Ex Parte Jarvis

Patent Trial and Appeal Board

Mar 6, 2017

13357727 (P.T.A.B. Mar. 6, 2017)

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.
13/357,727 01/25/2012 Kelly B. Jarvis 005127.01709/12-0164 6412
115726 7590 03/08/2017
BANNER & WITCOFF, LTD
& attorneys for client 005127
1100 13th STREET NW
SUITE 1200
WASHINGTON, DC 20005
EXAMINER
TEFERA, HIWOT E
ART UNIT PAPER NUMBER
3637
NOTIFICATION DATE DELIVERY MODE
03/08/2017 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):
PTO-115726@bannerwitcoff.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 KELLY B. JARVIS
Appeal 2014-009838
Application 13/357,727
Technology Center 3600
Before LINDA E. HORNER, MICHAEL L. HOELTER, and
FREDERICK C. LANEY, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kelly B. Jarvis (Appellant)1 seeks our review under 35 U.S.C. § 134
of the Examiner’s decision, as set forth in the Final Office Action, dated
December 16, 2013 (“Final Act.”), rejecting claims 1-14. Appellant’s
representative participated in an oral hearing on February 28, 2017. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant identifies NIKE, Inc. as the real party in interest. Br. 2.
Appeal 2014-009838
Application 13/357,727
RELATED APPEALS
The application that is the subject of the present appeal is related to
the following three applications, which are the subject of co-pending
appeals, also argued at the oral hearing on February 28, 2017: (1) Appeal
2014-009814, Application 13/357,766; (2) Appeal 2014-009853,
Application 12/433,097; and (3) Appeal 2014-009689, Application
12/433,109. Appellant also identifies the following additional related
appeals: Appeal 2014-001216, Application 12/255,496 and Appeal 2015-
002833, Application 13/357,682. Br. 2-3.
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to methods of
manufacturing articles of footwear using rapid manufacturing technology.
Spec., para. 2. Claims 1 and 8 are independent. Claim 1 is illustrative of the
subject matter on appeal and is reproduced below.
1. A method of manufacturing an article of footwear,
comprising:
fuse bonding successive layers of a first thermoplastic
elastomer material together in a shape so as to form a first portion
of an upper from the first thermoplastic elastomer material using
a rapid manufacturing additive fabrication technique;
fuse bonding successive layers of a second thermoplastic
elastomer material together in a shape so as to form a second
portion of the upper from the second thermoplastic elastomer
material using the rapid manufacturing additive fabrication
technique, the second thermoplastic elastomer material being
different from the first thermoplastic elastomer material;
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Application 13/357,727
forming a sole structure including a midsole and an
outsole; and
connecting the sole structure to the upper, wherein the
upper includes the first portion of the upper and the second
portion of the upper.
EVIDENCE
The Examiner relies upon the following evidence in the Final Action:
Mahide
Clausen
Soon
McDonald
US 3,921,313
US 6,110,411
US 2003/0233771 A1
US 2005/0262739 A1
Nov. 25, 1975
Aug. 29, 2000
Dec. 25, 2003
Dec. 1, 2005
D. Graham-Rowe, “Tailor-printed shoes will offer a perfect fit.”
New Scientist, Vol. 189, Issue 2538, p. 30 (Feb. 11, 2006)
(“Graham-Rowe”)
Appellant relies on the following evidence (Br. 8-9):
“Prior 2 Lever: Footwear Customization with Rapid
Manufacturing,” Mass Customization & Open Innovation News,
http://mass-customization.de/2006/04/prior_2_lever_f.html
(posted on Apr. 20, 2006) (hereinafter “P2L article”).2 3
REJECTIONS
The Final Action includes the following grounds of rejection:
1. Claims 1, 2, 4, 5, 8, 9, and 11-14 under 35 U.S.C. § 103(a) as
unpatentable over Graham-Rowe, Clausen, and Soon.
2. Claims 3 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Graham-Rowe, Clausen, Soon, and McDonald.
2 Appellant introduced this evidence into the Record by filing it in an
Information Disclosure Statement on July 5, 2013. Br. 8—9.
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Application 13/357,727
3. Claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable over
Graham-Rowe, Clausen, Soon, and Mahide.
ANALYSIS
First Ground of Rejection
Claims 1, 2, 4, and 13
Appellant argues claims 1, 2, 4, and 13 as a group. Br. 8-14. We
select independent claim 1 as representative of the group, and claims 2, 4,
and 13 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant contends the Examiner erred in rejecting claim 1 because
Graham-Rowe “fails to teach or suggest forming any portion of a footwear
upper from a thermoplastic elastomer using a rapid manufacturing additive
fabrication technique, as recited in claim 1.” Br. 9. Appellant asserts that
“[t]o the extent Graham-Rowe describes details of the Prior 2 Lever shoe
making process, Graham-Rowe only describes formation of the shoe’s sole
structure.” Id. (citing P2L article that “describes producing custom outsoles
and ‘hand-crafted one-piece leather uppers’”).
In the Final Action, from which this appeal is taken, the Examiner
finds that “Graham-Rowe teaches [a] method of manufacturing a footwear
comprising, using rapid manufacturing additive fabrication technique[s]
such as selective laser sintering, involving fuse bonding successive . . .
layers of building particles layer[-]by[-]layer in which a laser fuses together
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particles of a nylon-based material.”3 * 5Final Act. 2. The Examiner finds that
Clausen teaches “manufacturing flexible articles from a thermoplastic
elastomer comprising fusing the thermoplastic elastomer to form an integral
layer and using a selective laser sintering process ... to form adjacent
multiple layers as to form a three dimensional article.” Id. at 3. The
Examiner finds that Soon teaches a method of manufacturing an article of
footwear by fuse bonding a first thermoplastic elastomer material to form a
first portion of an upper and fuse bonding a second thermoplastic elastomer
material to form a second portion of an upper. Id. at 4. As such, we
understand the Examiner’s position to be that it would have been obvious to
one having ordinary skill in the art, in view of the combined teachings of
Graham-Rowe, Clausen, and Soon, to form a shoe upper using a
thermoplastic elastomer formed by a selective laser sintering process. Id.
As noted by the Examiner, “Graham-Rowe does not limit using rapid
manufacturing technique [s] for only the formation of the sole of the
footwear.” Ans. 3. In other words, Graham-Rowe would not have
discouraged one having ordinary skill in the art from using a rapid
manufacturing additive fabrication technique to make thermoplastic
elastomer upper portions, such as those disclosed in Soon. On the contrary,
Graham-Rowe describes making an entire shoe “in just a few hours” which
3 Appellant does not dispute that the selective laser sintering disclosed in
Graham-Rowe is a type of rapid manufacturing technique as claimed. See
Spec., para. 20 (“In at least some examples, the upper and/or sole structure
may be formed using rapid manufacturing techniques, such as laser
sintering, solid deposition modeling, stereolithography, and the like.”)
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at least would have suggested to one having ordinary skill in the art to rapid
3D print the entire article of footwear. Graham-Rowe, page 2, para. 3;
Ans. 3.
Appellant further contends that Graham-Rowe fails to teach or
suggest forming first and second portions of the upper from different
thermoplastic elastomer materials, and Clausen and Soon fail to cure the
deficiencies in Graham-Rowe. Br. 9-10 (arguing “nothing in Clausen
teaches or suggests forming different portions of a footwear upper from
different thermoplastic elastomer materials”). The Examiner does not rely
on Graham-Rowe to teach first and second portions of the upper formed
from different materials. Final Act. 2-3. Rather, the Examiner relies on
Soon to teach an upper having portions formed with different thermoplastic
elastomer materials having different properties, and relies on Clausen to
teach using different materials during a laser sintering process to achieve
different properties, such as variations in stiffness. Final Act. 3—4 (citing
Clausen, col. 5,11. 60-62 and Soon, paras. 33, 34, 36, 39). We agree with
these findings by the Examiner.
In particular, Clausen teaches using different materials during
selective laser sintering to achieve different properties in the formed article.
Clausen, col. 5,11. 60-62 (“It is possible to achieve various properties of the
laser sintered part or to enhance various properties such as stiffness by using
a blend of these block co-polymers.”). Further, Soon teaches attaching
components, i.e., toe cap 26, to shell 20 of a shoe upper to provide
reinforcement to an area of shell 20 that may be subjected to a higher load
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than other areas of the shoe. Soon, paras. 33, 36, 39. Soon further teaches
that the materials in toe cap 26 can be different from the material of shell 20.
Id. at para. 39. Appellant’s argument does not persuade us of error in the
Examiner’s findings as to Graham-Rowe, Clausen, and Soon.
Appellant further argues “one skilled in the art, armed with the
teachings of Graham-Rowe and Clausen, would not substitute the material of
Clausen in the process and structure described by Graham-Rowe.” Br. 11;
see also id. at 11-12 (arguing one would not have used Clausen’s material to
make a soccer boot sole and stud). This argument is not persuasive because
it does not address the Examiner’s proposed modification of Graham-
Rowe’s soccer shoe to make an upper out of Clausen’s material. Final
Act. 3-4.
Appellant further argues that “the materials of Clausen are not likely
to be considered suitable for use in an upper for an article of footwear, as
recited in claim 1, because nothing in either Graham-Rowe or Clausen
describes or remotely suggests such a use.” Br. 12. Claim 1 is directed to
the use of thermoplastic elastomer materials to form portions of a shoe
upper. The material used in Clausen is a thermoplastic elastomer. Clausen,
col. 4,1. 22. Clausen further teaches some of the powders made from block
co-polymers exhibited high flexibility. See, e.g., Clausen, col. 10,11. 28-36.
The Examiner finds that Soon teaches forming various components of a
shoe, such as a shell forming the shoe upper, from thermoplastic elastomers.
Final Act. 4 (citing Soon, para. 34). In light of Soon’s teaching of making
shoe uppers of thermoplastic elastomer, and Clausen’s teaching of a method
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of forming articles of thermoplastic elastomers exhibiting high flexibility,
we fail to discern, and Appellant has provided no evidence to support the
position, that the materials of Clausen would not have been considered
suitable by a person of ordinary skill in the art for use in a shoe upper.
Appellant contends there is no teaching of forming the elements of
Soon by “fuse bonding successive layers of a first thermoplastic elastomer
material and a second thermoplastic elastomer material, respectively, let
alone performing this fuse bonding step using the same rapid manufacturing
additive fabrication technique.” Br. 12-13. As noted supra, Soon discloses
a shoe upper including shell 20 comprised of fused medial half-shell 21 and
lateral half-shell 22. Soon, Fig. 4A, para. 36. Soon also discloses that toe
cap 26 can be bonded to shell 20 using solvent bonding to facilitate fusing of
the materials. Soon, para. 33. Soon further discloses that “the various
components of the shoe 1 can be manufactured from any suitable polymeric
material or combinations of polymeric materials . . . such as . . .
thermoplastic elastomers.” Id. at para. 34. Based on these disclosures, the
Examiner’s findings as to Soon are supported by a preponderance of the
evidence. Final Act. 4. Contrary to Appellant’s argument, the Examiner
does not rely on Soon to teach multiple, successive, fuse bonded layers of
thermoplastic elastomer particles formed using a first rapid manufacturing
additive fabrication technique. Rather, the Examiner relies on Graham-
Rowe to teach that it was known in the art at the time of Appellant’s
invention to manufacture shoes using selective laser sintering, which is a
rapid manufacturing additive technique, involving building particles layer-
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by-layer in which the laser fuses together particles of a nylon-based material.
Final Act. 2.
For these reasons, Appellant’s arguments do not persuade us of error
in the Examiner’s rejection of claim 1. Accordingly, we sustain the rejection
of independent claim 1, and its dependent claims 2, 4, and 13, under
35 U.S.C. § 103(a) as unpatentable over Graham-Rowe, Clausen, and Soon.
Claim 5
Claim 5 depends from claim 1 and further recites, “wherein the fuse
bonding step for forming the second portion of the upper from the second
thermoplastic elastomer material includes forming the second portion of the
upper with a second set of mechanical properties, the second set of
mechanical properties being different from the first set of mechanical
properties.” Br., Claims App. 2. Appellant argues “as discussed above,
Soon fails to teach or suggest fuse bonding successive layers of any
thermoplastic elastomer material together, let alone doing so using a rapid
manufacturing additive fabrication technique.” Br. 14. For the reasons
discussed above with regard to claim 1, we do not find this argument
persuasive of error in the Examiner’s rejection of claim 5.
Appellant further contends, “there is no teaching or suggestion in
Soon of the fuse bonding steps including forming the second portion of the
upper with a second set of mechanical properties that differs from a first set
of mechanical properties produced in a first portion of the upper.” Id. at 14-
15. As explained above, Soon discloses forming an upper having two
portions made from two different materials having two different sets of
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mechanical properties, i.e., toe cap 26 and shell 20. Soon, paras. 33, 36, 39.
The Examiner relies on Graham-Rowe and Clausen to teach fuse bonding
these different portions, as called for in claim 5, using different materials to
achieve the different mechanical properties. As such, we find no error in the
Examiner’s findings as to the scope and content of the prior art or their
combined teachings.
For these reasons, Appellant’s arguments have not persuaded us of
error in the Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Graham-Rowe, Clausen, and Soon, and thus we sustain
this rejection.
Claims 8, 9, 11, 12, and 14
Independent claim 8 recites, in relevant part, “fuse bonding successive
layers of a thermoplastic elastomer material together using a laser at a first
laser intensity in a rapid manufacturing additive fabrication technique to
form a first portion of the upper” and “fuse bonding successive layers of the
thermoplastic elastomer material together using the laser at a second laser
intensity in the rapid manufacturing additive fabrication technique to form a
second portion of the upper, wherein the second laser intensity is different
from the first laser intensity.” Br., Claims App. 3. Claims 9, 11, 12, and 14
depend from claim 8. Id. at 3—4.
The Examiner finds that Clausen teaches using a wide range of laser
intensities to change the mechanical properties of a laser sintered article.
Final Act. 3 (citing Clausen, col. 9,11. 14-19, 30-35, col. 10,11. 21-24). We
agree with Appellant that Clausen’s disclosure does not support the
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Examiner’s finding. Br. 19. With regard to Example 1, Clausen discloses
“[t]he sinterable powder was fused into articles using a wide range of laser
intensities, and in all cases the articles had good physical integrity and could
not be divided into separate layers by pulling or other types of deformations
with force applied directly by hand.” Clausen, col. 9,11. 14-18. This
disclosure demonstrates only that varying laser intensity did not compromise
the quality of the fused article. Clausen does not suggest in this passage a
reason to vary laser intensities to form different portions of a fused article or
to achieve different mechanical properties (i.e., all intensities achieved the
same “good physical integrity” property and Clausen does not indicate that a
change in laser intensity resulted in a change in such properties). Likewise,
with reference to Examples 3 and 9, relied upon by the Examiner, Clausen
makes no specific mention of laser intensities. Clausen, col. 9,11. 30-35,
col. 10,11. 18-24. Clausen discloses only that the article of Example 3 was
made using “[t]he powder of Example 1 [that] was sintered under the
conditions of Example 1, except an article having 36 layers . . . was formed”
and that the article of Example 9 “was processed under the conditions
described in Example 1 except that the laser was passed over the target 36
times.” Id. The number of passes of the laser over the target relates to the
number of fused layers formed during creation of the article, and does not
pertain to laser intensity.
For these reasons, the Examiner’s reason to modify Graham-Rowe to
use different laser intensities based on an asserted disclosure in Clausen of
using different laser intensities to change mechanical properties of a laser
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sintered article is not based on rational underpinnings. As such, we do not
sustain the rejection of independent claim 8 and its dependent claims 9, 11,
12, and 14 under 35 U.S.C. § 103(a) as unpatentable over Graham-Rowe,
Clausen, and Soon.
Second Ground of Rejection
Claim 3
Appellant does not present any additional arguments in response to
the second ground of rejection apart from the arguments raised in response
to the first ground of rejection. Appeal Br. 23-24 (arguing that “[t]he
addition of McDonald fails to cure the deficiencies of Graham-Rowe,
Clausen, and Soon with respect to claims 1 and 8”). We do not find these
arguments persuasive of error as to the first ground of rejection of
independent claim 1. Accordingly, we likewise sustain the rejection of
claim 3 under 35 U.S.C. § 103(a) as unpatentable over Graham-Rowe,
Clausen, Soon, and McDonald.
Claim 10
The Examiner’s reliance on McDonald in the second ground of
rejection of claim 10 does not cure the deficiencies in the disclosure of
Clausen as it relates to the rejection of independent claim 8, from which
claim 10 depends. Thus, for the same reasons discussed above for claim 8,
we do not sustain the rejection of claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Graham-Rowe, Clausen, Soon, and McDonald.
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Third Ground of Rejection
Claim 6
Claim 6 depends from claim 1 and further recites “applying a colored
resin to the first portion of the upper.” Br., Claims App. 3. Appellant argues
that “[njothing in [Mahide’s] description of [printing colors and patterns on
stretchable synthetic resin leather] discloses or remotely suggests applying a
colored resin to a fuse bonded thermoplastic material upper part formed in a
rapid manufacturing additive fabrication technique, as recited in claim 6.”
Br. 24. The Examiner clarifies that “Mahide is merely used to teach a
colored resin applied to an upper of a shoe.” Ans. 6-7. We find no error in
the Examiner’s finding that “Mahide teaches that colors and patterns are
printed on stretchable synthetic resin leather.” Final Act. 5-6 (citing
Mahide, col. 3,11. 13-20). Further, the Examiner’s reason to apply a colored
resin to a portion of the upper, as called for in claim 6, “to add to the design
value and to further make the footwear aesthetically pleasing” is based on
rational underpinnings. Final Act. 6. Mahide evidences a desire in the art to
add colors or patterns to articles of footwear to provide footwear with “a
high design value.” Mahide, col. 1,11. 58-59. Appellant has not argued or
provided evidence that the proposed modification would have been beyond
the level of skill of one of ordinary skill in the art. For these reasons, we are
not persuaded of error in the rejection of claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Graham-Rowe, Clausen, Soon, and Mahide.
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Claim 7
Claim 7 depends from claim 6 and further recites “the step of applying
the colored resin alters mechanical properties of the first portion of the
upper.” Br., Claims App. 3. Appellant argues that Mahide does not
“disclose [] or suggest[] that the application of the colored resin alters the
mechanical properties of a portion of a footwear upper made by a rapid
manufacturing additive fabrication technique, as further recited in claim 7.”
Br. 25. We agree with Appellant. Notably, the Final Action presents no
findings as to the limitation of claim 7. In response to Appellant’s argument,
the Examiner explains that “Mahide explicitly discloses that the application
of the printed patterns provides good strength and are not easily
deteriorated.” Ans. 7 (citing Mahide, col. 1,11. 51-55). This cited portion of
Mahide discloses that an object of the invention is “to provide injection
molded boots which have clear printed patterns which are not easily
discolored, deteriorated, and have good strength.” Mahide, col. 1,11. 51-55.
Mahide is discussing the strength of the printed patterns and does not
disclose that “applying the colored resin alters the mechanical properties” of
the boot to which it is applied. Thus, we do not find sufficient evidence in
Mahide to support an obviousness rejection of claim 7. For these reasons,
we do not sustain the rejection of claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Graham-Rowe, Clausen, Soon, and Mahide.
DECISION
The decision of the Examiner to reject claims 1-6 and 13 is
AFFIRMED.
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The decision of the Examiner to reject claims 7-12 and 14 is
REVERSED.
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)(l)(iv).
AFFIRMED-IN-PART
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