NIKE, INC.

Patent Trials and Appeals Board

Apr 13, 2020

13623660 - (D) (P.T.A.B. Apr. 13, 2020)

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withdrawn.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
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Application 13/623,660

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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
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Application 13/623,660

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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
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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
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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
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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

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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