Appeal No. 2002-1080 8
Application No. 09/372,149
Turning to McCarthy, although the reference does not disclose any particular
thickness for the “conventional complete shoe bottom” (column 2, lines 5-6) utilized in
the practice of the invention thereof, it is apparent that the shoe bottom must have a
thickness suitable for its intended purpose of providing an article of footwear that may
be worn for periods of time and for activities akin to those of conventional footwear
(column 3, lines 37-41). In the present case, we believe one of ordinary skill in the art
would have appreciated that the conventional shoe bottom 10 of McCarthy may have a
thickness of “about 5 mm” (i.e., about 0.20 inch) in order to strike a balance between
lightness and wear resistance. We therefore conclude that the subject matter of claim
2 would have been obvious to one of ordinary skill in the art. In this regard, it is well
established that one value within a claimed range fully meets that range. Titanium
Metals Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Claim 3
We reach an opposite conclusion with respect to claim 3, which depends from
claim 1 and adds that the thickness of the cushion member is about 2 mm.
Simply put, we do not believe that the reference evidence adduced by the
examiner establishes that one of ordinary skill in the art would have understood that the
conventional shoe bottom 10 of McCarthy would have a thickness as thin as “about 2
mm” (i.e., about 0.08 inch). We therefore shall not sustain the standing rejection of
claim 3.
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