Cole Hann has made news recently with their dandelion shoe - but alas patents on such a product are likely still unpublished. Instead, we look into Cole Haan’s approach to put a spring back in your step. The application is 15/997,651, and relates to footwear with a spring element that supports the sole by resisting deflection due to one or more lateral and longitudinal deformations of the sole. The figures below from the application show the spring element (50), which has a gap on the medial side.

Of importance in this case was that the the spring element is pre-loaded such that the spring element is in a deformed state even when the shoe is not being worn (this was in claim 1).

The Examiner could not find prior art where a spring element (that met all of the other structural limitations) was preloaded. So, the Examiner considered that the claim did not provide an extent of the preload, and thus even micro-preloading could quality. From there, the Examiner reasoned that in the prior art, the outsole together with the sole assembly must, to some extent, be deformed when molding the upper with the sole assembly as there are stressed points due to the molding operation.

Cole Haan took the case to the PTAB because they correctly recognized that while the examiner’s logic may not be completely wrong, it was a stretch and relied too much on inherency without supporting evidence. In fact, the Examiner did not provide any evidence to back up the claims regarding molding, and did not provide any evidence that the prior art even used a molding process that would inherently create such stresses.

What helped Cole Haan here was that their claim explicitly included a clear limitation as to the fact that the spring element exerts a force on the sole member even when no external forces are present in the shoe. It was therefore an easy decision for the board:

It appears that the Examiner is relying on inherency to establish that molding induces stress, i.e., creates pre-loading. The Examiner has not, however, provided any evidence that molding introduces “stressed points” when the sole and upper are joined.

Cole Haan likely recognized that the examiner was very new and thus prone to maintain improper rejections, and so appealed before filing any RCEs. Because the claims were in a good position with relatively weak rejections, it appears they made a great tactical decision for this case and thus received a reversal.