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Shoe Sole Found Obvious

December 02, 2004

Decision icon Decision

Last Month at the Federal Circuit - January 2005

Judges: Michel (author), Rader, and Gajarsa

In In re Fulton, No. 04-1267 (Fed. Cir. Dec. 2, 2004), the Federal Circuit affirmed a decision by the Board rejecting an application because the invention claimed would have been obvious.

The invention in question concerned a shoe sole with increased traction. The claims recited three limitations defining hexagonalshaped projections distributed around the shoe sole. The Examiner had rejected the claims based on three prior art references using variously located hexagonal projections. The Board found that the prior art as a whole suggested or motivated a combination of an open perimeter with the orientation of hexagonal surfaces as claimed. The applicants argued that the prior art did not show that the characteristics disclosed in one prior art reference—hexagonal surfaces in a facing orientation—are preferred over other alternatives disclosed in the prior art. The Federal Circuit ruled that this argument failed because case law did not require that a particular combination must be preferred or be the most desirable in order to provide motivation for a claimed invention. Precedent only requires that something in the prior art as a whole suggest the desirability and, thus, the obviousness of making the combination, but the combination need not be the most desirable combination available. Moreover, the Court ruled that the mere disclosure of alternative designs in one or more references does not teach away from a combination of those references.