Appeal No. 2004-0131
Application No. 08/462,531
ordinary skill in the art. See In re Angstadt, 537 F.2d 498,
501, 190 USPQ 214, 217 (CCPA 1976). Here, we determine that the
examiner has not met this burden for the following reasons.
On page 5 of the answer, the examiner asserts that these
claims are indefinite because of the lack of disclosure regarding
the combination of elements of midsole density variations and
sole thickness variations. The examiner states that because
there is no guidance as to how these elements would be combined
in a single shoe, the examiner states it is not clear as to what
structural limitations appellant intends to encompass with the
claimed language.
We refer to our determinations regarding our written
description and enablement analysis made above in Section I and
in Section II. For these same reasons, we reverse the 35 U.S.C.
§ 112, second paragraph, rejection of claims 2-4, 6-9, 15-22, and
24-32.
IV. The 35 U.S.C. § 103 rejection6
The examiner’s position regarding this rejection is set
forth on pages 5 and 6 of the answer and also on pages 9-11 of
the answer. We refer to these pages of the answer in regard to
the examiner’s position.
We observe that the examiner relies upon Hlustik for
teaching appellant’s claimed shoe/shoe sole except for teaching
the “exact tapering of the side portions above the sidemost
extent of the sides and density variations in the midsole”.
Answer, page 6. The examiner relies upon Pasternak or Novitske
for teaching the claimed tapering. The examiner relies upon
6 We note that in the brief, appellant lists two 35 U.S.C. § 103
rejections. On page 5 of the answer, the examiner has combined these
rejections into one, wherein Pasternak and Novitske are used in the
alternative.
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