NIKE, Inc.Download PDFPatent Trials and Appeals BoardJan 3, 202014851854 - (D) (P.T.A.B. Jan. 3, 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. 14/851,854 09/11/2015 Lee D. Peyton NIKE1107PUSP/130516US02 5163 113338 7590 01/03/2020 Quinn IP Law/NIKE, Inc. 21500 Haggerty Road Ste 300 Northville, MI 48167 EXAMINER MOHANDESI, JILA M ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 01/03/2020 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): USDocketing@quinniplaw.com adomagala@quinniplaw.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 LEE D. PEYTON __________ Appeal 2019-004343 Application 14/851,854 Technology Center 3700 __________ Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and LISA M. GUIJT, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3, 6–21, and 27–29. Claims 4, 5, 22– 26, and 30–53 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Nike, Inc.” Appeal Brief 2 (“Appeal Br.”), filed Dec. 13, 2018. Appeal 2019-004343 Application 14/851,854 2 CLAIMED SUBJECT MATTER The claimed subject matter “relates to a sole structure for an article of footwear, and a method of manufacturing same.” Spec. ¶ 2. Claims 1 and 18 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A sole structure for an article of footwear comprising: a sole component formed from a plurality of hollow polymeric elements having outer surfaces in contact with one another and fixed directly to one another; and wherein each of the hollow polymeric elements defines a sealed, fluid-filled internal cavity capable of retaining fluid at a predetermined pressure; wherein the hollow polymeric elements are fixed relative to one another by chemical bonds connecting the outer surfaces of the hollow polymeric elements; wherein the chemical bonds are ultraviolet light cured chemical bonds formed between the outer surfaces of the hollow polymeric elements such that the chemical bonds fix the hollow polymeric elements relative to one another to retain a shape of the sole component; and wherein each of the hollow polymeric elements is formed from a first polymeric sheet bonded to a second polymeric sheet. Appeal 2019-004343 Application 14/851,854 3 THE REJECTIONS2 I. Claims 1–3, 6–13, 19–21, and 27–293 stand rejected under 35 U.S.C. § 103 as unpatentable over Wardlaw (US 2014/0223776 A1, published Aug. 14, 2014),4 Lindsay (US 2013/0095253 A1, published Apr. 18, 2013), and Fish (US 7,037,571 B2, issued May 2, 2006). II. Claims 14–18 stand rejected under 35 U.S.C. § 103 as unpatentable over Wardlaw and Fish. III. Claims 1–3, 6–13, 19–21, and 27–29 stand rejected under 35 U.S.C. § 103 as unpatentable over Busch (US 5,150,490, issued Sept. 29, 1992), Pearce (US 5,626,657, issued May 6, 1997), Lindsay, and Fish. IV. Claims 14–18 stand rejected under 35 U.S.C. § 103 as unpatentable over Busch, Pearce, and Fish. ANALYSIS Rejection I – Obviousness over Wardlaw, Lindsay, and Fish Appellant does not offer arguments in favor of claims 2, 3, 6–13, 19– 21, and 27–29 separate from those presented for independent claim 1. 2 The rejection of claims 22, 24–26, 52, and 53 under 35 U.S.C. § 112(a), as failing to comply with the written description requirement, is moot in view of the cancellation of these claims in the Amendment filed December 13, 2018. See Examiner’s Answer 3 (“Ans.”), dated Mar. 15, 2019; Advisory Action dated Jan. 10, 2019. 3 The rejection of claims 22, 24–26, 52, and 53 as obvious over Wardlaw, Lindsay, and Fish is moot in view of the cancellation of these claims. See Final Office Action 2 (“Final Act.”), dated June 18, 2018; Ans. 3. 4 The Examiner indicates that the Wardlaw U.S. Patent Publication has matured as U.S. Patent No. 9,781,970 B2, issued Oct. 10, 2017. See Final Act. 3. Appeal 2019-004343 Application 14/851,854 4 Appeal Br. 5–9. We select claim 1 as the representative claim, and claims 2, 3, 6–13, 19–21, and 27–29 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Wardlaw discloses a sole structure for an article of footwear comprising a sole component formed from a plurality of hollow polymeric elements (particles 120, 820). Final Act. 3 (citing Wardlaw ¶¶ 11, 81, 97, Figs. 3, 9a); see also Wardlaw Figs. 1, 8a–8b. The Examiner acknowledges that Wardlaw does not disclose that each of the hollow polymeric elements is formed from a first polymeric sheet bonded to a second polymeric sheet. Id. at 9. The Examiner, however, finds that Fish discloses a polymeric element (pocket 20) that is formed from a first polymeric sheet (first substrate 12) bonded to a second polymeric sheet (second substrate 12). Id. (citing Fish Figs. 2A–2C). The Examiner concludes that it would have been obvious to modify the sole structure of Wardlaw to have each of the hollow polymeric elements formed from a first polymeric sheet bonded to a second polymeric sheet as disclosed by Fish, “in order to provide better comfort to the foot of the wearer and allow the sole structure to maintain its functionality over an extended period of time.” Id. at 9–10.5 Appellant contends that the Examiner’s first reason to combine the disclosure of Fish with the disclosure of Wardlaw, particularly, “to provide better comfort to the foot of the wearer,” is flawed. Appeal Br. 6. In support, Appellant argues that “all references in Fish to increased comfort 5 The Examiner relies on Lindsay for disclosing limitations other that those discussed above. See Final Act. 4. Appeal 2019-004343 Application 14/851,854 5 provided by Fish’s disposable shoe liner 10 relate to either: (i) adding additional layers over the disposable liner 10” or “(ii) to the increased comfort provided by the functional material disposed between the substrates 12, 14 (i.e., between the polymeric sheets).” Id. at 6–7. As such, Appellant argues that the increase in comfort in Fish’s shoe is a result of its additional layers and/or its functional material rather than of its use of a bladder or a pocket formed from first and second polymeric sheets. Id. at 7. Appellant’s contentions are unpersuasive. Fish discloses that “the pockets contain activated carbon granules to provide comfort to the foot and to absorb odors exuded therefrom.” Fish Abstr. (emphasis added). Fish further illustrates that pockets 20 are formed from first substrate 12 and second substrate 14. See id. at Fig. 2C; see also id. at 2:17, 10:42–44. Thus, the activated carbon granules absorbs odors and the pockets, which are formed from first and second polymeric sheets, provide comfort. Fish also discloses that “the shape of the pockets 20 can be selected to provide the optimum level of support or comfort to a user of the shoe liner 10.” Id. at 11:60–62 (emphasis added) (bolding omitted). As such, Fish does not rely only on the functional material or additional layers, as Appellant contends, to provide comfort. Fish also discloses that “activated carbon granules can be incorporated into the pockets 20 to absorb odors exuded from a foot, and in some instances, to also provide comfort to the foot.” Id. at 10:6–8 (emphasis added) (bolding omitted). Stated differently, the activated carbon granules provide additional comfort, rather than being the sole source of comfort. Moreover, Fish discloses that “[t]he functional material can generally be deposited onto the substrate using a variety of deposition techniques.” Id. at Appeal 2019-004343 Application 14/851,854 6 10:9–10 (emphasis added). Thus, even crediting Appellant’s contention that Fish’s functional material provides comfort, Fish’s first substrate 12 and second substrate 14, which form the pockets, provide comfort as well, because Fish explicitly discloses that the functional material can be part of the substrates. Appellant contends that the Examiner’s second reason to combine the disclosure of Fish with the disclosure of Wardlaw, particularly, “[to] allow the sole structure to maintain its functionality over an extended period of time,” is flawed. Appeal Br. 6. In support, Appellant argues that Fish discloses a disposable insole and “[a] person skilled in the art would not look to modify Wardlaw’s permanently affixed midsole by looking to teachings regarding a daily use, disposable insole.” Id. at 7. Appellant’s contention is unpersuasive. First, even if Fish discloses a disposable shoe liner, Appellant does not explain why Fish’s first substrate 12 and second substrate 14, which form the pockets cannot be incorporated in a permanently affixed midsole. Further, to the extent that Appellant is contending that Fish is non-analogous art, this contention is not well-taken. Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992). The Specification discloses that “[t]he present disclosure relates to a sole structure for an article of footwear.” Spec. ¶ 1 (emphasis added). Fish discloses that “[v]arious types of shoe liners have been developed to provide certain benefits to a user when wearing shoes inserted therewith.” Fish 1:10–12 Appeal 2019-004343 Application 14/851,854 7 (emphasis added). Thus, under the first criteria, both Appellant’s and Fish’s field of endeavor are the same, namely, sole structures or shoe liners. Alternatively, the Specification discloses the need to have a “sole to provide cushioning,” i.e., comfort. Spec. ¶ 3. As discussed above, an objective of Fish is to provide comfort. Thus, under the second criteria, Fish is reasonably pertinent to the particular problem with which the inventor is involved, namely, comfort. Appellant contends that a skilled artisan would not have a reasonable expectation of success in combining the teachings of Fish and Wardlaw. Appeal Br. 7. In support, Appellant argues that a skilled artisan would not have recognized that applying Fish’s single filled bladder would have yielded predictable results in an improvement to Waldlaw’s system. Id. Appellant argues that Wardlaw’s particles are hollow and made of an expanded material; whereas, Fish’s single bladder element is not hollow. Id. at 7–8. Appellant further argues that Fish does not disclose fixing the outer surfaces of hollow polymeric elements. Id. We are not persuaded by Appellant’s contentions. We first note that the Examiner does not propose substituting the materials of Fish with the materials Wardlaw. Rather, the Examiner proposes using Wardlaw’s material in the form of two sheets to form a hollow polymeric element or a hollow particle. See Final Act. 9–10; see also Ans. 5. Further, “obviousness cannot be avoided simply by a showing of some degree of unpredictability in the art . . . , the expectation of success need only be reasonable, not absolute.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007); see also In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988) (explaining Appeal 2019-004343 Application 14/851,854 8 that absolute predictability that the substitution will be successful is not required; all that is required is a reasonable expectation of success). Even if some unpredictability remained because there are some differences in comfort between hollow particles versus filled-pockets, expanded materials versus unexpanded materials, or a single bladder element versus a multiple bladder element, due to underlying mechanisms that are unknown or not well understood, that does not mean claim 1 is nonobvious. Although not absolute, the Examiner’s proposed modification of Waldlaw’s sole structure with Fish’s teaching of a first polymeric sheet bonded to a second polymeric sheet would result in a reasonable expectation of success of achieving a sole structure with some comfort. “[A]ttorney argument [is] not the kind of factual evidence that is required to rebut a prima facie case of obviousness.” In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Here, Appellant does not provide evidence or persuasive argument that a skilled artisan would not have a reasonable expectation of success in combining the teachings of Fish and Wardlaw to form a sole structure that has comfort. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d at 1364; see also In re O’Farrell, 853 F.2d at 903–04. Appellant contends that the Examiner’s rejection is based on improper hindsight reconstruction. Appeal Br. 8–9. We are not persuaded of Examiner error, because Appellant has not made a showing that the Examiner’s rationale was outside the knowledge within the level of ordinary skill in the art at the time the claimed invention was made or was gleaned only from Appellant’s disclosure. Appeal 2019-004343 Application 14/851,854 9 In the Reply Brief, Appellant contends that Fish, in its Background section, disparages the use of a hollow shoe liner as providing inadequate comfort. Reply Br. 3.6 As an initial matter, this argument was not raised in the Appeal Brief, and is not responsive to any argument raised in the Examiner’s Answer. As stated in 37 C.F.R. § 41.41(b)(2): Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown. (Emphasis added). Accordingly, we do not consider the argument as timely presented. However, we note that Appellant’s contention is unpersuasive, even if it was timely, for the following reasons. Fish discloses that “the functional material can have a hardness that is greater than the hardness of the substrates to provide enhanced comfort and support to a user.” Fish 1:44–47 (emphasis added). Fish further discloses that “if desired the use of pockets can also allow the shoe liner to maintain its functionality over an extended period of time.” Id. at 4:33–35 (emphasis added). Thus, contrary to Appellant’s contention, to enhance comfort or to maintain functionality, the substrates of Fish’s pockets, or any hollow polymeric particles that are discussed in the Background section, are necessary. Stated differently, Fish discloses overcoming the problem in the prior art by requiring––rather than teaching away from––using the substrates of the pockets or the hollow polymeric particles. Appellant does not direct us to any passage in Fish that discredits, criticizes, or disparages the use of 6 Reply Brief (“Reply Br.”), filed May 14, 2019. Appeal 2019-004343 Application 14/851,854 10 hollow polymeric elements. Like our appellate reviewing court, “[w]e will not read into a reference a teaching away from a process where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). In summary, and based on the record presented, we are not persuaded the Examiner erred in rejecting independent claim 1 as obvious over Wardlaw, Lindsay, and Fish. Accordingly, we sustain the Examiner’s rejection of claim 1. We further sustain the rejection of claims 2, 3, 6–13, 19–21, and 27–29, which fall with claim 1. Rejection II – Obviousness over Wardlaw and Fish Appellant argues claims 14–18 as a group. Appeal Br. 9. We select claim 18 as the representative claim, and claims 14–17 stand or fall with claim 18. Claim 18 recites limitations similar to claim 1, namely, “a sole component formed from a plurality of hollow polymeric elements in contact with one another” and “wherein each of the hollow polymeric elements is formed from a first polymeric sheet bonded to a second polymeric sheet.” Appeal Br. 16 (Claims App.). Claims 14–17 depend either directly or indirectly from claim 18. Id. at 15–16. For claim 18, the Examiner combines the disclosures of Wardlaw and Fish in a similar manner as to claim 1 in Rejection I. See Final Act. 10–11. Appellant contends that “[a]s discussed with respect to claim 1,” “there is no evidence or support in the Office Action that establishes that one of ordinary skill in the art would have been motivated to combine the teachings of Fish . . . with a reasonable expectation of success when Appeal 2019-004343 Application 14/851,854 11 applying the teachings of Wardlaw’s particles.” Appeal Br. 9; see also Reply Br. 4. This argument is unpersuasive for the reasons discussed supra. Accordingly, for similar reasons as discussed above for Rejection I, we sustain the Examiner’s rejection of claims 14–18 as unpatentable over Wardlaw and Fish. Rejection III – Obviousness over Busch, Pearce, Lindsay, and Fish Appellant argues claims 1–3, 6–13, 19–21, and 27–29 as a group. Appeal Br. 9–11. We select claim 1 as the representative claim, and claims 2, 3, 6–13, 19–21, and 27–29 stand or fall with claim 1. The Examiner finds that Busch discloses a sole structure for an article of footwear comprising a sole component (insole 1) formed from a plurality of polymeric elements (beads 2) having outer surfaces in contact with one another and fixed directly to one another. Final Act. 11 (citing Busch 4:15– 18, Fig.7). The Examiner acknowledges that Busch “is silent as to the beads being hollow polymeric elements that define a sealed, fluid-filled internal cavity capable of retaining fluid at a predetermined pressure.” Final Act. 11–12. The Examiner, however, finds that Pearce “discloses that it is old and conventional to make polymeric spherical elements that are solid or hollow and may have gaseous, liquid or solid interiors.” Id. at 12; see also Pearce 11:4–6, Fig. 4. The Examiner concludes that it would have been obvious “to substitute the polymeric elements of Busch with the polymeric hollow elements Pearce to improve the insulating properties of the sole component of Busch.” Final Act. 12. The Examiner combines the 7 Busch discloses a single figure that is not numbered. Appeal 2019-004343 Application 14/851,854 12 disclosures of Lindsay and Fish with Busch and Pearce for the same reasons as those for claim 1 in Rejection I. See id. at 12–13. Appellant contends that combining the teachings of Busch and Pearce would defeat the purpose of Busch. Appeal Br. 9. In support, Appellant argues that rather than hollow beads, Busch instead discloses solid foam beads that are fixed together, Pearce discloses sliding microspheres, and to modify Busch’s beads with Pearce’s sliding microspheres would defeat Busch’s purpose of fixing the beads together. Id. at 10; see also Reply Br. 4. This argument is unpersuasive in that it does not address the rejection as set forth by the Examiner. The Examiner relies on Pearce for disclosing “polymeric spherical elements that are solid or hollow and may have gaseous, liquid or solid interiors” rather than for sliding surface properties of the microspheres. See Final Act. 12. Stated differently, the Examiner does not propose substituting the material of Busch’s beads with the material of Pearce’s microspheres; rather, the Examiner proposes making Busch’s beads hollow instead of solid. See Ans. 7 (explaining that “Pearce discloses that polymeric elements/spherical objects used for cushioning and padding may be solid or hollow and may have gaseous, liquid or solid interiors (see column 11, lines 4–6)” (emphasis added)). Appellant contends that because Pearce’s hollow microspheres are very small in size and in the level of less than 2000 microns and Fish uses large scale substrates to form multiple filled chambers, there would be no reasonable expectation of success in combining these disclosures. Appeal Br. 11; see also Reply Br. 4. Appeal 2019-004343 Application 14/851,854 13 This argument is unpersuasive in that it also does not address the rejection as set forth by the Examiner. The Examiner relies on Pearce for disclosing “polymeric spherical elements that are solid or hollow and may have gaseous, liquid or solid interiors” (see Final Act. 12) and relies on Fish for disclosing “form[ing] hollow polymeric elements from a first polymeric sheet bonded to a second polymeric sheet” (see id. at 13). Stated differently, the Examiner does not propose substituting the material of Busch’s beads with the material of Pearce’s microspheres and then substituting the utilized material of Pearce with the material of Fish’s substrates. Rather, the material of the Examiner’s resulted hollow polymeric elements after being modified based on the teachings of Pearce and Fish, remains to be the material disclosed in Fish. See Ans. 7–8. The Examiner’s proposed modification is simply making Busch’s beads hollow and formed by two sheets bonded together. See Final Act. 11–13. Appellant does not provide evidence or persuasive argument that a skilled artisan would not have a reasonable expectation of success in combining the teachings of Busch, Pearce, Lindsay, and Fish in forming a sole structure that has comfort. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d at 1364; see also In re O’Farrell, 853 F.2d at 903–04. Appellant argues that the combination of references is based on impermissible hindsight reconstruction because the Examiner’s rejection relies on four references. Appeal Br. 11; see also Reply Br. 4. Reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention because it “is not the number of references, but what they would have meant to a person of ordinary skill in the field of the invention.” In re Gorman, Appeal 2019-004343 Application 14/851,854 14 933 F.2d 982, 986 (Fed. Cir. 1991). We find that the Examiner’s rejection is based on sound technical reasoning and evidence disclosed in the cited prior art, rather than improper hindsight reconstruction. In summary, and based on the record presented, we are not persuaded the Examiner erred in rejecting independent claim 1 as obvious over Busch, Pearce, Lindsay, and Fish. Accordingly, we sustain the Examiner’s rejection of claim 1. We further sustain the rejection of claims 2, 3, 6–13, 19–21, and 27–29, which fall with claim 1. Rejection IV – Obviousness over Busch, Pearce, and Fish Appellant argues claims 14–18 as a group. Appeal Br. 12. We select claim 18 as the representative claim, and claims 14–17 stand or fall with claim 18. As discussed above, claim 18 recites limitations similar to claim 1, and claims 14–17 depends either directly or indirectly on claim 18. Appeal Br. 15–16 (Claims App.). In regard to claim 18, the Examiner combines the disclosures of Busch, Pearce, and Fish in a similar manner as for claim 1 in Rejection III. See Final Act. 15–16.8 Appellant contends that this rejection is flawed for the same reasons discussed for Rejection III, namely that combining the teachings of Busch and Pearce would defeat the purpose of Busch and there would be no 8 We note that the Examiner inadvertently refers to “Reinhardt et al.” and “Morehouse” rather than Busch and Pearce in a sentence in this rejection. See Final Act. 16. Appeal 2019-004343 Application 14/851,854 15 reasonable expectation of success in combining these disclosures. Appeal Br. 12. These argument are unpersuasive for the reasons discussed supra. Accordingly, for similar reasons as discussed above for Rejection III, we sustain the Examiner’s rejection of claims 14–18 as unpatentable over Busch, Pearce, and Fish. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 6–13, 19–21, and 27–29 103 Wardlaw, Lindsay, and Fish 1–3, 6–13, 19–21, and 27–29 14–18 103 Wardlaw and Fish 14–18 1–3, 6–13, 19–21, and 27–29 103 Busch, Pearce, Lindsay, and Fish 1–3, 6–13, 19–21, and 27–29 14–18 103 Busch, Pearce, and Fish 14–18 Overall Outcome 1–3, 6–21, and 27–29 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation