Appeal No. 2002-0363
Application No. 08/162,373
answer) that the midsole limitations in the claim can be dismissed in determining
patentability over the prior art because they are “new matter” has no basis in law. Such
limitations cannot be ignored, but rather must be considered and given weight, when
evaluating the claims so limited with regard to patentability over the prior art. See Ex
parte Grasselli, 231 USPQ 393, 394 (Bd. App. 1983); and Ex parte Pearson, 230 USPQ
711, 712 (Bd. Pat. App. & Int. 1991).
Accordingly, we shall not sustain the standing 35 U.S.C. § 103(a) rejection of
claim 93, as being unpatentable over of Holcombe.
V. The U.S.C. § 103(a) rejection of Claims 93, 103, 122-124, and 126-141 as being
unpatentable over Robinson in view of Bergmans
Robinson, the examiner’s primary reference in this rejection, relates to: “[a]
walking shoe . . . provided between its outer and inner soles, and substantially hidden
by the [vamp] at the instep and toe, with a reverse wedge, i.e., one which increases in
thickness in the forward direction” (column 1, lines 25-28). Of this shoe, Robinson
teaches that:
[a]n insole 30 is applied on the upper side 32 of the composite of
the outsole and reverse wedge. Again, the connection of the parts is
made by conventional means, such as convention shoe adhesive and/or
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