Reebok International Limited

Patent Trials and Appeals Board

Dec 1, 2021

2021004708 (P.T.A.B. Dec. 1, 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.
16/014,854 06/21/2018 Paul Davis 2073.3380003 4793
63504 7590 12/01/2021
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
KANE, KATHARINE GRACZ
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
12/01/2021 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):
e-office@sternekessler.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL DAVIS, MIKE ANDREWS, and DUSTIN SIMONE
Appeal 2021-004708
Application 16/014,854
Technology Center 3700
Before DANIEL S. SONG, BENJAMIN D. M. WOOD, and
BARRY L. GROSSMAN, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 15–31. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). The Appellant identifies the real party in interest as
Reebok International Limited. Appeal Br. 4.
Appeal 2021-004708
Application 16/014,854

2
CLAIMED SUBJECT MATTER
The claims are directed to a method of making an article of footwear
with extruded components. Claim 15, reproduced below, is illustrative of
the claimed subject matter:
15. A method of making a sole for an article of footwear, the
method comprising:
extruding a single continuous elongate member to form a
first layer of the sole, the first layer having a pattern; and
extruding a single continuous elongate member to form a
second layer of the sole, the second layer having the pattern and
positioned directly on top of the first layer such that the
continuous elongate member of the second layer is aligned with
the continuous elongate member of the first layer,
wherein the single continuous elongate member of the first
layer and the single continuous elongate member of the second
layer form a medial sidewall of the sole and a lateral sidewall of
the sole.
Appeal Br. 23 (Claims App.).
OPINION
The Examiner rejects claims 15–31 under 35 U.S.C. § 103 as being
unpatentable over Tow (US 2015/0165690 A1, publ. June 18, 2015). Final
Act. 2. As to independent claim 15, the Examiner finds that Tow discloses a
method of making a sole for an article of footwear substantially as claimed,
but concedes that Tow “does not specifically disclose the single continuous
elongate member of the first layer and the single continuous [layer] of the
second layer form a medial sidewall of the sole and a lateral sidewall of the
sole.” Final Act. 3. Nonetheless, the Examiner finds that “Tow discloses
various patterns to create a sole structure may be used . . . to impart different
structures, designs, and functions during an additive manufacturing process.”
Appeal 2021-004708
Application 16/014,854

3
Final Act. 3, citing Tow ¶¶ 51–56, 63–68, 76–82, 93–96, 104, 105, Figs. 6,
7, 12–14. The Examiner concludes that “it would have been obvious to one
of ordinary skill in the art to have the layers form a medial sidewall of the
sole and a lateral sidewall of the sole in order to fully produce a 3D printed
sole (Figures 6, 7 & 12-14) for the purpose of providing a full sole to
support a user’s foot.” Final Act. 3–4. Similar findings and conclusion are
set forth by the Examiner relative to independent claim 23. Final Act. 5–6.
The Appellant argues that “[t]he Examiner fails to make a prima facie
case of obviousness for the pending claims in this application.” Appeal Br.
8. In particular, the Appellant argues that
Tow does not disclose at least three claim elements of the
independent claims: (1) “extruding a single continuous elongate
member” to form a first layer (and a similar process step to
form the second layer); (2) “the continuous elongate member of
the second layer is aligned with the continuous elongate
member of the first layer” (or “the single continuous elongate
member of the second layer follows the pattern of the single
continuous elongate member of the first layer” for claim 23);
and (3) the single continuous elongate members (one in each
layer) “form a medial sidewall of the sole and a lateral sidewall
of the sole.”
Appeal Br. 11; see also id. at 12–18. According to the Appellant,
“[a]lthough Tow relates to additive manufacturing systems, such as 3D
printing, that implement ‘a plurality of deposition layers’ (id., ¶[0066]), it
does not disclose or suggest any configuration that is similar to the
configuration resulting from the claimed method.” Appeal Br. 11. The
Appellant further argues that “Tow focuses on fill patterns that are varied in
different regions of the orthotic, without any indication that its deposition
layers are made of single continuous elongate members that are aligned with
each other.” Appeal Br. 11.
Appeal 2021-004708
Application 16/014,854

4
Specifically, the Appellant argues that “using one material, one
process, or one pattern does not suggest extruding a single continuous
elongate member to form a layer,” and that the rejection “does not provide
any rationale to . . . form [Tow’s] layers by extruding a single continuous
elongate member.” Appeal Br. 13, 15; see also Reply Br. 2 (“Nothing in
Tow, or the definition of 3D printing or additive manufacturing, indicates
that a layer is formed by extruding a single continuous elongate member,
even if Tow uses an extrusion process.”).
Similarly, the Appellant also argues the rejection fails to provide “any
explanation for how the cited paragraphs disclose that each layer is built
successively and continuous on top of the other layer,” and “[s]imply
disclosing an extruding process does not indicate that a single continuous
elongate member forms the entire layer or that the layers are aligned with
each other” because “a layer could be built successively and continuously on
top of another layer without continuous elongate members in each layer
being aligned with each other.” Appeal Br. 16–17.
Finally, the Appellant argues that “the purported rationale (to fully
produce a 3D printed sole for the purpose of providing a full sole to support
a user’s foot) would not have led to the claimed feature because a full sole
can be created to support a user’s foot without single elongate members in
each layer forming both a medial sidewall and a lateral sidewall.” Appeal
Br. 8; see also Appeal Br. 17–18. According to the Appellant, the
Examiner’s reasoning “only supports the idea that Tow’s layers could form a
medial sidewall and a lateral sidewall, not that both sidewalls are formed
using a single continuous elongate member in each layer.” Appeal Br. 18.
Appeal 2021-004708
Application 16/014,854

5
The Examiner responds that
Tow discloses a method of creating anatomically customized
devices, like soles and orthotics as shown in [Figures] 3-7,
which use 3D printing; Additive manufacturing. By definition,
a 3D printing/additive manufacturing process is an extrusion
process . . . in a controlled, continuous manner (Para. 54),
wherein a depositing path can have various patterns and built
by linear stacking (Para. 76).
Ans. 3 (citing Tow ¶¶ 54, 76). As such, according to the Examiner, “Tow
describes an array of multiple possibilities and methods to create such a sole
hence an obvious rejection is used to teach that certain possibilities as
claimed are possible since Tow describes so many.” Ans. 3. Thus, in the
Examiner’s view, “Tow clearly discloses ‘extruding a single continuous
elongate member’ wherein a second layer positioned directly on top of the
first layer,” and “[i]t would be clear, to create a customized sole using the
various 3D printing processes, that layers would create at least part/portions
of both a medial and lateral sidewall. . . . Parts, portions, segments of the
first layer and second layer would to some degree create at least
part/portions/segments of a medial sidewall and a lateral sidewall.” Ans. 4–
6 (citing Tow ¶¶ 51, 54, 55, 66, 68, 75–79, 81, 82, 104, 105).
The Appellant has the better position. In rejecting claims under
35 U.S.C. § 103(a), the Examiner bears the initial burden of establishing a
prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992). As the Examiner points out, Tow does disclose various
techniques, uses, and capabilities of 3D printing/additive manufacturing
process. However, it is erroneous to explicitly find that “Tow clearly
discloses ‘extruding a single continuous elongate member’ wherein a second
layer positioned directly on top of the first layer” when Tow does not appear
Appeal 2021-004708
Application 16/014,854

6
to make such a disclosure. Ans. 4–5. Although such manufacturing
technique may be known in the art of 3D printing/additive manufacturing to
those of ordinary skill, and Tow may serve as evidence of such knowledge,
the Appellant is persuasive in arguing that “the Examiner’s assertion that
Tow’s processes can be used as claimed (without providing any reason to do
so),” is insufficient to establish a prima facie case. Appeal Br. 8. Without
further articulated reasoning as to why a person of ordinary skill would
practice such manufacturing techniques to manufacture a sole in the manner
claimed, the rejection is incomplete. “[O]bviousness concerns whether a
skilled artisan not only could have made but would have been motivated to
make the combinations or modifications of prior art to arrive at the claimed
invention.” Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir.
2015).
In other words, in the present appeal, it is evident that Tow discloses
various techniques, uses, and capabilities of 3D printing/additive
manufacturing process, and discloses them in the context of orthotics or a
shoe with a customized portion. See, e.g., Tow ¶ 98. However, the analysis
set forth in support of the rejection is not of sufficient detail to address the
explicit limitations recited in independent claims 15 and 23. “[R]ejections
on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 406 (2007) (citation omitted). The
Examiner’s general reference to the disclosure of Tow, without more, does
not provide sufficient reasoning with rational underpinnings to address the
Appeal 2021-004708
Application 16/014,854

7
specific limitations of the claims, and thus, the obviousness conclusion, as
articulated, is essentially a conclusory statement.
Therefore, in view of the above considerations, we reverse the
rejection of independent claims 15 and 23, as well as claims 16–22 and 24–
31 ultimately depending therefrom. The Appellant’s remaining arguments
specifically directed to the limitations of these dependent claims are moot.
Appeal Br. 19–21.
CONCLUSION
The Examiner’s rejection is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
15–31 103 Tow 15–31

REVERSED