Ex Parte Harber et al

Patent Trial and Appeal Board

Jun 26, 2013

11157473 (P.T.A.B. Jun. 26, 2013)

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.
11/157,473 06/20/2005 Edward Louis Harber NIKE.135897 5705
5251 7590 06/27/2013
SHOOK, HARDY & BACON LLP
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BLVD
KANSAS CITY, MO 64108-2613
EXAMINER
HOEY, ALISSA L
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
06/27/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EDWARD LOUIS HARBER, RICHARD MACDONALD,
TINA MARIE GRACE, and VICTORIA MORTON
____________

Appeal 2011-007612
Application 11/157,473
Technology Center 3700
____________

Before CHARLES N. GREENHUT, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/157,473

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STATEMENT OF THE CASE
Edward Louis Harber, Richard MacDonald, Tina Marie Grace, and
Victoria Morton (“Appellants”) appeal under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-10. We have jurisdiction under 35
U.S.C. § 6(b).
The Claimed Subject Matter
Claim 1 is the sole independent claim on appeal. Claim 1 is
representative of the claimed subject matter and is reproduced below.
1. A sports uniform comprising:
at least two articles worn by a first participant in an
activity;
at least two activity-specific zones, wherein each
activity-specific zone comprises a zone continuously visible
from one or more common angles of view experienced by a
second participant in the activity, and at least two articles
including one or more activity-specific zones; and
functional ornamentation situated in each activity-
specific zone.
App. Br. 9 (Claims App’x, Claim 1).
Reference
The Examiner relies upon the following prior art reference:
Johnston US 6,279,161 B1 Aug. 28, 2001
Rejection
The Examiner makes the following rejection:
I. Claims 1-10 are rejected under 35 U.S.C. § 102(b) as
anticipated by Johnston.
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SUMMARY OF DECISION
We AFFIRM.
OPINION
Claim 1
The Examiner found that Johnston discloses each and every element
of claims 1-10. Ans. 3-5. The Examiner found that Figures 2B-2F and
4B-4F disclose movement of a user while the activity specific zones are
continuously visible by a second participant. Id. at 5. The Examiner also
found that “depending upon the activity engaged in, the activity specific
zones would remain continuously visible to onlookers.” Id. at 7. The
Examiner further found that Johnston discloses the claimed invention
because Figures 2B-2F and 4B-4F disclose a zone comprising a zone that is
continuously visible from one or more common angles of view and having
functional ornamentation. See Ans. 7 (relying in-part on identifiers 30C-30F
of Figures 2B-2F).
Appellants assert that the rejection is erroneous because Johnston
“fails to disclose activity-specific zones that are continuously visible by a
second participant in the activity.”1 App. Br. 5. Appellants contend that
Johnston provides a garment with a hidden sub-layer of material that is
exposed when areas of an athlete are bent, flexed, or moved. Id. at 6.
Appellants assert that because Johnston’s sub-layer is hidden and not visible
unless the garment moves, Johnston does not anticipate a sports uniform

1 Appellants argue claims 1 and 4-10 as group. We select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011); see also In re Lovin,
652 F.3d 1349, 1351 (Fed. Cir. 2011). Accordingly, claims 4-10 stand or
fall with claim 1.
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with activity zones that are continuously visible. See id. Appellants also
point to Johnston’s Figure 2A and 2G as showing that the zones are hidden
when the wearer is in certain positions while visible when the wearer is in
other positions. Reply Br. 6. Thus, Appellants contend that Figures 2A-2G
reflect that the zones are only “temporarily visible” as opposed to
continuously visible. Id. at 5-7.
Appellants also assert that Johnston fails to disclose two “activity-
specific zones” as called for by claim 1. Id. at 6. Appellants contend that
the appearance to a viewer varies based on the position of a wearer’s body
rather than a common angle of view experienced by a second participant in
an activity. Id. As such, Appellants assert that the appearance of Johnston’s
garment is “position-specific” rather than “activity-specific.” Id.
A determination that a claim is anticipated under 35 U.S.C. § 102(b)
involves two analytical steps. First, we interpret the claim language, where
necessary, giving the claims their broadest reasonable interpretation in light
of the Specification. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
Second, we compare the construed claim to a prior art reference and make
factual findings to determine whether “each and every limitation is found
either expressly or inherently in [that] single prior art reference.” Id. The
elements in the reference “must be arranged as in the claim . . . but this is not
an ‘ipsissimis verbis’ test.” In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Further, an Examiner’s factual finding regarding what a reference discloses
must be supported by a preponderance of the evidence. See In re Caveney,
761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the evidence is the
standard that must be met by the PTO in making rejections”); see also In re
Oetiker, 977 F.2d 1443, 1449 (Fed. Cir. 1992) (Plager, J., concurring) (“In
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rejecting an application, factual determinations by the PTO must be based on
a preponderance of the evidence, and legal conclusions must be correct.”).
The claims call for at least two activity-specific zones wherein each
activity-specific zone comprises “a zone continuously visible from one or
more common angles of view experienced by a second participant in the
activity.” App. Br. 9 (Claims App’x, Claim 1). The claims further recite
that functional ornamentation is situated in each activity-specific zone. Id.
The claims do not require that the functional ornamentation, which is
situated in each activity-specific zone, be continuously visible; rather, it is a
zone in each activity-specific zone that is required to be continuously
visible.
The Specification describes various visual stimuli as examples of
functional ornamentation. See Spec. 4, l. 25 – 5, l. 1 (“Various kinds of
visual stimuli can be used. For central vision or peripheral vision,
luminance contrast and object detail can be used to provide an appropriate
visual stimulus. For central vision perception, color characteristics (such as
hue or saturation) can be used.”). Figures 4A-4C disclose “[a] representative
arrangement of zones configured to provide visual stimuli for soccer
uniforms . . . .” Id. at 10, ll. 10-11; figs. 4A-4C. “In FIG. 4B, visual stimuli
are defined in zones 401, 403, 405, 407 that can be situated on sides of a
uniform jersey, shorts, and socks, respectively.” Id. at 10, ll. 13-15.
Johnston discloses a garment with a hidden sub-layer material under
seams strategically located over body muscles, tendons, and joints, “where
the sublayer(s) only become visible and vary in size when the muscles,
tendons, and joints are flexed, bent or moved . . . .” Johnston, col. 1, ll.
4-10. Johnston discloses the underlying material as element 30 and in
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Figures 2B-2F refers to the underlying material as elements 30B-30F. Id. at
col. 4, ll. 14-60; figs. 2B-2F. The underlying material is not visible in
Figures 2A and 2G. See figs. 2A, 2G. An area (or zone) surrounding and
encompassing the underlying material of Johnston includes a portion of the
outer garment material and the sub-layer material. For example, the garment
on the lower leg of a wearer as shown in Figure 2B, which spans from the
knee to ankle. See fig. 2B.
A simple comparison of Johnston’s Figures 2B-2F and Appellants’
Figures 4B reveals that Johnston’s garment has zones which include the
outer garment material and the sub-layer material in an essentially identical
location as Appellants’ activity-specific zone 407. The same is true of the
activity-specific zone comprising the thigh area of Johnston’s garment as
shown in Figure 2E, for example, and Appellants’ activity specific zone 405.
Compare Johnston, fig. 2E with Spec., fig. 4B. Thus, Johnston discloses at
least two activity-specific zones wherein each activity-specific zone
comprises a zone that is continuously visible as claimed and functional
ornamentation situated in each activity-specific zone.2
Accordingly, we sustain the rejection as applied to claims 1 and 4-10.
Claims 2 and 3
Appellants raise separate arguments pertaining to claims 2 and 3.
App. Br. 6-7. Appellants assert that Johnston does not disclose the
functional ornamentation of claim 1 being “defined based on luminance
contrast” (claim 2) or “defined based on color contrast” (claim 3). Id.

2 The fact that Johnston’s sublayer is not continuously visible does not
negate the Examiner’s finding that the reference discloses each and every
element of claim 1 because the claim does not require that the functional
ornamentation be continuously visible.
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The Examiner found that Johnston discloses functional ornamentation
defined based on luminance contrast because Johnston teaches the use of
sparkles and glow in the dark material. Ans. 8 (citing Johnston, col. 3,
ll. 55-62). The Examiner further found that Johnston discloses functional
ornamentation defined based on color contrast because Johnston teaches the
use of different colors for the sub-layer material than the surface material.
Id. (citing Johnston, col. 5, ll. 44-48).
We agree that the Examiner’s cited portions of Johnston reveal that
Johnston discloses these elements of dependent claims 2 and 3 for the
reasons explained by the Examiner. Accordingly, because the Examiner’s
findings are supported by a preponderance of the evidence, we sustain
Rejection 1 as applied to claims 2 and 3.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1-10.
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

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