NIKE, Inc.

Patent Trials and Appeals Board

Sep 2, 2021

2021002121 (P.T.A.B. Sep. 2, 2021)

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.
15/444,763 02/28/2017 Carl L. Madore NIKE1375PUS/150981US01 1054
113338 7590 09/02/2021
Quinn IP Law/NIKE, Inc.
21500 Haggerty Road
Ste 300
Northville, MI 48167
EXAMINER
ZHAO, AIYING
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
09/02/2021 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 CARL L. MADORE
____________

Appeal 2021-002121
Application 15/444,763
Technology Center 3700
____________

Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
WILLIAM A. CAPP, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1, 2, 13, and 20.2 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 Nike, Inc., as the real party in interest.
Appeal Br. 3.
2 Claims 3–12 and 14–19 are withdrawn from consideration. Appeal Br. 3.
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CLAIMS
Claims 1 and 13 are independent. Claim 1 is illustrative, and reads:
1. A sole structure for an article of footwear, comprising:
an outsole having a forefoot region, a heel region, and a
midfoot region between the heel region and the forefoot region,
wherein the outsole includes:
an outsole surface that extends along the forefoot
region, the heel region, and the midfoot region, wherein
the outsole defines a medial edge and a lateral edge;
a plurality of chevron-shaped traction elements extending
outward from the outsole surface, each chevron-shaped traction
element having a first leg and a second leg connected to each
other at an apex, each of the first leg and the second leg having
a respective leg end opposite the apex; and
wherein:
a first set of the plurality of chevron-shaped traction
elements are provided in a first zone of the outsole, wherein the
first zone is provided within the forefoot region, each chevron-
shaped traction element in the first set has a first common
orientation on the outsole surface, the first common orientation
is defined by a first common orientation vector that bisects a
respective one of the plurality of chevron-shaped traction
elements in the first zone, the first common orientation vector
points in a rearward lateral direction, the first common
orientation vector points toward the lateral edge, the first zone
extends from the lateral edge to the medial edge, the first set of
the plurality of chevron-shaped traction elements includes a
first chevron-shaped traction element and a second chevron-
shaped traction element, the first chevron-shaped traction
element of the first set of the plurality of chevron-shaped
traction elements is disposed closer to the medial edge than to
the lateral edge, and the second chevron-shaped traction
element of the first set of the plurality of chevron-shaped
traction elements is disposed closer to the lateral edge than to
to [sic] the medial edge;
a second set of the plurality of chevron-shaped traction
elements are provided in a second zone of the outsole, and
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wherein each chevron-shaped traction element in the second set
has a second common orientation on the outsole surface;
a third set of the plurality of chevron-shaped traction
elements are provided in a third zone of the outsole, and
wherein each chevron-shaped traction element in the third set
has a third common orientation on the outsole surface; and the
first common orientation, the second common orientation, and
the third common orientation are all different and are
selected to inhibit rotation of the sole structure about a ground
plane when worn.

Appeal Br. 24–25 (Claims App.).

REJECTIONS3
Claims 1, 2, 13, and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Fram (US 6,032,388, issued Mar. 7, 2000).
Claims 1, 2, 13, and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Nakano (US D563,087 S, issued Mar. 4, 2008).

ANALYSIS
Claims 1, 2, 13, and 20 as Unpatentable Over Fram
Appellant argues claims 1, 2, 13, and 20 as a group and presents the
same argument for both independent claims 1 and 13. Appeal Br. 6–15. We
select claim 1 as representative to decide the appeal as to the rejection, and
claims 2, 13, and 20 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2019).

3 The Final Action includes objections to the drawings, Specification, and
claims. Final Act. 2–4. Ordinarily, an objection is reviewable by petition
under 37 C.F.R. § 1.181. Appellant does not address the objections in the
Appeal Brief. Accordingly, we do not address the objections in this appeal.
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In rejecting claim 1, the Examiner finds that Fram discloses a sole
structure for an article of footwear that comprises most of the recited
limitations (Final Act. 4–6), but finds that “Fram does not explicitly
disclose” the following limitations: (1) “each chevron-shaped traction
element in the first set has a first common orientation on the outsole surface,
the first common orientation is defined by a first common orientation vector
that bisects a respective one of the plurality of chevron-shaped traction
elements in the first zone, the first common orientation vector points in a
rearward lateral direction, the first common orientation vector points toward
the lateral edge”; and (2) “the first common orientation is different from the
second common orientation and the third common orientation; and (3) the
first common orientation “is selected to inhibit rotation of the sole structure
about a ground plane when worn” (id. at 6). However, the Examiner finds
that Figure 2 of Fram “appears to show” limitations (1) and (2). Id. at 6, 17
(annotated version of Figure 2 of Fram). As for limitation (3), the Examiner
finds that “the tread pattern [of Fram] is selected and capable of inhibiting
rotation of the sole structure about a ground plane.” Id. at 6. The Examiner
determines that it would have been obvious to one of ordinary skill in the art
“to have configured the chevron-shaped traction elements of the first set as
disclosed by Fram” as in limitations (1)–(3) “to optimize the orientation
configuration for the first set of the plurality of chevron-shaped traction
elements within the forefoot region for improved anti-slippery function.” Id.
at 6–7.
Appellant contends that the Examiner erred because:
(i) “the Examiner relied on speculation and provided no evidence that
modifying the orientation of the Pram’s first set of the plurality of chev[r]on
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shaped traction elements within the forefoot region would improve the ‘anti-
slippery function’” (Appeal Br. 7) (emphasis added);
(ii) “the Examiner relied on improper hindsight reasoning to conclude
that modifying the orientation of the Pram’s first set of the plurality of
chev[r]on shaped traction elements within the forefoot region would
improve the ‘anti-slippery function’” (id. at 9) (emphasis added);
(iii) “the Examiner relied on an alleged ‘common practice’ to supply a
missing limitation without providing evidence and a reasoned explanation .
. . [and] because [the] alleged fact that it is common practice to use oriented
traction elements on the outer surface of an outsole to provide anti-slippery
characteristics is not capable of instant and unquestionable demonstration as
being well-known” (id. at 9);
(iv) “the Examiner [did not provide] a reasoned explanation as to why
it would be obvious to modify Fram so that each chevron-shaped traction
element in the first set has a common orientation ‘in a rearward lateral
direction’ as recited in claims 1 and 13” (id. at 12); and
(v) “Fram’s first chevron-shaped traction element (as identified by the
Examiner in Fram’s Figure 2) is not provided within the forefoot region of
the outsole.” Id. at 13.
Each of contentions (i)–(iv) is premised on the rejection modifying the
sole of Fram. However, the Examiner explains that the rejection does not
modify Fram. For example, for contention (i), the Examiner states:
It is noted that the rejection in the Office action does not
involve “modifying the orientation of Fram’s first set of the
plurality of chevron-shaped traction elements”. Figure 2 of
Fram, which was annotated by the examiner for further
clarification, clearly shows the claimed feature of the instant
application. As Fram does not explicitly make a statement in
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the specification, the examiner properly made an obvious
rejection in the Office action based on Fram’s drawing. One of
ordinary skill of the shoe art would recognize from the
annotated drawing that Fram’s first set of chevron-shaped
elements meets the claimed feature of the instant application.
As to the “anti-slippery function”, one of ordinary skill of the
shoe art would recognize that a plurality of oriented traction
elements provided on an outer surface of an outsole have anti-
slippery function.
Ans. 3. As for contentions (ii)–(iv), the Examiner likewise explains that the
rejection does not modify Fram, and that annotated Figure 2 of Fram shows
the alleged missing features. Id. at 3–4.
In the Reply Brief, Appellant contends that the Examiner made
contradictory findings in the Final Action and Examiner’s Answer. Reply
Br. 2. Appellant contends that “in the Final Office Action, the Examiner
states that ‘Fram does not explicitly disclose that each chevron-shaped
traction element in the first set of the plurality of traction elements has a first
common orientation on the outsole surface,’” whereas in the Examiner’s
Answer, “the Examiner states that ‘one person of ordinary skill of the shoe
art would recognize that Fram’s first set of chevron-shaped elements meets
the claimed feature of the instant application.’” Id. (citing Final Act. 6).
We disagree with Appellant that the Examiner made contradictory
findings. The Examiner’s position is that Figure 2 of Fram shows, i.e.,
illustrates, the structural limitations (1) and (2), even though Fram does not
explicitly describe them. We agree with the Examiner that Fram’s drawings
can be relied upon to provide this disclosure. It is well established that
drawings can be relied on for what they reasonably disclose to one of
ordinary skill in the art. See In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972).
Indeed, “‘[d]escription for the purposes of anticipation can be by drawings
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alone as well as by words.’” Id. “[A] drawing in a utility patent can be cited
against the claims of a utility patent application even though the feature
shown in the drawing was unintended or unexplained in the specification of
the reference patent.” In re Aslanian, 590 F.2d 911, 914 (CCPA 1979). As
the Examiner’s rejection does not modify Fram to satisfy limitations (1) and
(2), and we find no error in the Examiner’s reliance on Fram’s drawings,
Appellant’s contentions (i)–(iv) do not apprise us of Examiner error.
In response to Appellant’s contention (v), the Examiner submits that
“Appellant fails to set forth a standard for the term ‘forefoot’ in the original
disclosure; therefore, per broadest reasonable interpretation, a plain meaning
of the term ‘forefoot’, i.e., a region corresponding to a front part of the
human foot is used in the Office action.” Ans. 5. The Examiner submits
that “Fram’s first chevron-shaped traction element is provided within ground
contacting portion 7c, and Fram discloses the ground contacting portion 7c
is located in the forefoot area of shoe 1.” Id. (citing annotated Fram Fig. 2,
col. 4, ll. 3–5).
Appellant contends that the Examiner cites no evidence to support this
definition of the term “forefoot.”4 Reply Br. 3. Appellant submits that this
term “means the ‘area of foot between the ball and the toes.’”5 Appeal Br.

4 We note that an ordinary meaning of the term “forefoot” is “the front part
of the human foot; also: the front part of a shoe.” See Merriam-Webster’s
Collegiate Dictionary 490 (11th ed. 2003). This definition is closely similar
to the Examiner’s.
5 Appellant cites: “Definition of Forefoot, Footwear Glossary, Shoe
Construction Terminology,” available at http://www.amefird.com/wp-
content/uploads/2010/01/2/Footwear-Glossary-Shoe-Construction-03-08-
08.pdf; and “Definition of Forefoot, Glossary of Shoe Terms,” available at
https://www.candefashions.com/about/glossary-of-shoe-terms.
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14. Appellant contends that the first chevron-shaped traction element
identified by the Examiner in Figure 2 of Fram is located in the “midfoot
region” and the Examiner’s construction of “forefoot” is unreasonable. Id.
at 14–15. According to Appellant, the cited “Glossary of Footwear” is used
by persons skilled in the footwear arts to determine the plain meaning of
footwear terms, whereas “the definition of the term ‘footwear’ [sic]
proposed by the Examiner is not the plain meaning under the broadest
reasonable interpretation because it is not the meaning given those skilled in
the footwear arts.” Reply Br. 4.
These contentions are unpersuasive. During examination, claims are
to be given their broadest reasonable interpretation consistent with the
specification. In re American Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). “Absent an express definition in [its] specification, the fact
that [A]ppellant[] can point to definitions or usages that conform to their
interpretation does not make the PTO’s definition unreasonable when the
PTO can point to other sources that supports its interpretation.” In re
Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Even though Appellant
points to definitions of “forefoot” that provide Appellant’s interpretation,
this does not make the Examiner’s definition unreasonable.
Furthermore, Appellant’s Specification provides an explicit definition
of “forefoot.” “To act as its own lexicographer, a patentee must ‘clearly set
forth a definition of the disputed claim term’ other than its plain and
ordinary meaning.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d
1362, 1365 (Fed. Cir. 2012) (citation omitted). Appellant’s Figure 2 depicts
a sole structure 12 of an article of footwear 10. See Spec. ¶ 14, Fig. 2. As
shown, the outsole 16 includes a forefoot region 22, a midfoot region 20,
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and a heel region 18. See id. ¶ 15, Fig. 2. The Specification describes,
“[f]or purposes of discussion, the heel region 18, the midfoot region 20, and
the forefoot region 22 are defined as the rearmost third, the middle third, and
the foremost third of the outsole 16, respectively.” See id. We interpret this
description as defining the “forefoot region” as the “foremost third” of
outsole 16, which encompasses an area forward of the widest part of the
sole. This definition of “forefoot” is different from the one proferred in the
Appeal Brief, which Appellant asserts is the plain meaning of this term.
Reply Br. 4. As definitions of terms contained in the specification are to be
taken into account when interpreting the claim language, In re Morris, 127
F.3d at 1054, we do not agree Appellant that its proferred definition should
be applied for claim 1 because this definition differs from how Appellant’s
Specification defines “forefoot.” See Spec. ¶ 15.
Claim 1 recites “a first set of the plurality of chevron-shaped traction
elements are provided in a first zone of the outsole, wherein the first zone is
provided within the forefoot region.” Appeal Br. 24 (Claims App.)
(emphasis added). Appellant’s Figure 2 illustrates first zone A. As the
claimed first zone A is “provided within the forefoot region,” the forefoot
region can be a larger region than first zone A, consistent with how this term
is defined in Appellant’s Specification. In view of the claim language and
the definition of “forefoot region” set forth in the Specification, Appellant
does not explain persuasively why the “First chevron-shaped traction
element” shown in annotated Figure 2 of Fram is not located in the “forefoot
region” (i.e., “foremost third”) of the sole, as claimed.
Accordingly, Appellant fails to show persuasively that the rejection of
claim 1 over Fram is not supported by a preponderance of the evidence.
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Thus, we sustain the rejection of claim 1 as unpatentable over Fram. Claims
2, 13, and 20 fall with claim 1.

Claims 1, 2, 13, and 20 as Unpatentable Over Nakano
Appellant argues claims 1, 2, 13, and 20 as a group and presents the
same argument for claims 1 and 13. Appeal Br. 15–22. We select claim 1
as representative to decide the appeal as to the rejection, and claims 2, 13,
and 20 stand or fall with claim 1.
In rejecting claim 1, the Examiner finds that Nakano discloses a sole
structure for an article of footwear that comprises most of the claim
limitations (Final Act. 10–12), but states that “Nakano does not explicitly
disclose that the first common orientation vector points in a rearward lateral
direction, the first common orientation vector points toward the lateral edge”
(id. at 12, hereinafter “first common orientation vector limitation”). As
recited in claim 1, “each chevron-shaped traction element in the first set has
a first common orientation on the outsole surface, the first common
orientation is defined by a first common orientation vector . . . the first
common orientation vector points in a rearward lateral direction . . . toward
the lateral edge.” Appeal Br. 24 (Claims App.). The Examiner finds,
however, that Figure 2 of Nakano “appears to show” the first common
orientation vector limitation. Final Act. 12, 18 (annotated Figure 2 of
Nakano).
The Examiner determines that it would have been obvious to one of
ordinary skill in the art “to have configured the chevron-shaped traction
elements of the first set as disclosed by Nakano” as in the first common
orientation vector limitation of claim 1 “to optimize the orientation
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configuration for the first set of the plurality of chevron-shaped traction
elements within the forefoot region for improved anti-slippery function.”
Final Act. 12.
Appellant contends that the Examiner erred because:
(i) “the Examiner relied on speculation and provided no evidence that
modifying the orientation of the Nakano’s first set of the plurality of
chev[r]on shaped traction elements within the forefoot region would
improve the ‘anti-slippery function’” (Appeal Br. 16) (emphasis added);
(ii) “the Examiner relied on improper hindsight reasoning to conclude
that modifying the orientation of the Pram’s first set of the plurality of
chev[r]on shaped traction elements within the forefoot region would
improve the ‘anti-slippery function’” (id. at 18) (emphasis added);
(iii) “the Examiner relied on an alleged ‘common practice’ to supply a
missing limitation without providing evidence and a reasoned explanation .
. . [and] because [the] alleged fact that it is common practice to use oriented
traction elements on the outer surface of an outsole to provide anti-slippery
characteristics is not capable of instant and unquestionable demonstration as
being well-known” (id. at 18–19); and
(iv) “the Examiner [did not provide] a reasoned explanation as to why
it would be obvious to modify Nakano so that each chevron-shaped traction
element in the first set has a common orientation ‘in a rearward lateral
direction’ as recited in claims 1 and 13” (id. at 21).
Each of Appellant’s contentions (i)–(iii) is premised on the rejection
purportedly modifying Nakano. In response to contention (i), however, the
Examiner explains that the rejection does not modify Nakano:
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It is noted that the rejection in the Office action does not
involve “modifying the orientation of Nakano’s first set of the
plurality of chevron-shaped traction elements”. Figure 2 of
Nakano, which was annotated by the examiner for further
clarification, clearly shows the claimed feature of the instant
application. As Nakano is a design patent and does not have a
detailed description, the examiner properly made an obvious
rejection in the Office action based on Nakano’s drawing. One
of ordinary skill of the shoe art would recognize that Nakano’s
first set of chevron-shaped elements meets the claimed feature
of the instant application. As to the “anti-slippery function”,
one of ordinary skill of the shoe art would recognize that a
plurality of oriented traction elements provided on an outer
surface of an outsole have anti-slippery function.
Ans. 5. As for the other contentions (ii)–(iv), the Examiner similarly
explains that the rejection does not modify Nakano and annotated Figure 2
of Nakano shows the disputed claim feature. Id. at 6–7.
In the Reply Brief, Appellant contends that the Examiner made
contradictory findings in the Final Action and Examiner’s Answer. Reply
Br. 4–5. Particularly, Appellant contends that, in the Examiner’s Answer,
“the Examiner states that ‘one person of ordinary skill of the shoe art would
recognize that Nakano’s first set of chevron-shaped elements meets the
claimed feature of the instant application,’” whereas “in the Final Office
Action, the Examiner states that ‘Nakano does not explicitly disclose that the
first common orientation vector points in a rearward lateral direction [and
that] the first common orientation vector points toward the lateral edge.”
Id. at 4 (citing Final Act. 16).
For substantially the same reasons as those discussed above for the
rejection based on Fram, we disagree with Appellant that the Examiner
made contradictory findings for Nakano. We understand the Examiner’s
position to be that Figure 2 of Nakano illustrates the first common
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orientation vector limitation, and thus, Nakano discloses these limitations
even if they are not explicitly described. As the Examiner’s rejection does
not modify Nakano to meet the first common orientation vector limitation,
Appellant’s contentions (i)–(iv) do not apprise us of Examiner error.
Appellant also contends that Nakano’s Figure 2 does not show that
“‘the first common orientation vector points in a rearward lateral
direction [and that] the first common orientation vector points toward the
lateral edge.” Appeal Br. 17. Rather, Appellant contends, “the chevron-
shaped traction elements identified in Figure 2 of Nakano by the Examiner
have different orientations (not common orientations) and these orientations
do not point toward the lateral edge of the outsole.” Id.
Claim 1 recites that each of a first set of the plurality of chevron-
shaped traction elements provided in a first zone has a first common
orientation, not that every chevron-shaped traction element provided in the
first zone is in the first set or has a common orientation. Figure 2 depicts
chevron-shaped traction elements 34 and 34a located in first zone A. With
respect to claim 1, Appellant indicates that, in Figure 2, each chevron-
shaped traction element 34 in the first set has a common orientation defined
by first common orientation vector V1, which points in a rearward lateral
direction and toward lateral edge 24. See Appeal Br. 4 (citing Spec. ¶ 21;
Fig. 2). We note, however, that paragraph 21 states, “all the first chevron
traction elements 34a disposed within the first zone A have the first
substantially common orientation vector V1.” See Spec. ¶ 21 (emphasis
added). This does not disclose that each chevron-shaped traction element
34a in the first set has the same orientation, as Appellant seems to contend.
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Additionally, we observe that Appellant’s Figure 2 shows that some
chevron-shaped traction elements 34 in first zone A have an orientation
vector V with a different orientation from that of orientation vector V1. As
such, Figure 2 demonstrates that all the chevron traction elements disposed
within first zone A do not have a common orientation vector.
For the above reasons, we are unpersuaded that the chevron-shaped
traction elements shown in Figure 2 of Nakano identified by the Examiner
have different orientations and these orientations do not point toward the
lateral edge of the outsole. Accordingly, Appellant fails to show
persuasively that the rejection of claim 1 over Nakano is not supported by a
preponderance of the evidence. Thus, we sustain the rejection of claim 1,
and claims 2, 13, and 20 falling with claim 1, as unpatentable over Nakano.

CONCLUSION
We affirm the rejections of claims 1, 2, 13, and 20.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 13, 20 103 Fram 1, 2, 13, 20
1, 2, 13, 20 103 Nakano 1, 2, 13, 20
Overall
Outcome
1, 2, 13, 20

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TIME PERIOD FOR RESPONSE
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