Federal Circuit disposition — 2004-1267

United States Court of Appeals for the Federal Circuit
04-1267
(Serial No. 09/122,198)
IN RE DANIEL S. FULTON and JAMES HUANG
Garth E. Janke, Birdwell & Janke, of Portland, Oregon, for appellants.
John M. Whealan, Solicitor, United States Patent and Trademark Office, of
Arlington, Virginia, for the Director of the United States Patent and Trademark Office.
With him on the brief were W. Asa Hutchinson III, Attorney-Advisor, and William
LaMarca, Associate Solicitor.
Appealed from: United States Patent and Trademark Office
Board of Patent Appeals and Interferences

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United States Court of Appeals for the Federal Circuit
04-1267
IN RE DANIEL S. FULTON and JAMES HUANG
___________________________
DECIDED: December 2, 2004
___________________________
Before MICHEL, RADER, and GAJARSA, Circuit Judges.
MICHEL, Circuit Judge.
Appellants Daniel Fulton and James Huang appeal from the decision of the U.S.
Patent and Trademark Office, Board of Patent Appeals and Interferences (“Board”),
affirming the examiner’s rejection of appellants’ application for a utility patent on
grounds that the invention claimed would have been obvious under 35 U.S.C. § 103(a).
The appeal was submitted for decision without oral argument on November 5, 2004.
Because the Board’s finding that the prior art suggested the desirability of the
combination of shoe sole limitations claimed in appellants’ patent application was
supported by substantial evidence, we affirm.
Background
On July 24, 1997, appellants filed application number 09/122,198 (the “’198
application”) for a utility patent directed to a shoe sole with increased traction. Claim 1,
the only independent claim at issue, reads:
An improved shoe sole for increasing the resistance to slip on a
contact surface, the sole comprising a bottom surface and defining a
perimeter bounding a forefoot portion corresponding to the forefoot of the
shoe and a heel portion corresponding to the heel of the shoe, wherein the
sole extends generally along a fore-aft axis running from said heel portion
to said forefoot portion, the sole further comprising a substantially regular

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tiling array of projections projecting from said bottom surface, said
projections terminating in hexagonal shaped projected surfaces spaced
from said bottom surface in a direction for making contact with the contact
surface, said projections being oriented so that opposite edges of said
projected surfaces face generally in the directions of said fore-aft axis,
said projected surfaces being substantially flat and parallel to the bottom
surface to maximize the area of contact with the contact surface, said
projections being spaced from one another to define substantially
continuous channels therebetween for conducting liquid, said channels
being open over at least most of said perimeter, said forefoot portion and
said heel portion of the sole.
’198 application, at 7 (emphases added).
Three limitations of this claim are at issue, namely the limitations that: (A) the
perimeter of the shoe is mostly open, (B) the projected surfaces, also called studs, are
hexagonal in shape, and (C) the hexagonal shapes be oriented so that opposite edges
of the hexagon “face generally in the directions of said fore-aft axis.” Id. A figure from
the ’198 application is reproduced below, with non-substantive modifications for
simplicity of presentation.
Prior art related to the ’198 application includes U.S. Patent No. 3,793,750
(“Bowerman”), U.S. Design Patent No. 281,462 (“Pope”), U.S. Design Patent No.
263,645 (“Mastrantuone”), and United Kingdom Patent No. 513,375 (“Davies”). Figures
from these patents are reproduced below.
As can be seen in the figures, the orientation of the projected surfaces in these
figures is different. In this opinion, we will refer to the orientation in the ’198 application,
Bowerman, and Pope as a “facing” orientation because the front edge of each
hexagonal projected surface faces forward and the orientation in Mastrantuone and
Davies as a “pointing” orientation.
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’198 application Bowerman Pope
(utility patent) (utility patent) (design patent)
Davies Mastrantuone
(utility patent) (design patent)
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The examiner rejected the ’198 application, inter alia, on obviousness grounds by
considering Pope in light of Bowerman and Davies, and appellants appealed this
rejection to the Board. In its decision, the Board reversed the examiner’s ground for
rejection, supplied an alternative ground for rejection, and remanded. After the Board
entered its decision, appellants filed a request for rehearing. The panel held this motion
for rehearing in abeyance while the examiner considered the application on remand.
After reopening prosecution, the examiner rejected the ’198 application for reasons
identical to those offered by the Board in its first decision.
Appellants again appealed the examiner’s rejection. In its decision, the Board
“vacat[ed] the rejection of claim 1 set forth in the earlier decision in favor of the identical
rejection later entered by the examiner.” Ex parte Fulton, No. 2003-0536, slip op. at 4
(Bd. Pat. App. & Int. Sept. 11, 2003). The Board vacated the rejection in order to
alleviate the confusion caused by the appellant in concurrently pursuing a request for a
rehearing of the Board’s first decision and a new appeal from the final rejection of the
’198 application after remand. The Board credited the arguments in both actions. The
Board then proceeded to affirm the rejection but under a different line of reasoning. The
Board stated:
In the present case, the combined teachings of Bowerman and
Pope would have suggested the shoe sole recited in claim 1 to a person
having ordinary skill in the art. As indicated above, Bowerman’s shoe sole
responds to all of the limitations in the claim except for those relating to
the hexagonal shaped projected surfaces. While not specifically
mentioning hexagonal shaped projected surfaces, Bowerman clearly
suggests that cylindrical polygon shaped studs or projections other than
those expressly described (square, rectangular or triangular) may be
employed to provide sharp edges which bite into artificial turf for good
traction. Pope establishes that shoe soles having studs embodying
projected surfaces hexagonally shaped and oriented as recited in claim 1
are conventional. Given these disclosures, a person having ordinary skill
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in the art would have readily appreciated Pope’s known hexagonal shaped
projecting surfaces as being particularly well suited for implementing
Bowerman’s desire for projections having a plurality of sharp edges
adapted to bite into artificial turf to obtain good traction. This appreciation
would have furnished the artisan with ample suggestion or motivation to
combine Bowerman and Pope in the manner proposed so as to arrive at
the subject matter recited in claim 1.
Id. at 6-7. After appellants’ request for a rehearing was denied, they appealed to this
court, which has jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
Discussion
I.
“A patent may not be obtained . . . if the differences between the subject matter
sought to be patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a).
Obviousness is a “question of law based on underlying findings of fact.” In re
Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). The Board’s factual findings are
upheld unless they are unsupported by substantial evidence. Id. Substantial evidence
is “such relevant evidence as a reasonable mind might accept as adequate to support a
conclusion.” Consol. Edison Co. v. NLRB, 305 U.S. 197, 229-30 (1938). What the prior
art teaches, whether it teaches away from the claimed invention, and whether it
motivates a combination of teachings from different references are questions of fact.
Id.; In re Berg, 320 F.3d 1310, 1312 (Fed. Cir. 2003). Other factual findings related to
obviousness may include “(1) the scope and content of the prior art; (2) the level of
ordinary skill in the prior art; (3) the differences between the claimed invention and the
prior art; and (4) objective evidence of nonobviousness.” In re Dembiczak, 175 F.3d
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994, 998 (Fed. Cir. 1999), abrogated on other grounds in In re Gartside, 203 F.3d 1305
(Fed. Cir. 2000) (abrogating the holding in In re Dembiczak that the Board’s findings of
fact are reviewed for clear error); see also Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“When a rejection depends on a combination of prior art references, there must
be some teaching, suggestion, or motivation to combine the references.” In re Rouffet,
149 F.3d 1350, 1355 (Fed. Cir. 1998). Stated another way, the prior art as a whole
must “suggest the desirability” of the combination. In re Beattie, 974 F.2d 1309, 1311
(Fed. Cir. 1992) (internal quotation omitted); Winner Int’l Royalty Corp. v. Wang, 202
F.3d 1340 (Fed. Cir. 2000) (“Trade-offs often concern what is feasible, not what is, on
balance, desirable. Motivation to combine requires the latter.” (emphasis added)). The
source of the teaching, suggestion, or motivation may be “the nature of the problem,”
“the teachings of the pertinent references,” or “the ordinary knowledge of those skilled in
the art.” In re Rouffet, 149 F.3d at 1355.
II.
As quoted above, the Board found that the prior art as a whole suggested or
motivated a combination of the open perimeter and orientation of Bowerman with the
hexagonal surface and orientation of Pope. Appellants raise a number of arguments as
to why this finding is not supported by substantial evidence.
Appellants first argue that the Board’s finding of a motivation to combine lacks
substantial evidence because the Board failed to demonstrate that the characteristics
disclosed in Pope, hexagonal surfaces in a facing orientation, are preferred over other
alternatives disclosed in the prior art. This argument fails because our case law does
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not require that a particular combination must be the preferred, or the most desirable,
combination described in the prior art in order to provide motivation for the current
invention. “[T]he question is whether there is something in the prior art as a whole to
suggest the desirability, and thus the obviousness, of making the combination,” not
whether there is something in the prior art as a whole to suggest that the combination is
the most desirable combination available. See In re Beattie, 974 F.2d at 1311 (internal
quotation omitted; emphasis added). A case on point is In re Gurley, 27 F.3d 551, 552-
53 (Fed. Cir. 1994), in which we upheld the Board’s decision to reject, on obviousness
grounds, the claims of a patent application directed to one of two alternative resins
disclosed in a prior art reference, even though the reference described the resin claimed
by Gurley as “inferior.” Far from requiring that a disclosed combination be preferred in
the prior art in order to be motivating, this court has held that “[a] known or obvious
composition does not become patentable simply because it has been described as
somewhat inferior to some other product for the same use” and the reference “teaches
that epoxy is usable and has been used for Gurley’s purpose.” Id. Thus, a finding that
the prior art as a whole suggests the desirability of a particular combination need not be
supported by a finding that the prior art suggests that the combination claimed by the
patent applicant is the preferred, or most desirable, combination.
In this case, the Board found that “Bowerman clearly suggests that cylindrical
polygon shaped studs or projections other than those expressly described (square,
rectangular, or triangular) may be employed to provide sharp edges which bite into
artificial turf for good traction.” Ex parte Fulton, slip op. at 6-7. Bowerman thus provides
a motivation to combine its teachings with other prior art references that disclose
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cylindrical polygon shapes other than squares, triangles, and rectangles. The Board
also found that Pope discloses a shoe sole with hexagonal surfaces, which is a
cylindrical polygon-shaped surface, and a facing orientation. Finally, the Board found
that no other prior art references taught away from the combination of Bowerman and
Pope that it adopted. These secondary findings are sufficient to support a primary
finding that the prior art as a whole suggests the desirability of the combination of
Bowerman and Pope described by the Board.
Appellants disagree with the Board’s finding that no prior art references taught
away from the combination of Bowerman and Pope adopted by the Board. Appellants
quote language from In re Gurley that “[a] reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” 27 F.3d at 553. Appellants argue that “the
prior art disclosed alternatives to each of the claimed elements A [the perimeter], B [the
shape of the surface], and C [the orientation of the surface]. Choosing one alternative
necessarily means rejecting the other, i.e., following a path that is ‘in a divergent
direction from the path taken by the applicant.’” This interpretation of our case law fails.
The prior art’s mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does not
criticize, discredit, or otherwise discourage the solution claimed in the ’198 application.
Indeed, in the case cited by appellants, In re Gurley, we held that the invention claimed
in the patent application was unpatentable based primarily on a prior art reference that
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disclosed two alternatives, one of which was the claimed alternative. Accordingly, mere
disclosure of alternative designs does not teach away.
Here, the design patents in the prior art disclose a number of alternative shoe
sole designs but do not teach that hexagonal projections in a facing orientation are
undesirable and, therefore, do not teach away. Furthermore, Davies communicates in
its specification that its claimed invention, which includes hexagonal surfaces in a
pointing orientation, has “a non-skid characteristic effective in all directions relative to its
use.” U.K. Patent No. 513,375 (accepted Oct. 11, 1939) at 2, ll. 19-20. But Davies
does not teach that hexagons in a facing orientation would be ineffective. Accordingly,
we find unpersuasive appellants’ arguments that the prior art teaches away from
hexagonal surfaces in a facing orientation.
Appellants next contend that the Board’s finding lacks substantial evidence
because it does not show a teaching in the prior art directed to the importance of
aligning the cylindrical polygonal studs in a facing orientation. In their patent
application, appellants assert that “[t]his general orientation [a facing orientation] of the
surfaces 36 has been found optimal for slip resistance in the sole of a shoe, in which
there is a predetermined, usual or ordinary direction of travel.” (Emphasis added.)
Appellants’ argument is unpersuasive from a legal standpoint because it again relies on
the mistaken premise that the prior art must teach that a particular combination is
preferred, or “optimal,” for the combination to be obvious. Furthermore, as we
emphasized in In re Beattie, “[a]s long as some motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the law does not require that
the references be combined for the reasons contemplated by the inventor.” 974 F.2d at
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1312. Accordingly, this argument is unpersuasive because the Board need not have
found the combination of Bowerman and Pope to be desirable for the reason stated in
the ’198 application.
This argument also fails on the facts of this case because the Board’s findings
are sufficiently broad to encompass appellants’ idea of using a facing orientation
because the predominant direction of travel is forward. The Board’s finding that other
cylindrical polygon shapes “may be employed to provide sharp edges which bite into
artificial turf for good traction” suggests the importance of orientation because “bite”
comes primarily from the front and back edges of the contact surface of a multi-sided
stud being oriented so that the front edge faces the direction of travel and the back edge
is directly opposite, as disclosed in Bowerman. See Bowerman, col. 2, ll. 55-60, figs. 2,
4. Indeed, in a discussion of “bite,” Bowerman refers to Figures 2 and 4 of its
specification, which depict a facing orientation. Id. Bite may also arise from the other
edges of the contact surface, as well as edges formed by the intersection of the sides of
the stud.
The Board also found that “a person having ordinary skill in the art would have
readily appreciated Pope’s known hexagonal shaped projecting surfaces as being
particularly well suited for implementing Bowerman’s desire for projections having a
plurality of sharp edges adapted to bite into artificial turf to obtain good traction.” Ex
parte Fulton, slip op. at 6-7. Reasons why a hexagonal surface would be well-suited for
obtaining good traction include the fact that the greater number of edges in a hexagon
over a square provide bite in more directions. Further, although the Board’s finding
could perhaps have been clearer, it encompasses appellants’ claim that a facing
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orientation is desirable because it provides bite in the forward direction. The Board’s
finding states that a person of ordinary skill of the art would have recognized that
hexagonal surfaces as in Pope are “particularly well suited” to provide bite. Id. By
referring to Pope, which has a facing orientation, rather than patents in the examination
record that disclosed a pointing orientation, the Board’s finding recognizes the
importance of a facing orientation and, therefore, also the importance of providing “bite”
in the forward direction.
Appellants finally contend that the Board did not properly weigh the prior art as
required by In re Young, 927 F.2d 588 (Fed. Cir. 1991), and did not provide sufficient
reasoning for its rejection of these references as required by In re Lee, 277 F.3d 1338
(Fed. Cir. 2002). Although the Board’s analysis is short, the Board’s decision is not so
lacking in comparative reasoning that it fails under In re Young or In re Lee. The Board
clearly considered the prior art cited by appellants and provided a factual basis upon
which we can affirm its decision.
III.
The Board sustained the examiner’s rejection of the dependent claims of the ’198
application because “appellants have not challenged such with any reasonable
specificity, thereby allowing these claims to stand or fall with parent claim 1.” Ex parte
Fulton, slip op. at 8. In its briefing before this court, appellants have also not raised any
arguments related solely to the dependent claims. Accordingly, because we affirm the
Board’s decision as to claim 1 of the ’198 application, we also affirm the Board’s
decision as to the dependent claims.
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Conclusion
In sum, the Board found that the prior art as a whole suggested or motivated a
combination of the open perimeter of Bowerman with the hexagonal surface and facing
orientation of Pope. Because this finding was supported by substantial evidence, we
affirm the Board’s rejection of the claims of the ’198 application.
AFFIRMED
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