Appeal No. 2004-0131
Application No. 08/462,531
ground-contacting the outersole portion that provides an
increased thickness in a sole side. We observe that the
examiner, in response to this particular explanation by
appellant, does not provide a persuasive rebuttal, i.e., does not
explain why this would not be routine to the skilled artisan.
The examiner merely asserts that appellant’s figures depict a
sole that is not conventional and that the Stewart Declaration is
directed to conventional soles. The examiner states “[i]t is not
clear how “conventional” knowledge can be used to modify an
unconventional midsole. Answer, page 7. The examiner discusses
how the midsole depicted in some of figures is shown as touching
the ground, and queries how a midsole would be incorporated into
a sole when the midsole has a bottom surface that contacts the
ground. Answer, pages 7-8. Such comments do not demonstrate
that it would not be routine for the skilled artisan to combine a
midsole and a sole in making a shoe.
We find that the specification makes clear that Figures 6,
29, 30, and 32 represent midsole embodiments. Whether or not the
drawings do or do not include a lower line depicting the ground
is immaterial to this fact. The skilled artisan understands the
meaning of a midsole portion of a shoe, and understands the
meaning of a sole portion of a shoe. As discussed in the Stewart
Declaration, paragraph 12, the skilled person need only take the
midsole shown in Figure 6, and insert it into the shoe sole of
one of figures 4-5 and 28 such that a lower ground-contacting
portion of the shoe sole remains, and then make the remaining
lower, ground contacting portion an outersole portion.
On page 8 of the answer, the examiner also states that the
Stewart declaration is not entitled to any weight (answer page
8). We disagree for the following reasons.
Firstly, the examiner refers to the case of In re Lindell,
385 F. 2d 453, 155 USPQ 521 (CCPA 1967), in support of his
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