Ex Parte Jarvis

Patent Trial and Appeal Board

Mar 10, 2017

12433109 (P.T.A.B. Mar. 10, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/433,109 04/30/2009 Kelly B. Jarvis 005127.01242/08-1980 8431
115726 7590 03/14/2017
BANNER & WITCOFF, LTD
& attorneys for client 005127
1100 13th STREET NW
SUITE 1200
WASHINGTON, DC 20005
EXAMINER
TEFERA, HIWOT E
ART UNIT PAPER NUMBER
3637
NOTIFICATION DATE DELIVERY MODE
03/14/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTO-115726@bannerwitcoff.com
nike_docketing @ cardinal-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KELLY B. JARVIS
Appeal 2014-009689
Application 12/433,109
Technology Center 3600
Before LINDA E. HORNER, MICHAEL L. HOELTER, and
FREDERICK C. LANEY, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kelly B. Jarvis (Appellant)1 seeks our review under 35 U.S.C. § 134
of the Examiner’s decision, as set forth in the Final Office Action, dated
December 17, 2013 (“Final Act.”), rejecting claims 19, 22, 25—27, and 40-
47. Br. 2. Claims 1—18, 20, 21, 23, 24, and 28—39 have been canceled. See
Amendment (dated November 27, 2013). Appellant’s representative
participated in an oral hearing on February 28, 2017. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies NIKE, Inc. as the real party in interest. Br. 2.
Appeal 2014-009689
Application 12/433,109
RELATED APPEALS
The application that is the subject of the present appeal is related to
the following three applications, which are the subject of co-pending
appeals, also argued at the oral hearing on February 28, 2017: (1) Appeal
2014-009814, Application 13/357,766; (2) Appeal 2014-009853,
Application 12/433,097; and (3) Appeal 2014-009838, Application
13/357,727. Br. 2. Appellant also identifies the following additional related
appeals: Appeal 2014-001216, Application 12/255,496 and Appeal 2015-
002833, Application 13/357,682. Br. 2-3.
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to methods of
manufacturing articles of footwear using rapid manufacturing technology.
Spec. 12. Claims 19, 25, and 43 are independent. Claim 19 is illustrative of
the subject matter on appeal and is reproduced below.
19. An article of footwear, comprising:
an upper configured to receive a foot of a wearer, the upper
including: (a) a first portion formed from a thermoplastic
elastomer material and formed as multiple, successive layers of
fuse bonded particles of the thermoplastic elastomer material in
a rapid manufacturing additive fabrication technique with a laser
at a first laser intensity, (b) a second portion formed from the
thermoplastic elastomer material and formed as multiple,
successive layers of fuse bonded particles of the thermoplastic
elastomer material in the rapid manufacturing additive
fabrication technique with the laser at a second laser intensity,
the second laser intensity being different from the first laser
intensity, wherein the first portion of the upper includes a first
set of mechanical properties and the second portion of the upper
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Application 12/433,109
includes a second set of mechanical properties, the second set of
mechanical properties being different from the first set of
mechanical properties due to use of the first laser intensity and
the second laser intensity in the rapid manufacturing additive
fabrication technique, and wherein the first portion and the
second portion of the upper are formed using a single rapid
manufacturing additive fabrication technique; and (c) a third
portion formed from the thermoplastic elastomer material and
formed as multiple, successive layers of fuse bonded particles of
the thermoplastic elastomer material in the rapid manufacturing
additive fabrication technique with the laser at a third laser
intensity, the third laser intensity being different from the first
laser intensity and the second laser intensity, and wherein the
third portion includes a third set of mechanical properties
different from the first set of mechanical properties and the
second set of mechanical properties due to use of the third laser
intensity in the rapid manufacturing additive fabrication
technique; and
a sole structure connected to the upper and including a
midsole and an outsole.
EVIDENCE
The Examiner relies upon the following evidence in the Final Action:
Clausen US 6,110,411 Aug. 29, 2000
Soon US 2003/0233771 A1 Dec. 25,2003
Duncan Graham-Rowe, Tailor-printed shoes will offer a perfect
fit, 189 New Scientist iss. 2538, at 30 (2006) (“Graham-Rowe”).
Appellant relies on the following evidence (Br. 11—12, 20—21, 28):
Frank T. Piller, Prior 2 Lever: Footwear Customization with
Rapid Manufacturing, Mass Customization & Open
Innovation News (Apr. 20, 2006), http://mass-
customization.de/2006/04/prior_2_lever_f.html (hereinafter “P2L
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Application 12/433,109
article”).2 * 4
REJECTION
The Final Action rejects claims 19, 22, 25—27, and 40-47 under 35
U.S.C. § 103(a) as unpatentable over Soon, Graham-Rowe, and Clausen.
ANALYSIS
We address independent claims 19, 25, and 43 separately.
Claim 19
Claim 19 includes the limitations of “a first laser intensity,” “a second
laser intensity,” “a first set of mechanical properties,” and, “a second set of
mechanical properties.” Claim 19 also recites, “the second set of mechanical
properties being different from the first set of mechanical properties due to
use of the first laser intensity and the second laser intensity” in a rapid
manufacturing additive fabrication technique.
The Examiner relies on Soon for disclosing the limitations directed to
different first and second sets of mechanical properties. Final Act. 2 (“the
first portion (26) includes a first set of mechanical properties (wear
resistance) and the second portion (20) has a second set of mechanical
properties (soft flexible support)”); see also Ans. 2—3. However, the
Examiner acknowledges that “Soon doesn’t teach . . . using different laser
intensities to form the first, second, and third [sets of] mechanical
properties.” Final Act. 3. On this point, the Examiner relies on Clausen’s
2 Appellant introduced this evidence into the Record by filing it in an
Information Disclosure Statement on July 5, 2013. See also Br. 11, 20, 28.
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discussion of “using [a] wide range of laser intensities” and “using laser
sintering to enhance various properties such as stiffness.” Final Act. 3-4;
see also Ans. 4. In summation, the Examiner finds that “by using a wide
range of laser intensities, the mechanical properties were changed.” Final
Act. 3-4 (referencing Clausen 9:14—19; 9:30-35, 10:21—24); see also Ans. 4.
Accordingly, as per the Examiner, it would have been obvious “to use laser
sintering at different laser intensities for the first, second, and third
portion[s], in order to save time and money by reducing the time required to
produce the upper portions compared to traditional footwear manufacturing
techniques.”3 * 5Final Act. 4; see also Ans. 3.
Appellant contends, “Clausen does not describe or suggest
making an upper for an article of footwear having different portions
with different mechanical properties due to use of different laser
intensities during a rapid manufacturing additive fabrication process.”
Br. 13; see also Br. 14. Appellant further contends, “Clausen’s
discussion of laser intensities at column 9, lines 14-18 indicates that
varying the laser intensities resulted in products with the same
mechanical properties.” Br. 15.
3 The Examiner relies on Graham-Rowe for teaching “manufacturing shoes
using selective laser sintering, which is a rapid manufacturing additive
technique” and further on Clausen that “teaches manufacturing flexible
articles from a thermoplastic elastomer comprising fusing the thermoplastic
elastomer to form an integral layer and using a selective laser sintering
process.” Final Act. 3; see also Ans. 3.
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Regarding Appellant’s contention that “Clausen does not describe or
suggest making an upper for an article of footwear,” the Examiner does not
rely on Clausen for such teaching. See Final Act. 2-4. Hence, this portion
of Appellant’s contention is not persuasive of Examiner error, and is not
unlike arguing the art individually. However, we agree with Appellant that
Clausen’s disclosure does not support the Examiner’s finding that Clausen
teaches using a wide range of laser intensities to change the mechanical
properties of a laser-sintered article. Br. 13; Final Act. 4.
With regard to the Examiner’s reference to Clausen’s Example 1
(Final Act. 3 (referencing Clausen 9:14—19)), Clausen states, “[t]he
sinterable powder was fused into articles using a wide range of laser
intensities, and in all cases the articles had good physical integrity and could
not be divided into separate layers by pulling or other types of deformations
with force applied directly by hand.” This disclosure demonstrates only that
varying laser intensity did not compromise the quality of the fused article.
Clausen does not suggest in this passage a reason to vary laser intensities to
form different portions of a fused article or to achieve different mechanical
properties for these different portions (i.e., all intensities achieved the same
“good physical integrity” property and Clausen does not indicate that a
change in laser intensity resulted in a change in such properties). Likewise,
with reference to Examples 3 and 9 relied upon by the Examiner (Final Act.
4 (referencing Clausen, 9:30-35, 10:18-24)), Clausen makes no specific
mention of laser intensities. Clausen discloses only that the article of
Example 3 was made using “[t]he powder of Example 1 [that] was sintered
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Application 12/433,109
under the conditions of Example 1, except an article having 36 layers . . .
was formed” and that the article of Example 9 “was processed under the
conditions described in Example 1 except that the laser was passed over the
target 36 times.” Clausen, 9:30-35, 10:18-24. As understood, the number
of passes of the laser over the target relates to the number of fused layers
formed during creation of the article, and does not pertain to laser intensity.
See also Final Act. 4 (“the laser was passed over the target 36 times”); Ans.
4-5.
In view of the above, the Examiner’s reason to modify Soon and
Graham-Rowe to use different laser intensities based on an asserted
disclosure in Clausen of using different laser intensities to change
mechanical properties of a laser-sintered article is not based on rational
underpinnings. As such, we do not sustain the Examiner’s rejection of
independent claim 19, or of its dependent claims 22, 41, and 42, under 35
U.S.C. § 103(a) as unpatentable over Soon, Graham-Rowe, and Clausen.
While the above is dispositive, we elect to address additional
arguments presented by Appellant. For example, Appellant contends that
Soon does not disclose structure “formed as multiple, successive layers of
fuse bonded particles of thermoplastic elastomer material in a rapid
manufacturing additive fabrication technique.” Br. 9. Appellant further
contends, “Soon makes absolutely no mention of creating any footwear
parts using a rapid manufacturing additive fabrication technique.” Br.
9-10. Regarding the use of a rapid manufacturing additive fabrication
technique, the Examiner relies on the teachings of Graham-Rowe and
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Clausen for such teaching, not Soon. Final Act. 3; Ans. 3. The Examiner
even states, “one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.”
Ans. 3. More specifically, and regarding that part of Appellant’s contention
concerning “multiple, successive layers of fuse bonded particles” in a
rapid manufacturing additive fabrication technique, the Examiner
acknowledges that Soon fails to teach this limitation, but, as above, relies on
Graham-Rowe and Clausen for such teaching. Final Act. 3. Nevertheless,
Soon does teach the fabrication of footwear from thermoplastic elastomer
material. Final Act. 2 (referencing Soon 134). Accordingly, Appellant’s
focus on Soon for disclosing this limitation (and not the combination of
Soon, Graham-Rowe, and Clausen) is not persuasive of Examiner error.
Appellant also argues, “Graham-Rowe does not even mention the
footwear uppers, much less any process for making them.”4 Br. 11.
However, in the Final Office Action, the Examiner relied upon Soon for
teaching “an upper (15).” Final Act. 2; see also Soon 128, Figs. 1, 3 A. As
stated in the Final Office Action, the Examiner relied on Graham-Rowe for
teaching “manufacturing shoes using selective laser sintering, which is a
rapid manufacturing additive technique.”5 * * 8Final Act. 3; see also Ans. 4.
4 Appellant reiterates, “[t]o the extent Graham-Rowe describes details of any
shoe making process, Graham-Rowe only describes formation of the
footwear sole structure.” Br. 11.
5 In the Examiner’s Answer, the Examiner further stated, “Graham-Rowe
discloses the shoes (which broadly encompasses both upper and sole
structure of the shoes).” Ans. 4. However, Appellant does not explain how
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Application 12/433,109
Regarding the method of manufacturing, Appellant does not dispute that
selective laser sintering is a rapid manufacturing additive technique.* 6 * * 9
A further argument presented by Appellant is that “Clausen has
absolutely no mention of footwear, shoes, or the upper and/or sole
components thereof.” Br. 12—13. There is general agreement that Clausen
itself does not mention footwear, shoes, uppers, or soles. However, Clausen
was not relied on by the Examiner for such teachings, instead, Clausen was
relied on for teaching the manufacture of “flexible articles from a
thermoplastic elastomer” involving fusing layers thereof, and further
(incorrectly as noted above) for “using a wide range of laser intensities” to
change mechanical properties. Final Act. 3^4. Thus, Appellant’s contention
regarding Clausen’s failure to mention footwear (and the like) is not, of
itself, persuasive of Examiner error.
In summation, and as repeated supra, we do not sustain the rejection
of independent claim 19, or of its dependent claims 22, 41, and 42, under 35
U.S.C. § 103(a) as unpatentable over Soon, Graham-Rowe, and Clausen.
Claim 25
Like claim 19 above, claim 25 includes limitations directed to “a first
laser intensity,” “a second laser intensity,” “a first set of mechanical
Soon fails to expressly disclose and depict a shoe upper.
6 Appellant’s Specification states, “[i]n at least some examples, the upper
and/or sole structure may be formed using rapid manufacturing techniques,
such as laser sintering, solid deposition modeling, stereolithography, and
the like.” Spec. 120 (emphasis added).
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properties,” and “a second set of mechanical properties.” Also as above,
claim 25 recites, “the second set of mechanical properties being different
from the first set of mechanical properties due to use of the first laser
intensity and the second laser intensity” in a rapid manufacturing additive
fabrication technique.
As with claim 19, the Examiner improperly relies on Clausen for
teaching the use of different laser intensities to change mechanical properties
of a laser-sintered article. Final Act. 3^4. Appellant disputes this finding as
indicated supra, and, as above, we agree with Appellant that such teaching is
not based on rational underpinnings. Consequently, we do not sustain the
rejection of independent claim 25, or of its dependent claims 26, 27, and 40,
under 35 U.S.C. § 103(a) as unpatentable over Soon, Graham-Rowe, and
Clausen.
We further wish to address language specific to claim 25, i.e., a “third
portion of the upper is a collar region of the upper.” On this point, the
Examiner identifies Soon’s rib 23 as corresponding to this claimed third
portion and finds that Soon’s rib 23 is “in the collar region of the upper.”7 * * 10
Final Act. 3. Appellant disagrees with the Examiner stating, “ribs 23 of the
Soon structure do not make up a ‘collar region’ of an upper.” Br. 17. The
7 In the Examiner’s Answer, the Examiner states, “[t]he ribs 23 are located
around the area/region surrounding the collar, it extends from the lateral side
of the shoe to the top of the collar as shown in figure 2C and this is a collar
region of the footwear.” Ans. 6 (emphasis added). As understood, the “this”
the Examiner references is the top shoe region into which the rib extends,
not that rib 23 is itself the collar region.
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claim language in question is not “in” or “make up,” but instead is “is.” The
Examiner is not persuasive that Soon’s rib 23, as depicted and described in
Soon, is anything more than just a small part of what may possibly
encompass (“make up”) a broad understanding of a collar region of Soon’s
shoe. Accordingly, it is unreasonable to equate (“is”) Soon’s rib 23 with
Soon’s collar region. Consequently, the Examiner’s findings are not based
on rational underpinnings and as such (including our discussion of laser
intensity above), we do not sustain the rejection of independent claim 25, or
of its dependent claims 26, 27, and 40, under 35 U.S.C. § 103(a) as
unpatentable over Soon, Graham-Rowe, and Clausen.
Claim 43
Claim 43, like claims 19 and 25 above, also includes limitations
directed to the use of different laser intensities resulting in different
mechanical properties. For similar reasons previously expressed, we do not
sustain the rejection of independent claim 43, or of its dependent claims 44—
47, under 35 U.S.C. § 103(a) as unpatentable over Soon, Graham-Rowe, and
Clausen.
DECISION
The decision of the Examiner to reject claims 19, 22, 25—27, and 40—
47 is REVERSED.
REVERSED
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