final rejection is the “means for enclosing a foot . . .” appearing
in claims 43 and 48, which the examiner believes is unclear. We agree with the appellant
that this is an expression of structure in the “means-plus-function” style that is permitted
under the sixth paragraph of Section 112. This rejection is not sustained.
The Rejection Under Section 103
Claims 27, 30-38, 43 and 48 stand rejected as being unpatentable over Vermonet
in view of Vaccari. The test for obviousness is what the combined teachings of the prior
art would have suggested to one of ordinary skill in the art. See, for example, In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case
of obviousness, it is incumbent upon the examiner to provide a reason why one of ordinary
skill in the art would have been led to modify a prior art reference or to combine reference
teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972, 973
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