Follet, Lysandre et al.

Patent Trials and Appeals Board

Jan 7, 2020

14851980 - (D) (P.T.A.B. Jan. 7, 2020)

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.
14/851,980 09/11/2015 Lysandre Follet 201882-403280/150097US01 1086
126323 7590 01/07/2020
Honigman LLP/Nike
650 Trade Centre Way
Suite 200
Kalamazoo, MI 49002-0402
EXAMINER
TUCKER, PHILIP C
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
01/07/2020 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):
Patents@honigman.com
afahey@honigman.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 LYSANDRE FOLLET, GJERMUND HAUGBRO,
JAMES MOLYNEUX, and PHIL WOODMAN
____________

Appeal 2019-003295
Application 14/851,980
Technology Center 1700
____________

Before CHRISTOPHER L. OGDEN, LILAN REN, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–24.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Nike, Inc. as the real party in interest.
Appeal Brief filed October 23, 2018 (“Appeal Br.”) at 2.
2 Final Office Action entered May 24, 2018 (“Final Act.”) at 1.
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CLAIMED SUBJECT MATTER
Appellant claims a method of manufacturing an article of footwear.
Appeal Br. 4–6. Independent claims 1 and 20 illustrate the subject matter on
appeal, and are reproduced below with emphasis added to highlight subject
matter of particular relevance to the present appeal:
1. A method of manufacturing an article of footwear
comprising:
providing a textile;
applying at least one of heat and pressure to the textile
using a texturing device to form a textured area of the textile
that is spaced apart from a substantially smooth area of the
textile; and
forming at least part of an upper from the textile after
applying the at least one of heat and pressure to the textile, the
upper having a cavity configured to receive a foot and having
the textured area extend continuously from a medial side of the
upper to a lateral side of the upper across a forefoot region of
the upper;
wherein forming at least part of the upper from the textile
includes providing the substantially smooth area of the textile
with a smooth surface that defines a reference boundary of the
upper; and
wherein forming the textured area includes forming a
plurality of projection structures that form a gradient pattern
and project outwardly from the reference boundary and a
plurality of recess structures that recess inwardly from the
reference boundary, the plurality of recess structures including
a first recess structure recessed inwardly from the reference
boundary by a first height and a second recess structure
recessed inwardly from the reference boundary by a second
height, the plurality of projection structures including a first
projection structure disposed between the first recess structure
and the second recess structure and projecting outwardly from
the reference boundary by a third height that is greater than the
first height and the second height.

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20. A method of manufacturing an article of footwear
comprising:
knitting a knitted component of unitary knit construction,
the knitted component including a knit element and a tensile
element;
inlaying a first segment of the tensile element in a first
area of the knit element, inlaying a second segment of the
tensile element in a second area of the knit element, and
disposing a third segment of the tensile element outside the knit
element, the third segment extending between the first segment
and the second segment;
inserting the knit element into a cavity of a texturing
device;
applying at least one of heat and pressure to the knit
element while in the cavity to form a textured area adjacent to
a substantially smooth area having a smooth surface that
defines a reference plane of the knitted component, the textured
area including a plurality of first projection structures that
project from the reference plane in a first direction and a
plurality of second projection structures that form a gradient
pattern and project from the reference plane in a second
direction opposite the first direction, the plurality of first
projection structures including a first projection structure
projecting from the reference plane in the first direction by a
first height and a second projection structure projecting from
the reference plane in the first direction by a second height, the
plurality of second projection structures including a third
projection structure disposed between the first projection
structure and the second projection structure and projecting
from the reference plane in the second direction by a third
height that is greater than the first height and the second height;
forming at least a portion of an upper from the knitted
component, the textured area of the knitted component
extending continuously from a medial side of the upper to a
lateral side of the upper across a forefoot region of the upper,
wherein the first area and the first segment are disposed
proximate a throat of the upper, wherein the second area and the
second segment are disposed proximate a sole attachment area
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of the upper, and wherein the second projection structures
extend into an inner void defined by the upper; and
attaching the sole attachment area to a sole structure.

Appeal Br. 15, 18–19 (Claims Appendix) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered January 22, 2019 (“Ans.”):
I. Claims 1–5, 12–15, 17, and 19 under 35 U.S.C. § 103 as
unpatentable over Davis3 in view of Dua4 and Arizumi;5
II. Claim 6 under 35 U.S.C. § 103 as unpatentable over Davis in
view of Dua, Arizumi, and Kirk;6
III. Claims 7–11 and 23 under 35 U.S.C. § 103 as unpatentable
over Davis in view of Dua, Arizumi, and Beye;7
IV. Claim 16 under 35 U.S.C. § 103 as unpatentable over Davis in
view of Dua, Arizumi, and Hasselkuss;8
V. Claim 18 under 35 U.S.C. § 103 as unpatentable over Davis in
view of Dua, Arizumi, and Dua II;9 and
VI. Claims 20–22 and 24 under 35 U.S.C. § 103 as unpatentable
over Davis in view of Dua, Arizumi, and Beye.

3 Davis, US 6,299,962 B1, issued October 9, 2001.
4 Dua, US 2010/0199520 A1, published August 12, 2010.
5 Arizumi, US 2007/0256328 A1, published November 8, 2007.
6 Kirk, US 2015/0052778 A1, published February 26, 2015.
7 Beye, US 2014/0196314 A1, July 17, 2014.
8 Hasselkuss, US 3,447,885, issued June 3, 1969.
9 Dua, US 7,814,598 B2, October 19, 2010 (“Dua II”).
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FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejections of
claims 1–24 under 35 U.S.C. § 103 for reasons set forth in the Appeal and
Reply Briefs, and below.
Claim 1 requires the recited method of manufacturing an article of
footwear to comprise, in part, providing a textile having a substantially
smooth area with a smooth surface that defines a reference boundary, and
forming a textured area in the textile spaced apart from the substantially
smooth area, by forming a plurality of projection structures in the textured
area that project outwardly from the reference boundary and form a gradient
pattern. Similarly, independent claim 20 requires the recited method of
manufacturing an article of footwear to comprise, in part, forming a textured
area in a knit element adjacent to a substantially smooth area of the element
having a smooth surface defining a reference plane, and including a plurality
of projection structures that form a gradient pattern in the textured area.
The Specification explains that a gradient pattern of projection
structures may be created in a textile from which a footwear upper is created
by forming projection structures in the textile having heights that vary
gradually from a projection structure to an adjacent projection structure,
such that, for example, a first projection structure has the greatest height, a
second projection structure adjacent to the first projection structure has a
slightly lower height than the first projection structure, a third projection
structure adjacent to the second projection structure has a slightly lower
height than the second projection structure, and a fourth projection structure
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adjacent to the third projection structure has a slightly lower height than the
third projection structure. Spec. ¶¶ 46, 68, 92; Figs. 4–6.
The Examiner finds that Davis discloses a method of manufacturing
an article of footwear that comprises forming a textured area in a textile.
Final Act. 2–3, 12. The Examiner finds that Davis, however, does not
disclose producing a textured area spaced apart from a substantially smooth
area of the textile that defines a reference boundary, and does not disclose
that “the textured area includes a plurality of projection structures that
project outwardly at varying distances from the reference boundary.” Final
Act. 3, 12. The Examiner finds that Dua discloses a footwear upper formed
from a textile having a substantially smooth area spaced apart from a
textured area including a “plurality of projection structures and a plurality of
recess structures in an alternating arrangement,” which provide “structural
and aesthetic enhancements to the upper.” Final Act. 3–4, 12–13.
In view of these disclosures in Dua, the Examiner concludes that “[i]t
would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to have modified the method
taught by Davis by forming a textured area spaced apart from a substantially
smooth area of the textile, wherein the textured area includes a plurality of
projection structures and a plurality of recess structures in an alternating
arrangement . . . for the benefit of imparting different properties to different
areas of the upper.” Final Act. 4, 13.
The Examiner finds that “Davis, as modified by Dua, does not
explicitly teach recesses and projections having varied heights in the manner
recited” in claims 1 and 20. Final Act. 5, 14. The Examiner finds, however,
that “Arizumi teaches an article of footwear comprising a textured surface
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having a plurality of recesses and projections wherein the heights of the
recesses and projections are varied to change the flexibility of the footwear
surface.” Final Act. 5, 14 (citing Arizumi ¶ 26). In view of this disclosure
in Arizumi, the Examiner concludes that “[i]t would have been obvious to
one of ordinary skill in the art before the effective filing date of the claimed
invention to have varied the heights of the recesses and projections [in the
textile produced according to Davis’ method as modified by Dua] to
optimize the flexibility and other performance factors for the specific article
of footwear being produced.” Final Act. 5, 14 (citing Arizumi ¶¶ 15, 26).
A preponderance of the evidence relied upon in this appeal does not
support the Examiner’s conclusion of obviousness, however, for reasons
expressed by Appellant (Appeal Br. 7; Reply Br. 2) and discussed below.
We point out initially that when rejecting claims 1 and 20, the
Examiner does not address the requirement set forth in both claims of
forming a plurality of projection structures in a gradient pattern;
consequently, the Examiner does not identify any disclosure in Davis, Dua,
or Arizumi of projection structures that form a gradient pattern as recited in
claims 1 and 20. Final Act. 2–5, 12–15. Nonetheless, the Examiner does
address forming a gradient pattern when rejecting claim 13,10 and in so
doing, the Examiner determines that although Dua “does not explicitly teach
forming a gradient pattern,” in view of Arizumi’s disclosure of varying the
heights of recesses and projections in a textured surface in an article of
footwear to change the flexibility of the footwear surface, “it would have

10 Claim 13 depends indirectly from claim 1 and recites that the plurality of
projection structures diminish in height in a direction extending from the
forefoot region toward the medial side and diminish in height in a direction
extending from the forefoot region toward the lateral side.
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been obvious to one of ordinary skill in the art before the effective filing
date of the claimed invention to have varied the heights of the projection
structures in any pattern to achieve a desired variation in the structural and
aesthetic properties of the upper.” Final Act. 6.
The Examiner thus appears to determine that the recited gradient
pattern would have been an obvious matter of design choice. But a “finding
of ‘obvious design choice’ [is] precluded where the claimed structure and
the function it performs are different from the prior art.” In re Chu, 66 F.3d
292, 299 Fed. Cir. 1995 (citing In re Gal, 980 F.2d 717 (Fed. Cir. 1992)).
The textured materials disclosed in Davis, Dua, and Arizumi have
different structures and purposes than the plurality of projection structures
that form a gradient pattern recited in claims 1 and 20. Davis discloses
including “texture inserts” in an embossing mold to “achieve an endless
variety of molding effects” in upper material used to form an article of
footwear, while Dua discloses a non-woven textile incorporated into
footwear that “may be formed to have a variety of non-planar or three-
dimensional configurations,” such as a “waves that extend in two directions
to impart an egg crate configuration.” Davis col. 6, ll. 24–27; col. 7, ll. 47–
59; col. 8, ll. 7–17, 53–54; Dua ¶¶ 63, 167; Fig. 42C. Thus, neither Davis
nor Dua discloses projection structures that form a gradient pattern as recited
in claims 1 and 20.
Arizumi discloses a footwear upper including textured surface 40
formed of contoured structures 41 in which an alternating series of raised
peaks 42 and troughs 43 extend in two orthogonal directions. Arizumi
¶¶ 19–20, 22; Figs. 4–9. Although Arizumi discloses that “the heights of the
raised structures (e.g., the peaks 42) or, alternately or additionally, the
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depths of the depressions (e.g., the troughs 43) between the raised structures
may be varied in order to change the flexibility of the textured surface 40,”
Arizumi does not disclose varying the heights of the peaks to form a gradient
pattern as recited in claims 1 and 20. Arizumi ¶ 26.
As discussed above, the Examiner determines that it would have been
obvious to vary the heights of the projections disclosed in Arizumi to
optimize the flexibility of a textured area of a footwear upper produced
according to Davis’ method as modified by Dua. Final Act. 5, 14.
Appellant’s Specification explains, however, that forming a textured area in
a footwear upper to include projection structures arranged in a gradient
pattern serves different purposes and has different functions than increasing
flexibility. Specifically, the Specification explains that a gradient pattern of
projection structures allows a textured area to distribute forces and/or
deform in a predetermined manner, such that taller projection structures
deform readily when impacting a ball, and forces then distribute through the
textured area so that gradually shorter projection structures resist
deformation. Spec. ¶ 96. The Specification indicates that the gradient
pattern also enhances the force dampening properties of the textured area,
and allows water or other fluids to be channeled away from the upper in a
predetermined manner. Id.
Because the gradient pattern of projection structures recited in claims
1 and 20 serves different purposes and has different functions than the raised
structures disclosed in Arizumi relied on by the Examiner, forming such
raised structures into a gradient pattern would not have been obvious absent
a reason or suggestion stemming from the relied-upon disclosures in Davis,
Duo, and/or Arizumi to form such a gradient pattern. Gal, 980 F.2d at 719
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(holding that the claimed chip structure was not a matter of design choice
over the prior art structure where applicant disclosed that the claimed
structure achieved desired functions different from the prior art); Chu, 66
F.3d at 299 (holding that claimed structural feature was not a matter of
design choice where there was no suggestion or teaching to modify the prior
art to arrive at the claimed structural feature and applicant introduced
evidence showing the benefits of the claimed structural feature).
The Examiner, however, does not provide reasoning supported by
objective evidence explaining why the relied-upon disclosures in Davis,
Duo, and Arizumi would have led one of ordinary skill in the art to modify
the raised structures disclosed in Arizumi to form a gradient pattern, when
including such raised structures in a textured area of a footwear upper
produced according to Davis’ method as modified by Dua. The Examiner’s
conclusory assertion that it would have been obvious to vary the heights of
the projection structures disclosed in Arizumi in any pattern to achieve a
desired variation in structural and aesthetic properties does not constitute the
requisite reasoning necessary to establish prima facie obviousness. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[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.”).
We, accordingly, do not sustain the Examiner’s rejections of claims 1
and 20, and claims 2–19 and 21–24, which each depend from either claim 1
or claim 20, under 35 U.S.C. § 103.

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CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 12–15,
17, 19
103 Davis, Dua,
Arizumi
1–5, 12–15,
17, 19
6 103 Davis, Dua,
Arizumi, Kirk
6
7–11, 23 103 Davis, Dua,
Arizumi, Beye
7–11, 23
16 103 Davis, Dua,
Arizumi,
HasselKuss
16
18 103 Davis, Dua,
Arizumi, Dua II
18
20–22, 24 103 Davis, Dua,
Arizumi, Beye
20–22, 24
Overall
Outcome
1–24

REVERSED