Federal Circuit disposition — 25-1672

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: HBN SHOE, LLC,
Appellant
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2025-1672
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 18/117,309.
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Decided: March 6, 2026
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N ORMAN P. SOLOWAY , Hayes Soloway PC, Tucson, AZ,
for appellant. Also represented by N ICHOLAS BIELAT .
MONICA BARNES L ATEEF , Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee John A. Squires. Also represented by O MAR
F AROOQ AMIN, N ICHOLAS T HEODORE MATICH , IV.
______________________
Before D YK, REYNA, and T ARANTO, Circuit Judges.
T ARANTO, Circuit Judge.
HBN Shoe, LLC filed with the Patent and Trademark
Office a patent application containing claims to a cleated
athletic shoe that permits plantarflexion and eversion of
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IN RE: HBN SHOE, LLC 2
the wearer’s foot while the wearer is engaged in weight-
bearing exercise. A patent examiner at the Office rejected
pending claim 1 of the application for obviousness over a
combination of prior-art references, and the Office’s Patent
Trial and Appeal Board affirmed the rejection. See Ex
Parte Howard Dananberg & Brian G.R. Hughes, No. 2025-
000103, 2025 WL 570062, at *1 (P.T.A.B. Feb. 19, 2025)
(Board Decision). On HBN’s appeal, we affirm.
I
HBN filed U.S. Patent Application No. 18/117,309 on
March 3, 2023. J.A. 43–64; see J.A. 20. The HBN applica-
tion claims cleated athletic shoes that contain two cleat
“plates” along the sole of the shoe: a forefoot cleat plate and
a heel cleat plate. J.A. 49. Attached to the forefoot cleat
plate, on the shoe’s exterior, are “a plurality of radially dis-
posed cleats . . . configured from in front of the big toe of
the wearer and along the outside lateral edge of the shoe.”
J.A. 50. In the top surface of the forefoot cleat plate (the
surface opposite the cleat studs, which protrude from the
bottom surface), there is a concave depression underlying
the wearer’s first metatarsal head (a bone forming part of
the big toe metatarsophalangeal joint). J.A. 49. The pur-
pose of the concave depression is to allow the first metatar-
sal head to plantarflex and evert “under load,” meaning the
wearer’s toes can point and the wearer can rotate the sole
outward even while the wearer engages in weight-bearing
exercises such as running. J.A. 45; see Board Decision, at
*4. The depression extends as a convex surface below the
bottom of the forefoot cleat plate. J.A. 46–47. Figure 2(a),
excerpted below, depicts the cleat plates (marked as items
15 and 17) and a concave depression underlying the first
metatarsal head (marked as items 22 and 23) from an over-
head view. J.A. 58; see J.A. 49.
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IN RE: HBN SHOE, LLC 3
Claim 1 of the HBN application recites:
1. A cleated shoe comprising
a forefoot cleat plate having a plurality of cleats ex-
tending therefrom, and
a heel cleat plate having a plurality of cleats ex-
tending therefrom,
wherein the forefoot cleat plate includes a foot sup-
porting surface configured to underlie heads of the
second, third, fourth and fifth metatarsal bones of
a foot of a wearer, a concave depression relative
to a remainder of the forefoot cleat plate extending
downward from a top of the forefoot cleat plate and
configured to underlie a head of the first met-
atarsal bone of the foot of the wearer and con-
figured to permit the head of the first
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IN RE: HBN SHOE, LLC 4
metatarsal bone of the wearer to plantarflex
and evert while under load, wherein the depres-
sion extends as a convex surface below a bottom of
the forefoot cleat plate, and wherein the forefoot
cleat plate includes a central cleat configured to ex-
tend from the convex surface under the head of the
first metatarsal bone of the foot of the wearer.
J.A. 2096 (emphases added).
On June 4, 2024, the assigned patent examiner re-
jected claims 1, 3–7, 10, 11, and 13–19 over a combination
of prior art references. J.A. 1855–80. Relevant to this ap-
peal, the examiner determined that the subject matter of
representative claim 1 (the only independent claim) was
unpatentable for obviousness over U.S. Patent Application
Publication No. 2012/0180343 (Auger) and U.S. Patent Ap-
plication No. 2018/0343979 (Yoshida). J.A. 1858; see J.A.
2215, J.A. 2251. The examiner found that Auger discloses
most of claim 1’s structural limitations, including, rele-
vantly, a concave depression. J.A. 1858 (citing J.A. 2233–
34 ¶ 41). Auger does not expressly locate the concave de-
pression beneath the first metatarsal head, in a position
that permits the head to plantarflex and evert under load,
but the examiner found those limitations to be taught by
Yoshida.1 J.A. 1858–59 (citing J.A. 2263 ¶ 9, J.A. 2264
¶ 15, J.A. 2233 ¶ 35 (Auger)).
The examiner determined that it would have been ob-
vious to a relevant artisan to “modify the position of the
protruding portions of Auger configured to underlie a head
of the first metatarsal bone of the foot of the wearer as
taught by Yoshida” to create a cleated shoe with a concave
depression underlying the first metatarsal head. J.A.
1 Yoshida refers to “recesses,” which the Board un-
derstood to disclose “depressions” as that term is used in
the pending claims. See Board Decision, at *5.
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IN RE: HBN SHOE, LLC 5
1859. According to the examiner, the modified Auger-Yo-
shida shoe would “enhance [the] ground-gripping capabil-
ity of the outsole . . . and allow[] the joints of the forefoot
(especially the metatarsophalangeal joints) to be bent flex-
ibly during exercise.” Id. The examiner further concluded
that the two “configured to” limitations of claim 1 (“config-
ured to underlie a head of the first metatarsal bone of the
foot of the wearer and configured to permit the head of the
first metatarsal bone of the wearer to plantarflex and evert
while under load”) are met. Specifically as to the latter
limitation (now at issue), the examiner reasoned that it
stated an intended use of the invention, and the prior-art
structures, besides meeting the structural limitations of
the claim, meet this intended-use limitation because they
permit the intended plantarflexion and eversion in a
cleated shoe. J.A. 1859–60. In later answering HBN’s ar-
gument on appeal to the Board, the examiner added: “[I]t
is obvious [to a relevant artisan at the relevant time] to re-
alize that the modified structure Auger-Yoshida also
[would] perform the functional language ‘permit the head
of the first metatarsal bone of the wearer to plantarflex and
evert while under load.’” J.A. 2105.
HBN appealed to the Board, and in February 2025, the
Board affirmed the rejection of claims 1, 3–7, 10, 11, and
13–19. Board Decision, at *1. In its decision, the Board
addressed several matters now at issue before us. The
Board concluded that it did not need to decide whether the
“configured to permit [the identified bone] to plantarflex
and evert” limitation recited “a functional limitation,” as
HBN argued, or “merely a statement of intended use” be-
cause the examiner appropriately found that the modified
Auger-Yoshida structure satisfies the limitation under ei-
ther characterization. Id., at *5. The Board reasoned, in
particular, that claim 1 does not require the concave de-
pression to be of any particular size and that “[a] person of
ordinary skill in the art would recognize that a concave re-
cess of any size in a component made of pliable material”
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IN RE: HBN SHOE, LLC 6
(like that of Yoshida) “would facilitate some amount [of]
plantarflex and evert movement.” Id. Moreover, the Board
rejected HBN’s argument that Yoshida teaches only shoe
flexibility, not foot flexibility; the Board cited Yoshida’s dis-
closure of a “deformable soft resin material” that “allows
the metatarsophalangeal joints to bend flexibly during ex-
ercise.” Id., at *6 (citing J.A. 2263 ¶ 9, J.A. 2264 ¶ 11).
The Board was unpersuaded by HBN’s other argu-
ments, including: (1) that Yoshida does not disclose “a con-
cave depression that is capable of isolating support for the
first metatarsal head from the second, third, fourth, and
fifth metatarsal bones”; (2) that the examiner’s rejection
was impermissibly based on hindsight; and (3) that the ex-
aminer improperly ignored a declaration from Dr. Howard
Dananberg, one of the two named inventors. Id., at *6–7.
First, the Board concluded that the claims do not require
isolated support for the first metatarsal head, and there-
fore, HBN’s argument was “not commensurate with the
scope of the claims.” Id., at *6. Second, the Board deter-
mined that the examiner did not base the rejection on im-
permissible hindsight and instead provided a “cogent
reason” to combine the teachings of the prior-art refer-
ences—“namely, to enhance ground gripping capability of
the outsole and allow the joints of the forefoot to bend dur-
ing exercise.” Id. Third, the Board explained that the
Dananberg declaration was not “ignored” by the examiner;
instead, the examiner found it to be unpersuasive because
it was offered by a named co-inventor and conflicted with
that inventor’s earlier published work. Id., at *6–7. Ac-
cordingly, the Board affirmed the examiner’s rejection. Id.
HBN timely appealed. J.A. 2191. We have jurisdiction
under 28 U.S.C. § 1295(a)(4)(A).
II
HBN asks us to reverse the Board’s obviousness hold-
ing. Whether claimed subject matter is unpatentable for
obviousness is a question of law to be answered based on
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IN RE: HBN SHOE, LLC 7
underlying facts. See St. Jude Medical, LLC v. Snyders
Heart Valve LLC, 977 F.3d 1232, 1238 (Fed. Cir. 2020).
“We review the Board’s legal determinations de novo and
the Board’s factual findings for substantial-evidence sup-
port.” Yita LLC v. MacNeil IP LLC, 69 F.4th 1356, 1363
(Fed. Cir. 2023). Substantial evidence is “such relevant ev-
idence as a reasonable mind might accept as adequate to
support a conclusion.” Consolidated Edison Co. of New
York v. National Labor Relations Board, 305 U.S. 197, 229
(1938). We conclude that the Board’s decision is legally
sound and supported by substantial evidence.
A
Substantial evidence supports the Board’s determina-
tion of obviousness over Auger and Yoshida. In its decision,
the Board found that Auger teaches all of claim 1’s struc-
tural limitations and that Yoshida teaches locating a con-
cave depression under the head of the first metatarsal
bone. Board Decision, at *5. The Board cited numerous
disclosures from Auger and Yoshida to support those find-
ings, see id., at *2–6, and it also determined that it would
have been obvious to a relevant artisan to combine those
references to produce a cleated shoe capable of gripping the
ground while allowing the joints of the forefoot to flexibly
bend during exercise, id., at *6.
HBN’s primary argument on appeal focuses on the sec-
ond of the two parallel “configured to” phrases—“config-
ured to underlie a head of the first metatarsal bone of the
foot of the wearer and configured to permit the head of the
first metatarsal bone of the wearer to plantarflex and evert
while under load.” J.A. 2096 (emphasis added). HBN ar-
gues that the Board adopted an erroneous claim construc-
tion, invoking cases that indicate that, at least sometimes,
an “[apparatus] configured to [perform a function]” phrase
can require something more than a capability to perform
the specified function—something having to do with the
(subjectively or objectively) intended design of the
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IN RE: HBN SHOE, LLC 8
apparatus. HBN Opening Br. at 21–25 (relying on Aspex
Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335,
1349 (Fed. Cir. 2012), and In re Gianelli, 739 F.3d 1375,
1379 (Fed. Cir. 2014)). But the Board committed no error
along these lines.2
Nothing in the Board’s opinion rejects any intended-de-
sign, Aspex-based claim construction of “configured to” or
discusses any decisions about that phrase standing alone.
That is not surprising, because HBN did not request any
such construction. See J.A. 2010–35 (HBN’s brief to the
Board). HBN made a quite different argument—namely,
that the “configured to permit . . .” phrase at issue is not
“merely a statement of intended use” but, in fact, “defines
physical characteristics that are structurally different from
the applied prior art.” J.A. 2024–25 (emphases in original);
see id. at 2025 (repeating this point). And in support of that
argument, HBN specifically used the language of capabil-
ity, arguing that “the prior-art structures taught by Auger
and Yoshida are incapable of performing the intended use,”
partly because the recess in Yoshida “is much too small.”
J.A. 2025; see also J.A. 2024 (making same point). Thus,
the asserted claim-construction error is not present in the
Board’s decision.
Moreover, the Board’s finding that there is no struc-
tural difference between HBN’s claimed concave depres-
sion and the modified Auger-Yoshida depression is
2 The government in this court incorrectly asserts
(Appellee’s Brief at 23) that “Aspex . . . expressly recog-
nized that ‘configured to’ can also ‘be used in a broader
sense to mean “capable of”’ depending on the context.
Aspex, 672 F.3d at 1349.” We did not say that in Aspex.
Rather, we said that the phrase “adapted to” can mean ei-
ther “capable of” or something narrower, and we used the
phrase “configured to” to identify such a narrower mean-
ing. 672 F.3d at 1349.
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IN RE: HBN SHOE, LLC 9
supported by substantial evidence. The Board considered
Auger and Yoshida’s disclosures of concave depressions
and evaluated all of HBN’s arguments. It found that
HBN’s “arguments regarding the location and size of the
concave depression” were not supported by the record, see
Board Decision, at *4–5 (citing J.A. 2233–34 ¶¶ 35, 36, 38,
39, 41, 43, J.A. 2238–39, ¶ 86, J.A. 2264 ¶ 11, J.A. 2265
¶¶ 27, 33, 38, 39), and additionally, that the examiner’s
proposed Auger-Yoshida structure itself meets “the limita-
tion directed to permitting plantarflex and evert,” id., at *5
(emphasis added).
B
HBN’s other arguments are similarly unpersuasive.
HBN argues that the Board did not properly consider
the Dananberg declaration and “impermissibly relied on its
own understanding of cleated shoe mechanics.” HBN
Opening Br. at 32–36. The Board considered the
Dananberg declaration but reasonably decided not to credit
it. The Board reasonably explained that the declaration
was offered by a named co-inventor and that Dr.
Dananberg’s earlier work (applied by the examiner in re-
jecting another claim) made contrary disclosures regarding
the location and size of the depression underlying the first
metatarsal head, namely, that a “relatively small amount”
of depression underlying the first metatarsal head provides
“a profound effect of rotating the first metatarsal head into
eversion.” Board Decision, at *6–7 (quoting J.A. 2280 col.
3, lines 50–60). The Board clearly weighed the evidence in
making an express credibility determination and finding
the evidence entitled to little weight. “We defer to the
Board’s findings concerning the credibility of expert wit-
nesses,” and we see no reason to disturb the Board’s deter-
mination here. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed.
Cir. 2010).
HBN additionally argues that the Board failed to ad-
dress its assertion that Yoshida discloses rigid material
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IN RE: HBN SHOE, LLC 10
(beneath the key depression) that would prevent plantar-
flexion and eversion. HBN Opening Br. at 36–38. But the
Board considered and rejected that assertion, finding that
neither the cleat studs nor the material of the outsole com-
ponent disclosed by Yoshida would prevent performance of
the claimed plantarflexion and eversion functions. Board
Decision, at *4 (citing J.A. 2263 ¶ 9, J.A. 2264 ¶ 11, J.A.
2265 ¶¶ 33, 38, 39). Relatedly, HBN argues that, in con-
sidering Yoshida, the Board conflated flexibility of the
wearer’s foot with flexibility of the material of the wearer’s
shoe. See HBN Opening Br. at 38–40. But the Board
clearly recognized the difference between flexible shoe ma-
terial and flexion of the foot, see Board Decision, at *4 (cit-
ing J.A. 2263 ¶ 9, J.A. 2264 ¶ 11) (“An area that includes
metatarsophalangeal joints is made of a deformable soft
resin material that allows the metatarsophalangeal joints
to bend flexibly during exercise”), and the difference be-
tween “deformable . . . material” and flexible bending of
joints during exercise, see id. Having recognized the dis-
tinction at issue, the Board could reasonably find that the
claimed foot flexibility would have been obvious, given its
rejection of the sole basis to which HBN now points,
namely, Dr. Dananberg’s declaration. See HBN Opening
Br. at 38–39.
HBN accuses the Board of relying on hindsight in con-
cluding that a relevant artisan would have been motivated
to combine Auger and Yoshida. See HBN Opening Br. at
40–48. We are not persuaded. The Board relied on two
prior-art references and agreed with the examiner’s identi-
fication of a “cogent reason” (grounded in the prior-art ref-
erences themselves) a relevant artisan would have been
motivated to make the combination at the time of inven-
tion—“to enhance ground gripping capability of the outsole
and allow the joints of the forefoot to bend during exercise.”
Board Decision, at *6.
Moreover, HBN’s related argument that the Auger-Yo-
shida combination would require substantial redesign to
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IN RE: HBN SHOE, LLC 11
teach the claims of the HBN application is without merit.
See HBN Opening Br. at 42–45. HBN’s redesign argument
addresses the size of the concave depression, which, as the
Board expressly noted, is not a requirement of claim 1:
“[N]o limitation in claim 1 . . . requires the depression un-
derlying the head of the first metatarsal bone to be any par-
ticular size.” Board Decision, at *5.
Finally, HBN argues that the Board erroneously deter-
mined that the combination of Auger, Yoshida, and a third
reference (U.S. Patent No. 8,166,674) teaches all the re-
quirements of claim 1. HBN Opening Br. at 48–52. But as
the Board recognized, the examiner did not rely on the
third reference to reject claim 1, and the Board cited it
simply as “evidence of the background knowledge” of a rel-
evant artisan at the time of the invention. Board Decision,
at *7; J.A. 1858. The examiner relied on the third reference
in rejecting other claims, see J.A. 1873–74, but in this court
HBN argues only about claim 1 and does not independently
challenge the rejection of any other claims. See HBN Open-
ing Br. at 3 n.1.; J.A. 1873–74. We therefore do not address
HBN’s arguments about this third reference.
III
The decision of the Board is affirmed.
The parties shall bear their own costs.
AFFIRMED
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