06/30/2014

K-Swiss v. Glide N Lock: Fleshing out 'Disparaging Use' and Obviousness of Ranges


Category: 103 
 
 
 
By: Roy Rabindranath, Contributor
 
TitleK-Swiss, Inc. v. Glide N Lock GMBH, 2013-1316, -1317 (Fed. Circ. April 23, 2014) (non-precedential)
Issues
[1a] On Clouds argues that the Board’s decision that Szentes anticipates claims 1 and 9 is not supported by substantial evidence because Szentes does not disclose the limitation in the first, unloaded configuration—the resilient member that elastically absorbs oblique shoe loads using the relative motion between the upper and lower layers.
K-Swiss, Inc. at *7.
[1b] On Clouds argues that substantial evidence does not support the Board’s conclusion that Okabe anticipates claim 1 because Okabe does not meet the limitation in the second configuration (the loaded state) that the upper and lower layer of the resilient member engage to “substantially prevent” relative motion.
Id. at *9.
[2a] [Whether] a person having ordinary skill in the art would not have combined Szentes with any of [the prior art] references because Szentes disparaged the use of small channels like those in Pagani, Takahashi and Inohara.
Id. at *11 (text added).
[2b] As for claims 6 and 7, which specify the percentage the outsole deforms in the loaded position, the specific percentages are not explicitly disclosed in Pagani, Takahashi or Inohara [but are nonetheless rejected by combining these references with Szentes].
Id. at *12 (text added).
Holdings
[1a] Because the Szentes sole is made of an elastically resilient material, it absorbs oblique shoe loads in the unloaded state, the first configuration, through the movement of the elastic materials.
Id. at *7.
[1b] Okabe teaches that rubber pins would frictionally engage with the upper layer in the loaded state, thereby preventing relative motion between the two layers.
Id. at *9.
[2a] Szentes does not disparage the use of small channels, but uses them as another example of the floating problem that [Szentes] was attempting to solve-"[an outsole with multiple small cavities] shows the same deficiencies [] as the previous one [i.e., a large hallow cavity], weaing results in an unsure and wobbling walk."[...]Id., at *11 (internal citations omitted).
[2b] [W]e find that substantial evidence does not support the Board’s finding that claims 6 and 7 would not have been prima facie obvious in light of Szentes, Pagani, Takahashi, or Inohara [because the (i) percentages are inherent in the prior art, and (ii) because it is not inventive to discover the optimum or workable ranges by routine experimentation.]
Id. at *14 (text added).
 
 
Procedural HistoryOn March 3, 2010, [Appellant] K-Swiss filed a request for inter partes reexamination [of U.S. Patent No. 7,181,866]. In April 2010, finding that K-Swiss's submitted references raised a substantial new question of patentability, the PTO ordered reexamination for claims 1-10 of the '866 patent, and the patent examiner rejected all ten claims. In its response to the April 2010 Office Action, [Appellee and patent owner] On Clouds, added new claim 11, which the examiner rejected. On appeal, the Board affirmed the examiner's anticipation rejections of claims 1-5 and 8-10. The Board reversed the examiner's rejections of claims 6 and 7 for obviousness. The Board reversed the examiner's rejection of claim 11 for indefiniteness and obviousness. K-Swiss appeals the Board's decision reversing the examiner's obviousness rejection of claims 6, 7, and 11. On Clouds cross-appeals the Board's decision affirming the examiner's anticipation rejections of claims 1-5 and 8-10.
K-Swiss, Inc. at *5 (text added). 
 
 
 
 
Legal Reasoning (Lourie, Dyk, and Wallace)
Background
Representative ClaimRepresentative claim 1 reads as follows:

1. An outsole for a shoe, the shoe disposed along a longitudinal axis in a longtiduinal direction parallel to a ground surface in use, the outsole comprising:

a resilient member having an inner surface, an outer surface and, with respect to a direction perpendicular to the longitudinal direction, an upper portion and a lower portion, the outer surface of the lower portion proximate the ground surface in use,

the resilient member having first and second configurations, the first configuration [i.e., the unloaded state] having the inner surface of the upper portion spaced from the inner surface of the lower portion, the resilient member elastically absorbs shoe loads oblique to the perpendicular direction by relative motion in the longitudinal direction between the upper portion and the lower portion in the first configuration, the second configuration [i.e., the loaded state] having the inner surface of the upper portion engaged with the inner surface of the lower portion due to absorbed shoe loads, the engagement substantially preventing relative motion in the longitudinal direction between the upper portion and the lower portion.

K-Swiss, Inc. at *3-4.
[1] Anticipation of Claims 1-5 and 8-10
Szentes ReferenceAs with the '866 patent, Szentes describes efforts to cushion runners by creating a "sole...made of some elastic material" where a "closed cavity is formed between two elastic materials." Szentes implicitly recognizes the "floating problem" as well, indicating that such a hollow cavity has "the drawback...in that walking becomes unstable." Szentes recommends addressing this problem by having ribbing and notching between the upper and lower layers, which prevents the instability through positive engagement. [...] [Moreover,] [b]ecause the Szentes sole is made of an elastically resilient material, it absorbs oblique shoe loads in the unloaded state, the first configuration, through the movement of the elastic materials. It is undisputed that the ribbing in Szentes anticipates the second, loaded configuration. [...] Therefore, we conclude that the Board's finding that Szentes anticipates claims 1-2 and 8-10 is supported by substantial evidence.
K-Swiss, Inc. at *6-8 (text added, internal citations omitted).
Okabe ReferenceOn Clouds's contention [that Okabe does not meet limitations of claim 1 are] incorrect. Okabe teaches that rubber pins would frictionally engage with the upper layer in the loaded state, thereby preventing rleative motion between the two layers.[...] With respect to claim 3, Okabe describes an embodiment with "multiple long and narrow cavities arranged in a row," thereby anticipating the plurality of resilient members, as shown in Figure 1. Therefore, the Board's finding that Okabe anticipates claims 3-5 is supported by substantial evidence.
Id. at *9 (text added, internal citations omitted).
[2] Obviousness Rejections of Claims 6, 7, and 11
Claim 11[Regarding Claim 11,] the Board held, and On Clouds argues, that a person having ordinary skill in the art would not have combined Szentes with [the Pagani, Takahashi or Inahara references] because Szentes disparages the use of small channels like those in [these references]. We disagree. Szentes does not disparage the use of small channels, but uses them as another example of the floating problem that it was attempting to solve [....] Szentes describes a solution to this floating problem in a large cavity. It would be logical to apply Szentes's solutions for a large cavity to the small channels of Pagani, Takahashi and Inohara.[...] Although we agree with the Board's construction of claim 1, it is not necessary that Pagani alone teach engagement of the upper and lower layers. Szentes teaches engagement to prevent he floating effect. When Pagani is combined with Szentes, given that Pagani describes its reslient members as "especially resliently yieldable" and "yielding under the wearer's weight," it would have been obvious to one skilled in the art to create engagement of the ribs or pins in the loaded state to prevent the floating effect. Takahashi and Inohara also teach plural round tubular cavities and that such an arrangment is yieldable. Therefore, we find that substantial evidence does not support the Board's findings that claim 11 would not have been prima facie obvious over Szentes in view of Pagani, Takahashi, or Inohara.
Id. at *11-12 (text added, internal citations omitted).
Claims 6 and 7[Regarding Claims 6 and 7,] which specify the percentage the outsole deforms in the loaded position, the specific percentages are not explicitly disclosed in Pagani, Takahashi or Inohara. Although the Board rejected combining these references with Szentes to find the '866 patent claims obvious, the Board never individually considered claims 6 and 7. We find cliams 6 and 7 invalid for two main reasons. First, the percentages in claim 6 and 7 are inherently disclosed by Pagani, Takahashi, or Inohara. Second, as the patent examiner found, it would have been obvious to one with ordinary skill in the art at the time to construct resilient members that achieve this deformation percentage, since "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 ranged by routine experimintation." Therefore, we find that substantial evidence does not support the Board's finding that claims 6 and 7 would not have been prima facie obvious in light of Szentes, Pagani, Takahashi, or Inohara.
Id. at *12-13 (internal citations omitted, text added).
Conclusion
[W]e affirm the Board's decision rejecting claims 1, 2, and 8-10 [of the '866 patent] as ancipated by [Szentes] and claims 3-5 as anticipated by [Okabe.] With respect to K'Swiss's appeal, we reverse the Board's decision upholding claims 6, 7, and 11 as nonobvious over Szentes in view of [Pagani, Takahashi and Inohara.]
K-Swiss, Inc. at *2.  

 
 Image Attribution Statement: U.S. Patent No. 7,181,866, Figs. 6a, 6b.
 
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