Appeal No. 2002-1080 9
Application No. 09/372,149
Claim 4
Claim 4 depends from claim 1 and adds that the cushion member is formed from
a plurality of layers.
Looking at McCarthy, the cushion member thereof may be regarded as
comprising sole member 10 in combination with adhesive device 20. Since this
combination of elements “is formed from a plurality of layers,” claim 4 does not
patentably distinguish over McCarthy as modified by Guarrera. Hence, we shall sustain
the standing rejection of claim 4.
Claim 5
Claim 5 depends from claim 4 and adds that the plurality of layers includes a
layer of randomly oriented fibers. In rejecting this claim, the examiner relies on Crane
for its showing of a slipper made of molded pulp fibers. As we understand it, it is the
examiner’s position that it would have been further obvious to make the sole member of
McCarthy out of pulp fibers “to provide a rough top surface to better adhere the tacky
layer to the sole and better adhere the sole to the foot” (answer, page 5).
Like appellant, we see no basis in the applied references for any such
modification of McCarthy and consider that the examiner has engaged in a hindsight
reconstruction of appellant’s claimed foot protector by impermissibly utilizing appellant’s
own disclosure and claims as a target to be hit by invention-guided manipulation of the
applied reference teachings. In this regard, it is not apparent to us where the applied
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