Docket No. 2013-1316, -1317
LOURIE, DYK, WALLACH
April 23, 2014
Brief Summary: Board decision that certain claims were anticipated affirmed but decision that others would not have been obvious reversed as “inherently disclosed” in the prior art (based in part on expert declaration).
Summary: On Clouds appealed from PTAB decision in an inter partes reexamination upholding claims 1, 2 and 8-10 and, separately, claims 3-5 of its US 7,181,866 relating to shock adsorbing running shoes as anticipated; this decision was affirmed. K Swiss appealed the PTAB decision rejecting ‘866 claims 6, 7 and 11 as obvious; this decision was reversed. The disputed patent relates to a “shoe outsole with a resilient member that allows relative motion between the upper and lower portions in the ‘unloaded state’ to absorb oblique shoe loads, but compresses and enages to prevent relative motion in the ‘loaded state’-i.e., when pressure is applied to the outsole” (“In the…loaded configuration, the resilient member compresses or collapses such that the upper layer of the resilient member is engaged with the lower layer of the resilient member.”) On the anticipation of claims 1, 2 and 8-10, the FC panel agreed that the claims were anticipatd because the prior art described a “sole made of an elastically resilient material [that] absorbs oblique shoe loads in the unloaded state” and “ribbing” that anticipates the “loaded configuration”. It also agreed that claims 3-5 were anticipated by another reference because it teaches “rubber pins [that] would frictionally engage with the upper layer in the loaded state, thereby preventing relative motion between the two layers.” Regarding the PTAB findings on nonobviousness, the opinion explains that claims 6 and 7 “specify the amount by with the resilient member deforms in the loaded configuration” (greater than 20% and 50% deformation, respectively). And these percentages were “inherently disclosed” by the cited references (“where the general conditions of a claim are disclosed in the prior art”, as here, “it is not inventive to discover the optimum or workable ranges by routine experimentation” (citing In re Aller, CCPA 1955 and Randall Mfg., FC 2013). An expert opinion also concluded “in view of the materials typically available for purposes of shoe construction…[the cited art] discloses deformation that would be more than 50% when a wearer undertakes vigorous activity.”) Claim 11 (also found nonobvious by the PTAB) encompasses a “variation of the outsole where ‘the resilient member comprises a profile like hollow element that contains a tubular part.’” The PTAB had concluded that claim 11 was not obvious because one of the references in the combination “disparaged” the other references. The FC panel disagreed, however, finding that that reference did not disparage those references but “uses them as another example of the floating problem that it was attempting to solve” and it would have been “logical” to combine the references. Thus, the PTAB decisions of nonobviousness of claims 6, 7 and 11 were reversed.