Ex Parte Fisher et al

Patent Trial and Appeal Board

Jul 27, 2018

12910187 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/910,187 10/22/2010
78342 7590 07/31/2018
SHOOK, HARDY & BACON L.L.P.
(NIKE, INC.)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BLVD.
KANSAS CITY, MO 64108-2613
FIRST NAMED INVENTOR
Sam Fisher
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10-0839/NIKE.156496 7510
EXAMINER
ANNIS, KHALED
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.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 SAM FISHER, CARL BEHREND, and OLIVER McLACHLAN
Appeal 2016-006012
Application 12/910, 187
Technology Center 3700
Before KEN B. BARRETT, GEORGE R. HOSKINS, and
ANTHONY KNIGHT, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Sam Fisher et al. ("Appellants") 1 appeal under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 20 and 22-30 in this application.
Claims 1-19 and 21 are cancelled. See Appeal Br. 22, 23 (Claims App.).
The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 The Appeal Brief identifies Nike, Inc. as the real party in interest. Appeal
Br. 3.
Appeal 2016-006012
Application 12/910,187
CLAIMED SUBJECT MATTER
There are three independent claims on appeal: claims 20, 27, and 28.
See Appeal Br. 22-27 (Claims App.). Claim 20 recites:
20. A shin guard sleeve constructed from a flexible material,
in an un-stretched state, comprising:
a shin portion and an opposite calf portion, wherein the
shin portion is proximate a shin region of a wearer's leg and the
calf portion is proximate a calf region of the leg when the shin
guard sleeve is in an as-worn position;
a medial portion and an opposite lateral portion, wherein
when in an as-worn position, the medial portion is disposed
between the calf portion and the shin portion, and the lateral
portion is disposed between the calf portion and the shin portion;
a top edge and an opposite bottom edge; wherein the
medial portion, the shin portion, the lateral portion, and the calf
portion are disposed between the top edge and the bottom edge;
a medial edge and an opposite lateral edge; wherein when
in an as-worn position, the medial edge and the opposite lateral
edge join to form a joining seam extending from the top edge to
the bottom edge proximate the calf region;
an intermediate portion between the top edge and the
bottom edge that extends from the medial edge to the lateral edge
proximate a medial apex and a lateral apex;
a shin distance as measured from the top edge to the
bottom edge proximate the shin portion that is less than a calf
distance as measured from the top edge to the bottom edge
proximate the calf portion;
a bottom edge length between the medial edge and the
lateral edge proximate the bottom edge is less than an
intermediate length between the medial edge and the lateral edge
within the intermediate portion, wherein the bottom edge length
and the intermediate length extend across the shin portion; and
a maintainer coupled proximate the top edge, wherein the
maintainer comprises a material having a coefficient of friction
greater than a coefficient of friction of the flexible material.
Id. at 22-23.
2
Appeal 2016-006012
Application 12/910,187
Claims 27 and 28 each also recite a shin guard sleeve, with both
claims requiring a seam having a "seam length includ[ing] a dimension that
is ... at least as long as any other length of flexible material connecting the
top edge to the bottom edge." Id. at 24--27.
REJECTIONS ON APPEAL 2
Claims 20, 22, 23, and 26 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Coalter (US 6,192,519 Bl, iss. Feb. 27, 2001) and Senn
(US 4,492,227, iss. Jan. 8, 1985).
Claims 24, 25, and 27-30 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Coalter, Senn, and Yokoyama (US 2003/0230121 Al,
pub. Dec. 18, 2003).
ANALYSIS
A. Obviousness based on Coalter and Senn
(Claims 20, 22, 23, and 26)
Independent claim 20 recites a shin guard sleeve comprising a shin
portion, a calf portion, a medial portion, and a lateral portion. Appeal Br. 22
(Claims App.). The shin portion and the calf portion are opposite each
other, and respectively are proximate a wearer's shin region and calf region
when worn. Id. The medial portion and the lateral portion are opposite each
other, with each disposed between the shin and calf portions. Id. The
claimed sleeve is formed from a flexible material having two edges 'join[ ed]
2 The Examiner acknowledges "claim 21 was cancelled" (Final Act. 2), but
rejects claim 21 as indefinite (id. at 2-3). We understand claim 21 to have
been cancelled. See Appeal Br. 23 (Claims App.). Therefore, we do not
address the Examiner's indefiniteness rejection.
3
Appeal 2016-006012
Application 12/910,187
to form a joining seam ... proximate the calf region." Id. ( emphasis added).
Appellants argue the Examiner errs in relying on Coalter as disclosing a
joining seam proximate the calf region. Reply Br. 7. For the following
reasons, we agree.
The Examiner's findings are provided via annotations to Coalter's
Figure 5, which we reproduce here:
f,».JtiK:f~
tS:1".l\'Hftis{dH
Fig. A2
u,
Examiner's Figure A2
iJ'.::,~i~·r!N WN"iPF1
~';cr.,..')'Kh~';;;.a-ff
,s~~~n1:~
(Reproduction of Coalter's Figure 5, a perspective view of sports
pad 110, with several annotations added.)
Final Act. 4. The Examiner identifies the claimed shin portion in Coalter by
the "anterior/shin portion" annotation (to the left in Coalter's Figure 5), and
identifies the claimed calf portion by the "Posterior/ calf portion" annotation
(to the right in Coalter's Figure 5). Id. at 5. The Examiner identifies the
4
Appeal 2016-006012
Application 12/910,187
claimed seam in Coalter by the "Seam" annotation (in the middle of
Coalter's Figure 5). Id. The Examiner further finds the claimed medial and
lateral portions to be disclosed in Coalter's Figure 6 as, respectively, the
outermost right and left vertical edges of the device as shown in that figure.
Id.
The problem with the Examiner's findings is that the identified seam
will not be proximate to the wearer's calf region when Coalter's sleeve is
worn. See Final Act. 4 (Examiner's annotations to Coalter's Figure 5). The
identified seam, instead, will be located at the midpoint between the
wearer's calf region (i.e., the identified "Posterior/calf portion") and the
wearer's shin region (i.e., the identified "anterior/shin portion"). See id.
Given the relationships specified in claim 20 for the shin, calf, medial, and
lateral portions of the claimed sleeve, such a midpoint will be located at the
middle of the medial portion or the lateral portion of Coalter's sleeve, rather
than proximate the calf region as required by claim 20.
Thus, a preponderance of the evidence does not support the
Examiner's finding that Coalter discloses a seam proximate a calf region.
The Examiner's additional consideration of Senn, and of dependent
claims 22, 23, and 26, does not cure the noted deficiency of Coalter as to
claim 20. See Final Act. 6-8. Accordingly, we do not sustain the rejection
of claims 20, 22, 23, and 26 as having been obvious over Coalter and Senn.
B. Obviousness based on Coalter, Senn, and Yokoyama
(Claims 24, 25, and 27-30)
Claims 2 4 and 2 5
Claim 24 depends from independent claim 20, and claim 25 depends
from claim 24. See Appeal Br. 23-24 (Claims App.). The Examiner's
5
Appeal 2016-006012
Application 12/910,187
consideration of these claims, and of Senn and Yokoyama, does not cure the
deficiency of Coalter noted above in relation to the subject matter of
claim 20. See Final Act. 8-9. We, therefore, do not sustain the rejection of
claims 24 and 25 as having been obvious over Coalter, Senn, and
Yokoyama.
Claims 27-30
Independent claims 27 and 28 both recite a seam having a "length
includ[ing] a dimension that is ... at least as long as any other length of
flexible material connecting the top edge to the bottom edge." Appeal
Br. 25 (claim 27), 27 (claim 28) (Claims App.). Appellants argue the
Examiner errs in relying on Coalter as disclosing a seam with the specified
length dimension. Id. at 11-13 (claim 27), 17 (claim 28). For the following
reasons, we agree.
The Examiner initially concludes claims 27 and 28 "are claiming an
identical device as in claims 20 and 22-26 with different terminology
referring to substantially the same elements." Final Act. 9. We disagree
with this reading of the claims. As one example, claims 20 and 22-26 do
not recite a seam length that is at least as long as any other length of material
connecting the top and bottom edges.
For the seam recited in claims 27 and 28, the Examiner relies on the
findings provided in connection with claim 20 via annotations to Coalter's
Figure 5, which we have reproduced above. Id. at 4, 10. Those annotations
pertinently identify a "Seam" (in the middle of Coalter's Figure 5), which
the Examiner finds corresponds to the seam of claims 27 and 28. Id.
However, the Final Office Action does not address the further claim
6
Appeal 2016-006012
Application 12/910,187
limitation requiring the seam length to be at least as long as any other length
of material connecting the top edge to the bottom edge. Id. at 9--14. In the
Answer, the Examiner states the annotations "clearly show[] ... the seam
substantially is at least as long as a portion of the posterior portion length"
(identified at the extreme right-hand side of the annotated figure). Ans. 4.
We reproduce below Coalter' s Figures 5 and 6, with annotations we
have added to identify lengths A, B, and C in each figure:
130