Appeal No. 2006-1408 Page 6
Application No. 10/019,669
defeat patentability of the whole claimed invention. Rather,
to establish obviousness based on a combination of the
elements disclosed in the prior art, there must be some
motivation, suggestion or teaching of the desirability of
making the specific combination that was made by the
applicant [citations omitted].
In this case, the only motivation for modifying Darby ‘909 by arranging the
various features of the applied references to provide a circumferential counter on the
outer sole of Darby ‘909 and a plurality of separably removable insole layers stacked on
top of one another and prevented by the circumferential counter from shifting is found in
the luxury of hindsight gleaned from appellant’s disclosure, inasmuch as none of the
references teaches or suggests providing a plurality of separably removable insole
layers contained within an out sole cavity formed by a circumferential counter of the out
sole of footwear so as to be prevented, when being stacked in any order upon one
another, by the circumferential counter from shifting within the cavity, as called for in
independent claims 1 and 31. It follows that the rejection of these claims, as well as
claims 2, 4, 5, 7, 8, 10, 11, 41 and 42 depending therefrom, cannot be sustained.
The examiner’s application of Kellerman provides no cure for the deficiency in the
combination of Darby ‘909, Darby ‘133 and Grim discussed above. The rejection of
claim 32 as being unpatentable over Darby ‘909, Darby ‘133, Grim and Kellerman thus
also cannot be sustained.
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