Ex Parte Nordstom et alDownload PDFPatent Trial and Appeal BoardApr 20, 201813399742 (P.T.A.B. Apr. 20, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/399,742 02/17/2012 78342 7590 04/24/2018 SHOOK, HARDY & BACON L.L.P. (NIKE, INC.) INTELLECTUAL PROPERTY DEPARTMENT 2555 GRAND BLVD. KANSAS CITY, MO 64108-2613 FIRST NAMED INVENTOR Matthew D. Nordstom 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 11-0340/NIKE. l 6 l 469 3576 EXAMINER KOZAK, ANNE M ART UNIT PAPER NUMBER 3765 NOTIFICATION DATE DELIVERY MODE 04/24/2018 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): IPDOCKET@SHB.COM IPRCDKT@SHB.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 MATTHEW D. NORDSTOM, JORGE E. CARBO JR., and LEONARD W. BROWNLIE Appeal2017-006932 Application 13/399,742 Technology Center 3700 Before STEFAN STAICOVICI, WILLIAM A. CAPP, and ANTHONY KNIGHT, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE- Matthew D. Nordstom et al. ("Appellants") 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision in the Final Office Action (dated May 17, 2016, hereinafter "Final Act.") rejecting claims 1-19, 21, and 22. 2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 Nike Inc. is identified as the real party in interest in Appellants' Appeal Brief (filed Nov. 1, 2016, hereinafter "Br."). Br. 3. 2 Claim 20 is canceled. Br. 21, Claims App. Appeal2017-006932 Application 13/399,742 We AFFIRM. SUMMARY OF DECISION INVENTION Appellants' invention relates to "an aerodynamic garment for improving athletic performance." Spec. para. 2. 3 Claims 1, 12, and 18 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. An aerodynamic athletic garment comprising: at least one fabric panel; at least one cut edge that terminates the at least one fabric panel of the garment, the at least one cut edge terminating without stitching; and a continuous printed elastomer layer along an outer facing surface of the at least one cut edge, the continuous printed elastomer layer having an elasticity and further comprising: a first width portion; a second width portion; and a transitional width portion extending from the cut edge, wherein the transitional width portion extends between the first width portion and the second width portion and varies in width from the first width portion and the second width portion, wherein a thickness of the continuous printed elastomer layer varies along the first width portion, the second width portion, and the transitional width portion. REJECTIONS I. The Examiner rejects claims 1, 2, 12-19, 21, and 22 under 35 U.S.C. § 103(a) as being unpatentable over Hisayoshi et al. (JP 2003-105608 A, pub. Apr. 9, 2003, hereinafter "Hisayoshi"), Angelino et al. (US 7,228,809 3 Substitute Specification, filed July 5, 2012. 2 Appeal2017-006932 Application 13/399,742 B2, iss. June 12, 2007, hereinafter "Angelino"), and Sellier (US 2007/0033696 Al, pub. Feb. 15, 2007). II. The Examiner rejects claims 3-11 under 35 U.S.C. § I03(a) as being unpatentable over Hisayoshi, Angelino, Sellier, and Masanobu et al. (JP 2006-037311 A, pub. Feb. 9, 2006, hereinafter "Masanobu")4• ANALYSIS Rejection I Appellants have not presented arguments for the patentability of claims 2, 12-19, 21, and 22 apart from claim 1. See Br. 6-15. Therefore, in accordance with 37 C.F.R. § 4I.37(c)(l)(iv), we select claim 1 as the representative claim to decide the appeal of the rejection of these claims, with claims 2, 12-19, 21, and 22 standing or falling with claim 1. The Examiner finds that Hisayoshi discloses most of the limitations of independent claims 1, "but is silent about the at least one cut edge terminating without stitching, the printed elastomer being continuous, and the elastomeric edge treatments having different width portions." Final Act. 3; see also id. at 16, Examiner's annotated Figure 1 of Hisayoshi. Nonetheless, the Examiner finds that Angelino discloses "at least one cut edge terminating without stitching ... and a continuous ... [elastomeric] layer." Id. at 3 (citing Angelino, Abstract, col. 2, 11. 52-56, col. 4, 1. 35, and Fig. 11 ). The Examiner further finds that Sellier discloses an edge treatment including a first width portion B, a second width portion C, and 4 We derive our understanding of the Hisayoshi and Masanobu references from the translations contained in the image file wrapper of this application. All references to the text of these documents are to portions of the translations. 3 Appeal2017-006932 Application 13/399,742 a transitional width portion D that extend from a cut edge A, as called for by independent claim 1. Id. at 4 ( citing Sellier, Fig. 2); see also id. at 17, Examiner's annotated Figure 2 of Sellier. The Examiner determines that it would have been obvious for a person of ordinary skill in the art to modify Hisayoshi' s aerodynamic athletic garment to have "a cut edge without stitching and ... a continuous elastomer" layer, as taught by Angelino, because "doing so would improve material yield and refine the finished edge while also providing binding of the free ends and gripping of the material, thus giving rise to an edge treatment that is economical, smooth (free of fraying), gripping (to prevent slipping), and less bulky." Final Act. 3--4 (citing Angelino, col. 2, 11. 38--46, col. 4, 11. 31-33). The Examiner further determines that it would have been obvious for the same skilled artisan to further modify the aerodynamic athletic garment of Hisayoshi, as modified by Angelino, to have "an elastomeric edge treatment varying in width," as taught by Sellier, because "doing so forms various compression zones ... which would give rise to controlled elasticity along the garment edge." Id. at 4 ( citing Sellier, para. 28). Appellants argue that "no portion of the cited references teaches or suggests that a continuous elastomeric layer varies in thickness or in width." Br. 9. Moreover, Appellants contend that "no portion of the cited references teaches or suggests simultaneously varying the thickness and the width of the continuous layer of elastomer." Id. at 12 (emphasis added). According to Appellants, Angelino discloses the "continuous" limitation, Hisayoshi discloses "the varied thickness of the elastomeric layer," and Sellier discloses "a continuous printed elastomer having a first width portion, a second width portion and a transitional width portion." Id. at 9-11. 4 Appeal2017-006932 Application 13/399,742 We are not persuaded by Appellants' arguments because "[n]onobviousness cannot be established by attacking the references individually [when] the rejection is [predicated] upon ... a combination of [prior art disclosures]. [Each reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole." See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In this case, we agree with the Examiner that as "Hisayoshi teaches a garment with an elastomer (2) that varies in thickness along the width portion (see Fig. 5)" and "Angelino teaches ... an elastomeric edge ... that is continuous," the resulting combination "teach[ es] a continuous layer of elastomer ... which varies in thickness." Examiner's Answer 3--4 (dated Dec. 30, 2016, hereinafter "Ans."). Furthermore, as Sellier discloses "an elastomeric edge treatment ... having a first width portion ... a second width portion ... and a transitional width portion," the Examiner is correct that the combined teachings of Hisayoshi, Angelino, and Sellier disclose a garment with a continuous elastomeric edge layer that varies in both (simultaneously) thickness and width. Ans. 5---6. Furthermore, we note that the Examiner's modification is an improvement to Hisayoshi's aerodynamic athletic garment to include Angelino's continuous elastomeric edge treatment and Sellier's varying width edge treatment in the same way as Angelino and Sellier, respectively, to lead to predictable results. See Ans. 3, 5. The Examiner's modification is well within the skill of a person having ordinary skill in this art. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill."). 5 Appeal2017-006932 Application 13/399,742 Appellants further argue "that the Angelino reference 'teaches away' from the ... combination of the Angelino and Hisayoshi references." Br. 13. According to Appellants, "the Angelino reference ... teaches away from applying an elastomer that varies in thickness ( as purportedly described within the Hisayoshi reference), as this would create a garment with a bulky finished edge," which "is contrary to ... [Angelino's] stated objective ... [of] 'making it smooth and less bulky'." Id. at 14 (citing Angelino, col. 2, 11. 38--48, col. 7, 11. 24--28). We are not persuaded by Appellants' arguments because Angelino does not "criticize, discredit or otherwise discourage" providing a continuous edge treatment to the elastomeric edge treatment of Hisayoshi, which has a varying thickness. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits or otherwise discourages the solution claimed). Although we appreciate that Angelino's objective is to make an edge treatment "smooth and less bulky," we note that such an objective is disclosed in comparison to Angelino's prior folded- over edge treatments and not to Hisayoshi's thickness varying edge treatment. See Angelino, Figs. 2A, 2B-1, 2B-2, and 2C. Moreover, the Examiner is correct in that "Hisayoshi does not require bulky finished edges" as its garment "would most likely require stretchable edges" in order to "allow the garment edge to expand to fit over the extremities [ of a wearer] ... and then contract to tightly conform to corresponding body parts during wear." Ans. 7. Accordingly, the Examiner is on solid ground to determine that varying the thickness of the continuous elastomeric edge treatment of Hisayoshi, as modified by Angelino, would result in a thinner layer as compared to Angelino's folded-over edges. Id.; see also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("when the PTO shows sound basis for believing 6 Appeal2017-006932 Application 13/399,742 that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not"). In conclusion, for the foregoing reasons, we sustain the rejection under 35 U.S.C. § 103(a) of claims 1, 2, 12-19, 21, and 22 as unpatentable over Hisayoshi, Angelino, and Sellier. Rejection II Appellants rely on the arguments discussed supra. Br. 14--15. Therefore, for the same reasons discussed above, we likewise sustain the rejection under 35 U.S.C. § 103(a) of claims 3-11 as unpatentable over Hisayoshi, Angelino, Sellier, and Masanobu. SUMMARY The Examiner's decision to reject claims 1-19, 21, and 22 under 35 U.S.C. § 103 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation