NIKE, INC.Download PDFPatent Trials and Appeals BoardApr 13, 202013623660 - (D) (P.T.A.B. Apr. 13, 2020) Copy Citation 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. 13/623,660 09/20/2012 Robert M. Bruce 005127.01659/11-0690 2753 115726 7590 04/13/2020 BANNER & WITCOFF, LTD & attorneys for client 005127 1100 13th STREET NW SUITE 1200 WASHINGTON, DC 20005 EXAMINER KANE, KATHARINE GRACZ ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 04/13/2020 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 ROBERT M. BRUCE, JOSHUA P. HEARD, SHANE S. KOHATSU, and MATTHEW A. NURSE ____________ Appeal 2019-0049151 Application 13/623,6602 Technology Center 3700 ____________ Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and ALYSSA A. FINAMORE, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 21, 37, 38, 40–50, 52, 53, 55, and 56.3 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our Decision references Appellant’s Appeal Brief (“Appeal Br.,” filed Aug. 3, 2018) and Reply Brief (“Reply Br.,” filed June 4, 2019), and the Examiner’s Answer (“Ans.,” mailed Apr. 4, 2019) and Final Office Action (“Final Act.,” mailed Nov. 27, 2017). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies NIKE, Inc., as the real party in interest. Appeal Br. 1. 3 Claims 2–20, 22–36, 51, 54, and 57 are canceled, and claim 39 is withdrawn. Appeal 2019-004915 Application 13/623,660 2 CLAIMED INVENTION Appellant’s claimed invention is directed to sole structures for athletic footwear. Spec. ¶ 1. Claims 1, 21, and 37 are independent. Claim 1 is representative of the claimed subject matter: 1. A sole structure for an article of footwear, comprising: an outsole component including an exterior major surface and an interior major surface, wherein the exterior major surface includes a forefoot projection area and a rearfoot projection area, wherein the forefoot projection area is at least partially surrounded by and projects beyond a first main outsole surface area, wherein the forefoot projection area is connected to the first main outsole surface area by a first flexible web member, wherein the rearfoot projection area is at least partially surrounded by and projects beyond a second main outsole surface area, and wherein the rearfoot projection area is connected to the second main outsole surface area by a second flexible web member; a midsole component engaged with the interior major surface of the outsole component, wherein the midsole component includes a forefoot opening and a rearfoot opening, wherein the forefoot opening is located proximate to the forefoot projection area, and wherein the rearfoot opening is located proximate to the rearfoot projection area; a forefoot fluid-filled bladder system having a bottom surface fixed to the interior major surface of the outsole component at the forefoot projection area and a top surface; a rearfoot fluid-filled bladder system having a bottom surface fixed to the interior major surface of the outsole component at the rearfoot projection area and a top surface; and a rigid plate system overlaying a top surface of the midsole component, the rigid plate system including an arched spring plate made from a rigid, non-foam plastic material and having (a) a first metatarsal head support portion configured to support a first metatarsal head area of a wearer’s foot, (b) a fifth metatarsal head support portion configured to support a fifth metatarsal head area of a wearer’s foot, and (c) a rear heel support portion configured to support a calcaneus bone of a Appeal 2019-004915 Application 13/623,660 3 wearer’s foot, wherein the arched spring plate is arched in at least one of a heel-to-toe direction or a medial side-to-lateral side direction of the sole structure, wherein a bottom surface of the arched spring plate is fixed to the top surface of the forefoot fluid-filled bladder system and to the top surface of the rearfoot fluid-filled bladder system, and wherein the arched spring plate is configured in the sole structure such that: (a) a downward force on the arched spring plate applied by a wearer’s weight on the sole structure flattens out the arched spring plate and (b) when the downward force is reduced or released as the wearer’s foot is lifted from a contact surface, the arched spring plate applies a rebound or return force to the wearer’s foot. Appeal Br., Claims App. REJECTIONS Claims 1, 21, 37, 38, 42–44, 46–49, 52, and 55 are rejected under 35 U.S.C. § 103(a) as unpatentable over Foxen (US 2005/0268490 A1, pub. Dec. 8, 2005). Claims 50, 53, and 56 are rejected under 35 U.S.C. § 103(a) as unpatentable over Foxen and Litchfield (US 5,771,606, iss. June 30, 1998). Claims 40, 41, and 45 are rejected under 35 U.S.C. § 103(a) as unpatentable over Foxen and Aveni (US 2010/0107444 A1, pub. May 6, 2010). ANALYSIS Independent Claims 1, 21, and 37, and Dependent Claims 38, 42–44, 46–49, 52, and 55 We are persuaded by Appellant’s argument that the Examiner erred in rejecting independent claims 1, 21, and 37 under 35 U.S.C. § 103(a) as Appeal 2019-004915 Application 13/623,660 4 unpatenable over Foxen, at least because Foxen does not teach a sole structure comprising: a rigid plate system . . . including an arched spring plate made from a rigid, non-foam plastic material . . . , and wherein the arched spring plate is configured in the sole structure such that: (a) a downward force on the arched spring plate applied by a wearer’s weight on the sole structure flattens out the arched spring plate and (b) when the downward force is reduced or released as the wearer’s foot is lifted from a contact surface, the arched spring plate applies a rebound or return force to the wearer’s foot[,] as recited in claim 1, and similarly recited in claims 21 and 37. Appeal Br., Claims App. Put differently, the arched spring plate is configured structurally to function as a spring by: (a) flattening out when a wearer’s weight is applied to the spring plate, and (b) providing a rebound or return force as the weight is removed. See also Spec. ¶¶ 27 (describing that a rigid plate is curved “to function as a spring and/or to provide rebound or return energy”), 53 ( “[R]igid plate component 150 . . . assist[s] in providing rebound energy, responsiveness, and propulsive feel to sole structures.”). Foxen relates to a sole structure for footwear that includes compressible midsole inserts. Foxen ¶ 2. Conventional footwear includes an upper that securely receives and positions the foot with respect to the sole structure, and a sole structure is secured to a lower surface of the upper and is generally positioned between the foot and the ground. Id. ¶ 4. The sole structure attenuates ground reaction forces and absorbs energy by imparting cushioning. Id. The sole structure of athletic footwear typically has a layered configuration that includes a comfort-enhancing insole, a resilient midsole formed from a polymer foam, and a ground-contacting outsole. Id. ¶ 5. “The midsole is the primary sole structure element that imparts Appeal 2019-004915 Application 13/623,660 5 cushioning and controls foot motions.” Id. “Suitable polymer foam materials for the midsole include ethylvinylacetate or polyurethane that compress resiliently under an applied load to attenuate ground reaction forces and absorb energy.” Id. Foxen’s footwear 10 includes upper 11 and sole structure 12. Id. ¶ 25, Figs. 1, 2; see also id. ¶ 4. Sole structure 12 includes cover member 20, frame member 30, three inserts 40a–40c, and outsole 50. Id. ¶ 26, Fig. 3. Cover member 20, frame member 30, and inserts 40a–40c form a midsole portion of the sole structure that attenuates ground reaction forces and absorbs shock. Id. Cover member 20 forms an upper portion of sole structure 12 that extends through a portion of the longitudinal length of footwear 10 between lateral side 13 and medial side 14. Id. ¶ 27, Fig. 1. Cover member 20 includes upper surface 21 that exhibits a contoured configuration including a depression in heel region 15 for supporting the heel, and a raised area on medial side 14 and in midfoot region 16 for supporting an arch area. Id. ¶ 27, Figs. 1, 2. The Examiner finds that Foxen’s raised area on upper surface 21 teaches the “arched spring plate,” as recited in claim 1, and similarly recited in claims 21 and 37. See Final Act. 4–5, 8–9, 11–12, 18–19; see also Ans. 4. Specifically, the Examiner determines that the claims define the recited arched spring plate as being capable of flattening out by a wearer’s weight on the sole structure when a downward force of weight or pressure is applied when it is worn and when the downward force is reduced or released during gait, the arch spring plate is capable of applying a rebound or return force to the wearer’s foot since the sole Appeal 2019-004915 Application 13/623,660 6 structure and arch spring plate will become uncompressed by pressure and essentially return to its original shape. Final Act. 5, 8–9, 11–12; see also Ans. 4–5. And the Examiner finds that Foxen’s raised area teaches this capability. See Final Act. 4–5, 8, 11, 18–19; see also Ans. 5. Specifically, the Examiner reasons that clearly[,] when a user [of Foxen’s footwear] places his foot on the arched spring plate [i.e., Foxen’s raised area,] including all the other claimed structures (for example[,] the bladder system), no matter the material, his weight will flatten out the arch spring plate inevitably. Then[,] when such a weight is lifted, the arched spring plate with [sic] bounce back to its original shape[,] which will have an impact of applying a rebound or return force to the wearer’s foot to some degree. Final Act. 19; see also Ans. 5 (“When a user presses down on the sole structure it will compress and when a user’s foot is lifted it will uncompress and return to an original shape due to the resiliency of the sole structure.”). However, Foxen does not teach or suggest that the raised area “is configured in the sole structure such that . . . as the wearer’s foot is lifted from a contact surface, the [raised area] applies a rebound or return force to the wearer’s foot,” as recited in claim 1, and similarly recited in claims 21 and 37. To the contrary, Foxen describes that the raised area is configured to provide arch support to the wearer’s foot. See Foxen ¶ 27. The Examiner finds that because Foxen’s shoe imparts cushioning and attenuates ground reaction forces, the material will compress and uncompress due to resiliency. Ans. 5. Yet, resiliency does not teach or suggest an arched spring plate that is configured structurally to apply a rebound or return force to the wearer’s foot in response to a downward force being applied and lifted, as required by independent claims 1, 21, and 37. To the contrary, that Foxen’s midsole is configured to absorb shock, attenuate ground reaction forces, and impart Appeal 2019-004915 Application 13/623,660 7 cushioning (see Foxen ¶¶ 4–5, 26), runs counter to Foxen’s midsole being responsive to provide a propulsive force to the foot, as required by independent claims 1, 21, and 37 (i.e., the claimed arched spring plate is configured in the sole structure to apply a rebound or return force to the wearer’s foot in response to a downward force being applied and released by the wearer’s weight). Therefore, the Examiner has not shown that Foxen discloses footwear having an arched spring plate as recited in independent claims 1, 21, and 37. Therefore, we do not sustain the rejection under 35 U.S.C. § 103(a) of independent claims 1, 21, and 37, and dependent claims 38, 42–44, 46–49, 52, and 55. Claims 40, 41, 45, 50, 53, and 56 The Examiner’s rejections of claims 40, 41, 45, 50, 53, and 56 under 35 U.S.C. § 103(a) fail to remedy the deficiencies in the rejection of independent claims 1, 21, and 37. Therefore, we do not sustain the rejections under 35 U.S.C. § 103(a) of claims 40, 41, 45, 50, 53, and 56. Appeal 2019-004915 Application 13/623,660 8 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 21, 37, 38, 42–44, 46–49, 52, 55 103(a) Foxen 1, 21, 37, 38, 42–44, 46–49, 52, 55 50, 53, 56 103(a) Foxen, Litchfield 50, 53, 56 40, 41, 45 103(a) Foxen, Aveni 40, 41, 45 Overall Outcome 1, 21, 37, 38, 40–50, 52, 53, 55, 56 REVERSED Copy with citationCopy as parenthetical citation