Appeal No. 2002-0225 Page 6
Application No. 08/332,275
We agree with the appellants argument (brief, p. 5) that the phrase "a removable
insole" as recited in independent claims 19 and 25 is definite as required by the second
paragraph of 35 U.S.C. § 112. In that regard, one skilled in that art would clearly
understand the claimed phrase "a removable insole" to mean an insole that is not
permanently affixed, such as by epoxy, to the boot's tread sole or upper.
For the reasons set forth above, the decision of the examiner to reject claims 19
to 21, 23, 25 and 26 under 35 U.S.C. § 112, second paragraph, is reversed.2
The anticipation rejection based on Vibram
We will not sustain the rejection of claims 17, 19, 21, 25, 26 and 32 under
35 U.S.C. § 102(b) as being anticipated by Vibram.
To support a rejection of a claim under 35 U.S.C. § 102(b), it must be shown that
each element of the claim is found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v. Kimberly-Clark Corp., 713
F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026
(1984).
2 It appears that the phrase "and secured in said cavity" recited in claim 25, paragraph (c), should
be deleted since that phrase may conflict with the earlier recitation that the insole is removable.
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