Appeal 2007-1313
Application 10/162,098
therefrom in a central region.” Gabrielli’s tongue structure has this arrangement
when the user’s foot is inserted in the boot, i.e., during use, because its upper and
lower layers are spaced from each other in a central region by silicone during use
(FF 5). The Examiner, however, cannot have it both ways. Either the “tongue
structure” of Gabrielli that meets the claim is the tongue structure during
manufacture, or the tongue structure during use, not both. As such, Gabrielli’s
tongue structure fails to meet the limitations of claim 6 of having an air space
between the upper and lower layers and of the layers being separated from one
another during use.
The Examiner found that Hoshizaki discloses a tongue structure for use in
footwear that has a resilient lower layer and a rigid upper layer as claimed (Id.).
The Examiner concluded that it would have been obvious to modify Gabrielli’s
tongue structure to include the specific material characteristics of the tongue
structure of Hoshizaki since it is within the general skill of a worker to select a
known material on the basis of its suitability for the intended use (Answer 4) and
because comfort is an important factor in a shoe or boot (Answer 5). Appellant
contends that there is no reason why one would want to use a resilient stretchable
material for the lower layer of Gabrielli’s tongue structure, because when the liquid
is placed in the air space, the lower layer would stretch, which would be
undesirable (Br. 5). We agree with Appellant.
We see no reason why one having ordinary skill in the art would have
replaced the internal lining 64 of Gabrielli’s tongue structure with the materials of
Hoshizaki. By using a stretchable inner liner, Gabrielli’s pocket 36 would be
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