Ex Parte Le et al

Patent Trial and Appeal Board

Sep 29, 2017

12271166 (P.T.A.B. Sep. 29, 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.
12/271,166 11/14/2008 Tony H. Le 005127.01084/08-0693 3561
115726 7590 10/03/2017
BANNER & WITCOFF, LTD
& attorneys for client 005127
1100 13th STREET NW
SUITE 1200
WASHINGTON, DC 20005
EXAMINER
COLLIER, JAMESON D
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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 TONY H. LE, SUSAN D. CESSOR and
NAMKOOK KIM
Appeal 2016-008418
Application 12/271,166
Technology Center 3700
Before STEVEN D.A. McCARTHY, BRETT C. MARTIN and
THOMAS F. SMEGAL, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge.
DECISION ON APPEAL
1 STATEMENT OF THE CASE
2 The Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’
3 decision finally rejecting claims 11, 14, 18—20, 22, 23, 25, 27 and 28 under
4 pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Cartier (US
5 6,964,120 B2, issued Nov. 15, 2005), Cheng (US 6,761,845 B2, issued July
6 13, 2004) and Campbell (US 2007/0199211, publ. Aug. 30, 2007). Claims
7 13, 16, 17 and 21 are withdrawn from consideration. Claims 1—10, 12, 15,
8 24 and 26 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
1 The Appellants identify Nike, Inc. of Beaverton, Oregon, as the real
party in interest.
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Appeal 2016-008418
Application 12/271,166
We REVERSE.
Claims 11,14 and 28 are independent:
11. A decorated article of footwear comprising:
an upper; and
a midsole assembly secured to the upper and comprising:
a decorated first layer including an
ethylvinylacetate substrate and a decorated polyether-block co­
polyamide polymer film having a thickness ranging from 100
microns to 700 microns comprising graphic elements
compression molded to the ethylvinylacetate substrate wherein
at least a portion of the decorated film forms an external surface
of the article of footwear;
a plurality of midsole support elements, wherein
one or more of the midsole support elements are joined to the
decorated first layer; and
an outsole joined to a lower surface of one or more of the
midsole support elements.
More pertinently, each of claims 11 and 28 recites a decorated article
of footwear having “a decorated first layer;” the decorated first layer
“including an ethylvinylacetate substrate and a decorated polyether-block
co-polyamide polymer film;” the decorated poly ether-block co-polyamide
polymer film “having a thickness ranging from 100 microns to 700
microns;” the decorated polyether-block co-polyamide polymer film being
“compression-molded to the ethylvinylacetate substrate.” Claim 14 recites a
midsole for a decorated article of footwear having a top layer including “a
molded substrate and a decorated film;” the decorated film including “a
polyether-block co-polyamide polymer film having a thickness ranging from
100 microns to 700 microns;” and the decorated film being “compression
molded to the molded substrate.”
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Appeal 2016-008418
Application 12/271,166
Cartier describes an article of athletic footwear 100 including a
midsole 400. (See Cartier, col. 4,11. 7 & 8). The midsole 400 includes a
shock-absorbing layer 500 and a heel plate 600. (See Cartier, col. 4,11. 33—
35 & Figs. 3—5). Cartier describes the heel plate 600 as “providing a firm
surface that supports the heel region of the wearer’s foot.” (See Cartier, col.
4,11. 58—61). The heel plate 600 comprises a lightweight, durable material
such as polyethyl-block-copolyamide. (See Cartier, col. 4,11. 61—65).
Cartier teaches that an “upper surface 610 of heel plate 600 is attached to the
lower portion of shock-absorbing layer 500 using, for example, an
adhesive.” (Cartier, col. 5,11. 12—14).
The Examiner finds that Cartier’s shock-absorbing layer 500
corresponds to the recited ethylvinylacetate substrate; and that the Cartier’s
heel plate 600 corresponds to the recited decorated polyether-block co­
polyamide polymer film. (See Final Office Action, mailed November 19,
2015, at 4). In addition, the Examiner concludes that the limitations of
claims 11,14 and 28 relating to compression molding are product-by­
process limitations. (See id.) “A product-by-process claim is ‘one in which
the product is defined at least in part in terms of the method or process by
which it is made.’” SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d
1312, 1315 (Fed. Cir. 2006) (quoting Bonita Boats, Inc. v. Thunder Craft
Boats, Inc., 489 U.S. 141, 158 n. (1989)). “If the product in a product-by­
process claim is the same as or obvious from a product of the prior art, the
claim is unpatentable even though the prior product was made by a different
process.” In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985).
As the Appellant correctly points out, each independent claim recites
that the substrate is compression molded to the decorated polymer film. The
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Appeal 2016-008418
Application 12/271,166
only method described by Cartier for joining the shock-absorbing layer 500
and the heel plate 600 is adhesive bonding. (See “Appeal Brief,” dated Jan.
14, 2016, at 9 & 10). The Examiner has not proven that the joint produced
by adhesively bonding Cartier’s shock-absorbing layer 500 to its heel plate
600 is the same as the joint that would be produced by compression molding
the two layers together. Therefore, Cartier does not teach the compression
molding limitation.
In the alternative, the Examiner cites paragraph 54 of Campbell as
evidence that compression molding and adhesive bonding were known to be
interchangeable. (See Examiner’s Answer, mailed July 13, 2016 (“Ans.”), at
6). Paragraph 54 of Campbell teaches that fill material may be provided in
recessed segments 108,110 provided to define lines of flex in a footwear
sole structure 100 (see, e.g., Campbell, paras. 50 & 51; & Fig. 1A) may be
provided by means such as molding; cements or adhesives; or the like. The
Examiner has not articulated persuasive reasoning to explain why one of
ordinary skill in the art would have understood the processes of compression
molding and adhesive bonding to be interchangeable for purposes of
bonding Cartier’s shock-absorbing layer 500 to the heel plate 600. In
particular, the Examiner has not shown that the mechanical demands on the
joint between Cartier’s shock-absorbing layer 500 and the heel plate 600
would be the same as those on the recessed portions 108,110, and fill
material 112 described by Campbell.
Likewise, the Examiner has not provided persuasive reasoning to
show that Cheng’s teachings to use compression molding to secure a porous,
decorated membrane comprising a polyolefin, polyvinyl chloride or
thermoplastic urethane elastomer to a shoe sole would have provided one of
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Appeal 2016-008418
Application 12/271,166
ordinary skill in the art reason to compression mold Cartier’s heel plate 600
to the shock-absorbing layer 500. (See Ans. 6; see also Cheng, col. 2,11. 6—
42). Cheng teaches using compression molding to join different materials
for use with potentially different mechanical demands.
We do not sustain the rejection of claims 11, 14, 18—20, 22, 23, 25, 27
and 28 under § 103(a) as being unpatentable over Cartier, Cheng and
Campbell.
DECISION
We REVERSE the Examiner’s decision rejecting claims 11, 14, 18—
20, 22, 23, 25, 27 and 28.
REVERSED
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