NIKE, INC.

Patent Trials and Appeals Board

Apr 13, 2020

13623701 - (D) (P.T.A.B. Apr. 13, 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.
13/623,701 09/20/2012 Robert M. Bruce 005127.01681/11-1594 8996
115726 7590 04/13/2020
BANNER & WITCOFF, LTD
& attorneys for client 005127
1100 13th STREET NW
SUITE 1200
WASHINGTON, DC 20005
EXAMINER
KANE, KATHARINE GRACZ
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
04/13/2020 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):
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 ROBERT M. BRUCE and JOSHUA P. HEARD
____________

Appeal 2019-0042131
Application 13/623,7012
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–7, 9, 12–17, 21–29, 32–37, and 41. We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

1 Our Decision references Appellant’s Appeal Brief (“Appeal Br.,” filed
Nov. 14, 2018), and the Examiner’s Answer (“Ans.,” mailed Feb. 21, 2019)
and Final Office Action (“Final Act.,” mailed Mar. 14, 2018).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies NIKE, Inc., as the real party in
interest. Appeal Br. 1.
Appeal 2019-004213
Application 13/623,701

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CLAIMED INVENTION
Appellant’s claimed invention is directed to sole structures for
footwear. Spec. ¶ 1. Claims 1, 21, and 41 are the independent claims on
appeal. Claim 1 is representative of the claimed subject matter:
1. A sole structure for an article of footwear, comprising:
a forefoot outsole component including an exterior major
surface and an interior major surface;
a forefoot midsole component engaged with the interior
major surface of the forefoot outsole component, wherein the
forefoot midsole component includes a forefoot receptacle
extending completely through the forefoot midsole component;
a forefoot fluid-filled bladder system located at least
partially within the forefoot receptacle; and
a rigid plate member having a hardness of 50 to 80
Shore D and including a rigid plate portion at least partially
overlaying an upper surface of the forefoot fluid-filled bladder
system, wherein only a portion of a bottom surface of the rigid
plate member is exposed and forms a bottom surface of the sole
structure that extends through an arch area of the sole structure
rearward of the forefoot outsole component.

REJECTIONS
Claims 1–6, 9, 12–17, 21–26, 28, 29, 32–37, and 41 are rejected under
35 U.S.C. § 103(a) as unpatentable over Sokolowski (US 2010/0146818 A1,
pub. June 17, 2010), Mueller (US 2007/0107265 A1, pub. May 17, 2007),
Le (US 2007/0240333 A1, pub. Oct. 18, 2007), and Foxen
(US 2005/0268490 A1, pub. Dec. 8, 2005).
Claims 7 and 27 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Sokolowski, Foxen, Mueller, Le, and Healy (US 5,852,887, iss.
Dec. 29, 1998).

Appeal 2019-004213
Application 13/623,701

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ANALYSIS
Independent Claim 1 and Dependent Claims 2–6, 9, and 12–17
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a), because Sokolowski
does not disclose a sole structure comprising “a rigid plate member . . .
including a rigid plate portion at least partially overlaying an upper surface
of the forefoot-filled bladder system,” as recited in claim 1. See Appeal
Br. 14–18.
Sokolowski describes a dance shoe. Sokolowski ¶¶ 2, 28. The dance
shoe comprises upper 102, sole 104, and support cage 106. Id. ¶¶ 4, 28,
Figs. 1–3. Upper 102 is a “breathable boot” with a lacing system and a
flexible liner. Id. ¶ 28. Sole 104 is a two-piece, split-sole comprising toe
portion 104(a) and heel portion 104(b). Id. ¶¶ 31, 35, Fig. 1. Toe portion
104(a) connects to upper 102 beneath a toe region, and heel portion 104(b)
connects to upper 102 beneath a heel region. Id. ¶¶ 31, 35, 45, Figs. 1, 5.
Cage support 106, including offset support tabs 120 and spine 118,
surrounds a segment of upper portion 102 that extends between the toe and
heel areas. Id. ¶¶ 32, 38, 45, Figs. 1, 6, 7. Liner 130 and sock liner 140
reside within upper 102. Id. ¶ 46, Fig. 5.
In rejecting claim 1, the Examiner finds that a combination of
Sokolowski’s upper 102, cage support 106, liner 130, and sock liner 140
constitute the claimed “rigid plate member,” as recited in claim 1. Final Act.
3; see also Ans. 3, 7. Put simply, the Examiner finds that every structure in
Sokolowski’s dance shoe — other than split sole 104 (comprising toe
portion 104a and heel portion 104b) — constitutes the claimed “rigid plate
member,” which is a part of a “sole structure.” We agree with Appellant
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Application 13/623,701

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(see Appeal Br. 12–13), that the Examiner erroneously attributes
Sokolowski’s structure(s) associated with the upper to a component of the
claimed sole structure, i.e., the claimed rigid plate member.
During prosecution the PTO gives claims their “broadest reasonable
interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000). But this interpretation must be consistent with the
one that those skilled in the art would reach. In re Cortright, 165 F.3d 1353,
1358 (Fed. Cir. 1999).
Here, Appellant’s Specification describes, for example, that footwear
typically includes two primary elements: (1) an upper, and (2) a sole
structure. Spec. ¶ 2. The upper covers the foot, and securely positions the
foot with respect to the sole structure. Id.; see also id. ¶ 3 (“The upper forms
a void on the interior of the footwear for receiving the foot.”). The sole
structure is secured to a lower surface of the upper, and is positioned
between the foot and a contact surface. Id. ¶ 2. The sole structure typically
has a multi-part structure, such as a midsole and an outsole. Id. ¶ 4.
In our view, one of ordinary skill in the art would understand in light
of the Specification that an upper and a sole structure are distinct
components of a shoe. See also Sokolowski ¶¶ 3–4 (describing, consistent
with Appellant’s Specification, that shoes typically have an upper for
receiving the foot, and a multi-part sole for interfacing between the foot and
ground). Therefore, one of ordinary skill in the art would not have
reasonably considered Sokolowski’s upper 102, which is a breathable boot
for receiving the foot, as a part of rigid plate member, much less interpret the
combination of Sokolowski’s upper 102, cage 106, which surrounds upper
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Application 13/623,701

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102, and liners 130 and 140, which are placed inside upper 102, as the
claimed rigid plate member recited in claim 1.
Accordingly, we do not sustain the rejection of independent claim 1
and dependent claims 2–6, 9, and 12–17 under 35 U.S.C. § 103(a).
Independent Claims 21 and 41, and Dependent Claims 22–26, 28, 29,
32–37, and 41
Independent claims 21 and 41 recite language similar to the language
of claim 1, and the Examiner’s rejection of these claims suffers the same
deficiencies described with respect to claim 1. See Final Act. 8, 13.
Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 103(a) of independent claims 21 and 41, and dependent claims 22–26, 28,
29, and 32–37.
Dependent Claims 7 and 27
Claims 7 and 27 depend from independent claims 1 and 21,
respectively. The Examiner’s rejection of claims 7 and 27 under 35 U.S.C.
§ 103(a) does not remedy the deficiencies set for above with respect to the
rejection of independent claims 1 and 21 under 35 U.S.C. § 103(a).
Therefore, we do not sustain the rejection of claims 7 and 27 under 35
U.S.C. § 103(a).

Appeal 2019-004213
Application 13/623,701

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CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 9,
12–17,
21–26,
28, 29,
32–37, 41
103(a) Sokolowski,
Mueller, Le, Foxen
1–6, 9,
12–17,
21–26,
28, 29,
32–37, 41
7, 27 103(a) Sokolowski,
Mueller, Le, Foxen,
Healy
7, 27
Overall
Outcome
1–7, 9,
12–17,
21–29,
32–37, 41

REVERSED