NIKE, Inc.

Patent Trials and Appeals Board

Jul 31, 2020

2020000737 (P.T.A.B. Jul. 31, 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.
15/345,892 11/08/2016 SCOTT E. TOUIDJINE-WILLIAMS 264679/150946US02 5775
78342 7590 07/31/2020
SHOOK, HARDY & BACON L.L.P.
(NIKE, INC.)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BLVD.
KANSAS CITY, MO 64108-2613
EXAMINER
SILBERMANN, JOANNE
ART UNIT PAPER NUMBER
3631
NOTIFICATION DATE DELIVERY MODE
07/31/2020 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):
IPDocket@shb.com
docket.shb@clarivate.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 SCOTT E. TOUIDJINE-WILLIAMS and PETER G. KRAMER
____________

Appeal 2020-000737
Application 15/345,892
Technology Center 3600
____________

Before MICHAEL L. HOELTER, LISA M. GUIJT, and LEE L. STEPINA,
Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 1–8, 15–18, and 20–23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION of
claims 1–4, 7, 8, and 21 under 35 U.S.C. § 102(a)(1), and of claims 5–8, 15–
18, 20, 22, and 23 under 35 U.S.C. § 103, pursuant to our authority under 37
C.F.R. § 41.50(b).

1 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. 3.
Appeal 2020-000737
Application 15/345,892
2
THE INVENTION
Appellant’s invention relates to “an athletic bib adapted to conform to
a wearer’s body surface and provide breathability and permeability
characteristics.” Spec. ¶ 2. Claims 1 and 15 are the independent claims on
appeal. Claim 1, reproduced below with paragraph spacing added, is
illustrative of the subject matter on appeal.
An athletic bib comprising:
a panel defined by a perimeter shape comprising:
an upper margin having a first length;
a lower margin having a second length less than the first
length, wherein the lower margin is parallel to the upper
margin;
a right side margin joining a first end of the upper margin
to a first end of the lower margin; and
a left side margin joining a second end of the upper
margin to a second end of the lower margin,
wherein the right side margin and the left side margin
each comprise a first portion extending away from a midline
bisecting the athletic bib into right and left halves and a second
portion of extending toward the midline,
wherein the first portion and the second portion of the
right side margin meet at a first apex region, and
wherein the first portion and the second portion of the
left side margin meet at a second apex region.

Appeal 2020-000737
Application 15/345,892
3
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Loewer US 6,256,788 B1 July 10, 2001
Collins US 2002/0053152 A1 May 9, 2002
Hirose US 2006/0147668 A1 July 6, 2006
Ishiguro2 WO 2009123205 A1 Oct. 8, 2009

The following rejections are before us for review:
I. Claims 1–4, 7, 8, and 21 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Ishiguro.
II. Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as
unpatentable over Ishiguro and Loewer.
III. Claims 22 and 23 stand rejected under 35 U.S.C. § 103 as
unpatentable over Ishiguro and Collins.
IV. Claims 15, 16, 18, and 20 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Ishiguro and Hirose.
V. Claim 17 stands rejected under 35 U.S.C. § 103 as
unpatentable over Ishiguro, Hirose, and Loewer.

2 We rely on the English language translation provided in the record.
Appeal 2020-000737
Application 15/345,892
4
OPINION
Rejection I
Regarding independent claim 1, the Examiner finds that Ishiguro
discloses an athletic bib, but does not disclose “the particular shape of the
bib,” as claimed. Final Act. 3 (citing, e.g., Fig. 1). The Examiner relies on
Ishiguro’s disclosure that the bib is “‘not particularly limited’” and may have
“different shape[s] . . . so as to accommodate different sizes and shapes of
wearers.” Id. at 3 (citing Ishiguro ¶¶ 22, 89–91, Fig. 17). The Examiner
reasons, inter alia, that it would have been obvious “to modify the size and
shape of the bib so that it appropriately fits the intended use (such as
different wearers),” as taught by Ishiguro, and also that it would have been
obvious “to utilize any shape which would reduce contact with the wearer or
which would be more comfortable for the wearer,” as taught by Ishiguro. Id.
Appellant argues that the Examiner has failed to state a prima facie
case of obviousness. Appellant submits that Ishiguro fails to disclose (i) a
lower margin having a length less than the length of an upper margin; and
(ii) left and right side margins having portions extending away from and
portions extending toward a midline bisecting the athletic bib; as claimed.
Appeal Br. 10. Appellant submits that
although Ishiguro broadly states, “[t]he shape of the number
card 1A is not particularly limited, and it is generally formed in
a rectangular shape, but may be formed in a circular shape or
an elliptical shape,” . . . Ishiguro fails to provide a teaching,
suggestion, or motivation to modify the number card to have
lower margin of less length than the upper margin and to have
left and right sides [sic] margins that each include first portions
that extend away from a midline of the athletic bib and second
portions that extend toward the midline as required in
independent claim 1.
Appeal 2020-000737
Application 15/345,892
5
Id.3
Appellant also argues that modifying Ishiguro’s number card to have
the claimed perimeter would render Ishiguro’s number card unsatisfactory
for its intended purpose because “there would potentially be an increased
likelihood that the arms of slender athletes or small children would contact
the right and left side margins causing chaffing” and because “the waist-
slimming illusion created by the constricted portion of the number card in
Ishiguro would be unsatisfactory.” Appeal Br. 16–17.
We agree with Appellant that the Examiner’s reliance on a general
reference to the use of any shape fails to provide the necessary rationale for
teaching, with or without modification, the number card of Ishiguro to have
the specific perimeter shape recited in claim 1. See In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (requiring an obviousness conclusion to be based
on explicit articulated reasoning with rational underpinning) cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).

3 Regarding Appellant’s argument that the Examiner’s reasoning lacks
rational underpinning because the Examiner’s reasoning is different from the
advantages stated in the Specification, or because the Examiner does not
explain why Ishiguro’s number card would have performed equally well as
the claimed invention, we note that there is no requirement that the
Examiner’s reasoning must yield the same advantages or result in a device
that performs in the same manner as the claimed invention. Appeal Br. 13–
15. See, e.g., Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed.
Cir. 2006) (“a given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to
combine”); In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972) (holding that it
is not necessary for the prior art to serve the same purpose as that disclosed
in the specification in order to support the conclusion that the claimed
subject matter would have been obvious).
Appeal 2020-000737
Application 15/345,892
6
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1, and claims 2–4, 7, 8, and 21 depending therefrom.
Rejections II and III
The Examiner’s reliance on Loewer for disclosing an adhesive for
attaching the bib to clothing, and on Collins for disclosing a repeating
pattern of slits, does not cure the deficiency in the Examiner’s reasoning
with respect to Ishiguro in the rejection of independent claim 1 supra. Final
Act. 3–4. Therefore, for essentially the same reasons as stated supra, we
also do not sustain the Examiner’s rejection of claims 5, 6, 22, and 23, which
depend from independent claim 1.
Rejection IV
Regarding independent claim 15, the Examiner appears to rely on the
same insufficient rationale as relied upon in the rejection of claim 1 supra to
result in the perimeter shape of the panel as recited in claim 15. Final Act.
4–5; see Appeal Br. (Claims App.) (claim 15: “. . . the panel is defined by a
perimeter shape . . . wherein the right side margin and the left side margin
each comprise a first portion extending away from a midline bisecting the
athletic bib and a second portion extending toward the midline”). The
Examiner’s reliance on Hirose for disclosing transport and carrier layers
does not cure the deficiency in the Examiner’s reasoning with respect to
Ishiguro in the rejection of independent claim 1 supra. Final Act. 5.
Therefore, for essentially the same reasons as stated supra, we also do not
sustain the Examiner’s rejection of independent claim 15, and claims 16, 18,
and 20, which depend from independent claim 15.

Appeal 2020-000737
Application 15/345,892
7
Rejection V
The Examiner’s reliance on Loewer for disclosing a releasable layer
does not cure the deficiency in the Examiner’s reasoning with respect to
Ishiguro in the rejection of independent claim 15 supra. Final Act 5.
Therefore, for essentially the same reasons as stated supra, we also do not
sustain the Examiner’s rejection of claim 17, which depends from
independent claim 15.

NEW GROUNDS OF REJECTION
Independent claim 1
We find that Ishiguro expressly discloses the perimeter shape of the
panels as required by independent claims 1 and 15.4

4 Notably, although the Specification explains that “by configuring the right
and left side margins 114 and 116 as described to form the apex region 142,
the surface area of the athletic bib 100 is increased while still maintaining
the overall tapering shape of the bib 100,” and also that “the tapering shape
of the bib 100 corresponds to the natural anatomical tapering of different
body areas on which the bib 100 overlies when worn,” claims 1 and 15 do
not specify that the first portions of the right and left side margins, which
extend away from the midline, must join the end of the upper margin or that
the second portions of the right and left side margins, which extend toward
the midline, must join the end of the lower margin. Spec. ¶¶ 7, 33; see also
id. ¶¶ 31, 32; Appeal Br. 7 (citing Spec. ¶ 31, Fig. 1 as disclosing the
claimed apex regions). Put another way, claims 1 and 15 do not require
distance 128 to have a length that is less than or greater than either of the
lengths of the upper or lower margins, but rather, the apex regions of claims
1 and 15 read on the apex regions formed by the first and second portions of
the left and right side margins as depicted in Figure 17 of Ishiguro.
However, Ishiguro does not describe the lower margin as having a length
less than the length of the upper margin, as required by claims 1 and 15, but
rather, depicts the upper and lower margins as having an approximately
equal length; thus, a limitation of claims 1 and 15 is missing from the
depiction of an athletic bib in Figure 17 of Ishiguro.
Appeal 2020-000737
Application 15/345,892
8
For a prior art reference to anticipate a claim, it must disclose all of
the limitations of the claim, “arranged or combined in the same way as in the
claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir.
2008). “A reference may be read for all that it teaches, including uses
beyond its primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir.
2012), citing KSR, 550 U.S. at 418-421.
Ishiguro discloses that
when using slim women or small children of the body, the arms
rubbed against the left and right end portions of the number
cards as an obstacle. . . . In response to such a problem, in the
eighth embodiment, the number card 1H is slimmed by the
constricted portion 8 to prevent the arm from rubbing against
the left and right ends of the number card 1H. . . . [A]nd it can
be shown as an inverted triangular shape, which is suitable for
female athletes.
Ishiguro ¶ 89 (emphasis added). Ishiguro also discloses that, with respect to
forming constricted portion (i.e., constricted portion 8), “it is possible to
apply chamfering to corners or the like which are sharpened by forming the
waist portion 8 so as to prevent accidental injuries.” Id. ¶ 86. In this respect
we understand chamfering to mean to cut off a corner.
Thus, Ishiguro teaches forming a number card as an inverted triangle
and cutting off the sharp corners of the triangle, so that the sharp corners do
not rub against the moving arms and legs of the athlete, resulting in a
number card having the claimed perimeter shape. Moreover, we are not
persuaded that chamfering the corners of Ishiguro’s inverted triangular
shaped number card would cause the number card to be unsatisfactory for its
intended purpose of displaying an athlete’s number. See Appeal Br. 16

Appeal 2020-000737
Application 15/345,892
9
(arguing that “[m]odifying the shape of the number card in Ishiguro to have
the shape of … the athletic bib of [independent] claim 1 would render …
Ishiguro unsatisfactory for its intended purpose.”). Rather, Ishiguro
discloses the benefits of chamfering the corners, namely, to prevent
accidental injuries (by chafing on a sharp point), and the inverted triangular
shape would still serve to present a waist-slimming illusion.
Accordingly, we enter a NEW GROUND OF REJECTION of
independent claim 1 under 35 U.S.C. § 102(a)(1) as anticipated by Ishiguro.
Independent claim 15
We apply our findings with respect to Ishiguro and the perimeter
shape recited in claim 1 to the perimeter shape recited in independent claim
15, supra. We also rely on the Examiner’s findings with respect to Hirose
and the Examiner’s reasoning with respect to modifying Ishiguro in view of
Hirose to result in the claimed subject matter, for example, a kit having
transport and carrier layers, relative to a panel, as applied to claim 15 by the
Examiner in Rejection IV of the Final Office Action. Final Act. 5 (finding
that Hirose’s information-indicating sheet 5 corresponds to the claimed
transport layer, Hirose’s non-adhesive release sheet 7 corresponds to the
claimed carrier layer, and Hirose’s adhesive layer 3 corresponds to a panel,
(citing Hirose, Fig. 1), wherein Hirose’s panel (or adhesive layer 3) is
releasably secured to the carrier layer (or Hirose’s non-adhesive release
sheet 7), and reasoning that it would have been obvious to use Hirose’s
construction with Ishiguro’s panel to provide structural integrity); see
Hirose, e.g., ¶ 27, Fig. 1. Notably, when using adhesive as a substitute
method for attaching Ishiguro’s number card to an athlete, in lieu of safety
pins, as disclosed in Ishiguro, it would be obvious to modify Ishiguro’s
Appeal 2020-000737
Application 15/345,892
10
number card to have a release sheet from which number card would be
peeled off when ready for use by the athlete, as taught in Hirose.
Accordingly, we enter a NEW GROUND OF REJECTION of claim
15 under 35 U.S.C. § 103 as unpatentable over Ishiguro and Hirose.
Dependent claim 2
Claim 2 depends from independent claim 1 and recites, in relevant
part, “wherein the first portion of the left and right side margins has a third
length, and wherein the second portion of the left and right side margins has
a fourth length, and wherein the third length is less than the fourth length.”
Appeal Br. (Claims App.). We apply our findings with respect to Ishiguro
and the perimeter shape recited in claim 1 supra. We further find that a
triangle having sides that are longer than the base of the triangle is known,
and that Ishiguro suggests selecting such a triangle to match the torso of a
female athlete, wherein the female athlete’s torso is longer than her chest
span. See Ishiguro ¶ 17 (“an inverted triangular shape . . . is suitable for
female athletes”); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007)(“A person of ordinary skill is also a person of ordinary creativity, not
an automaton”).
Accordingly, we enter a NEW GROUND OF REJECTION of claim 2
under 35 U.S.C. § 103 as unpatentable over Ishiguro.
Dependent claim 3
Claim 3 depends from independent claim 1 and recites, in relevant
part, “wherein the panel is formed from one of a knit material, a paper
material, a woven material, or a non-woven material.” Appeal Br. (Claims
App.) (emphasis added). We apply our findings with respect to Ishiguro and
the perimeter shape recited in claim 1 supra. In addition, Ishiguro discloses
Appeal 2020-000737
Application 15/345,892
11
the subject matter of claim 3, because Ishiguro discloses that “number card
1A is made up of paper material,” which is one of the materials required by
claim 3. See, e.g., Ishiguro ¶ 28 (emphasis added).
Accordingly, we enter a NEW GROUND OF REJECTION of claim 3
under 35 U.S.C. § 102(a)(1) as anticipated by Ishiguro.
Dependent claims 4, 16, and 21
Claim 4 depends from independent claim 1 and recites, in relevant
part, “wherein the panel comprises a plurality of perforations extending
through the thickness of the panel,” and claim 21 depends from claim 4 and
recites, in relevant part, “wherein the panel comprises a repeating pattern of
slits extending from an outer-facing surface through an inner-facing surface
of the panel. Appeal Br. (Claims App.). Similarly, claim 16 depends from
independent claim 15 and recites, in relevant part, “wherein the athletic bib
further comprises a repeating pattern of slits extending through a thickness
of the panel.” Id.
Notably, the Specification identifies “slits 410,” which are depicted in
Appellant’s Figure 6, reproduced below, as elongated or rectangular holes.

Appeal 2020-000737
Application 15/345,892
12
Appellant’s Figure 6 depicts an athletic bib having a pattern of slits 410
arranged in repeating sets of convex quadrilateral shapes, which form
diamond shapes. The Specification discloses that “slits may be formed by,
for example, laser cutting, water-jet cutting, ultrasonic cutting, die cutting,
and the like.” Spec. ¶ 53. Absent a special definition of the claim term
“slit” in the Specification, we construe the claim term “slit” to mean “a
straight, narrow cut, opening, or aperture,” which is an ordinary definition of
the claim term “slit” consistent with the Specification.5 Cf. Spec. ¶ 55
(disclosing that perforations may be formed via hole punching, but also by
“laser cutting, die cutting, water-jet cutting, ultrasonic cutting, and the like,”
which are the same processes disclosed for forming a slit, such that a
narrower definition of slit (i.e., cutting without the removal of material) is
not required by the Specification). In sum, we find that the claim term “slit”
reads on the elongated holes disclosed in Ishiguro.
We apply our findings with respect to Ishiguro and the perimeter
shape recited in claims 1 and 15 supra. In addition, Ishiguro discloses long
holes 4 (i.e., slits) extending through the thickness of number card (see, e.g.,
Ishiguro, Figs. 1, 2), which may have a repeating pattern, for example, “a
plurality of the long holes are arranged side by side . . . [along] the end edge
portion of the number card,” wherein the long holes “can be formed
relatively large because there is no display portion, and it is effective for
enhancing the effect of air permeability” (id. ¶ 26). To the extent that it is
not expressly disclosed in Ishiguro that Ishiguro’s inverted triangularly
shaped perimeter card with chamfered corners has long holes (or slits)

5 https://www.dictionary.com/browse/slit# (last visited July 21, 2020) (see
Exhibit A).
Appeal 2020-000737
Application 15/345,892
13
extending through the thickness of the card, we reason that it would have
been obvious to modify the inverted triangularly shaped perimeter card with
chamfered corners embodiment to have long holes extending through the
thickness of the number card and arranged in side-by-side, repeating pattern
along the edge of the sides of the triangle to enhance air permeability
without interfering with display indicia in the central portion of the inverted
triangularly shaped perimeter of the card.
Accordingly, we enter a NEW GROUND OF REJECTION of claims
4 and 21 under 35 U.S.C. § 103 as unpatentable over Ishiguro, and of claim
16 under 35 U.S.C. § 103 as unpatentable over Ishiguro and Hirose.
Dependent claims 5, 6, and 17
Claims 5 and 6 depend from independent claim 1 and recite, in
relevant part, “wherein an adhesive is selectively applied to an inner-facing
surface of the panel” and “wherein the adhesive comprises a releasable
adhesive,” respectively. Appeal Br. (Claims App.) (emphasis added).
We apply our findings with respect to Ishiguro and the perimeter
shape recited in claim 1 supra. In addition, we apply the Examiner’s
findings with respect to Loewer and also the Examiner’s reasoning as
applied to claim 5 by the Examiner in Rejection II of the Final Office
Action. Final Act. 3–4. In particular, the Examiner finds that “Loewer
teaches attaching a panel to clothing by releasable adhesive 34,” as claimed,
and the Examiner reasons that it would have been obvious to modify attach
Ishiguro’s bib to clothing with a releasable adhesive, as taught in Loewer,
rather than by using safety pins as taught in Ishiguro, “as a simple
substitution of one known element for another to obtain predictable results”
Final Act. 3–4 (citing Loewer 3:43–47, Fig. 1b; MPEP § 2143(II)B)
Appeal 2020-000737
Application 15/345,892
14
(emphasis added)). See, e.g., Loewer 3:37–42 (“[t]he pressure sensitive
adhesive 34 used to coat the back side of the bib 10 should be formulated to
have a low tack characteristic so that it is readily releasable from the
wearer’s person following use of the bib 10 without leaving adhesive residue
yet has sufficient adhesiveness to secure the lightweight disposable bib 10
during use”).
Regarding the selective application of adhesive to the inner facing of
the panel, as required by claim 6, we find that Loewer discloses applying
strips 44, 44' of adhesive coating to a panel (disposable bib 19). See, e.g.,
Loewer, Fig. 1c. We reason that it would have been obvious to one of
ordinary skill in the art, at the time the invention was made, to selectively
apply the adhesive between to an inn-facing surface of Ishiguro’s number
card, as taught by Loewer, to allow the number card to be secured to the
athlete’s clothing, while using less adhesive to lower manufacturing cost.
See Loewer 3:67–4:4 (disclosing that “[t]he disposition of the pressure
sensitive adhesive coating [in two longitudinal pressure sensitive adhesive
strips 44, 44'] . . . secur[es] both first side 12 and second side 14 and both
upper end 16 and lower end 18 to the wearer yet uses substantially less
adhesive and is therefore manufacturable at a lower cost”), Fig. 1c.
Similarly, claim 17 depends from independent claim 15 and recites, in
relevant part, “wherein the third surface of the panel is releasably secured to
the first surface of the carrier layer via a releasable adhesive that is
selectively applied to the third surface of the panel.” Appeal Br. (Claims
App.) (emphasis added). We apply our findings with respect to Ishiguro and
the perimeter shape recited in claim 15 supra, and rely on the Examiner’s
findings and reasoning relative to Hirose with respect to claim 15 as set forth
Appeal 2020-000737
Application 15/345,892
15
supra. In addition, we find that Loewer discloses the selective application of
a releasable adhesive between a carrier layer (i.e., peel off backing 38) and a
panel (disposable bib 19), as the adhesive coating is applied in strips 44, 44'.
Loewer, Fig. 1c. We reason that it would have been obvious to one of
ordinary skill in the art, at the time the invention was made, to selectively
apply the releasable adhesive between the interfacing panel and carrier layer
surfaces, as embodied by Ishiguro’s number card modified in view of
Hirose, to allow the number card to be ready for securing to an athlete’s
clothing upon removal of the carrier layer, while using less adhesive to
lower manufacturing cost. See Loewer 3:67–4:4.
Accordingly, we enter a NEW GROUND OF REJECTION of claims
5 and 6 under 35 U.S.C. § 103 as unpatentable over Ishiguro and Loewer,
and of claim 17 under 35 U.S.C. § 103 as unpatentable over Ishiguro,
Hirose, and Loewer.
Dependent claims 7 and 8
Claims 7 and 8 depend from independent claim 1 and recite, in
relevant part, “wherein visual indicia is printed on an outer-facing surface of
the panel” and “wherein the athletic bib is adapted to be affixed to an
apparel item configured for an upper torso of a wearer . . . , and wherein the
athletic bib is adapted to overlie a chest area . . . when the athletic bib is
affixed to the apparel item,” respectively. Appeal Br. (Claims App.). We
apply our findings with respect to Ishiguro and the perimeter shape recited in
claim 1 supra. In addition, Ishiguro discloses, for example, that the number
card has “printing on the display part 2” (Ishiguro ¶ 28) and is affixed by a
safety pin to an athlete’s clothes (id. ¶ 27), such as in the chest area (id. ¶
89).
Appeal 2020-000737
Application 15/345,892
16
Accordingly, we enter a NEW GROUND OF REJECTION of claims
7 and 8 under 35 U.S.C. § 102(a)(1) as anticipated by Ishiguro.
Dependent claims 18 and 20
Claims 18 and 20 depend from independent claim 15 and recite, in
relevant part, “wherein visual indicia are printed on the fourth surface of the
panel,” and “wherein the transport layer and the carrier layer have the same
perimeter shape as the panel,” respectively. Appeal Br. (Claims App.). We
apply our findings with respect to Ishiguro and the perimeter shape recited in
claim 15 supra, and rely on the Examiner’s findings and reasoning relative
to Hirose with respect to claim 15 as set forth supra. In addition, we find
that Ishiguro discloses printing visual indicia on the fourth surface of the
panel, for example, by disclosing that the number card has “printing on the
display part 2.” Ishiguro ¶ 28. Loewer discloses that the peel-off backing
(or carrier layer) has the same perimeter shape as the panel, such that it
would have been obvious to one of ordinary skill in the art, at the time the
invention was made, to match the perimeter shapes of Ishiguro’s number
card to Hirose’s transport and carrier layers, to ensure the entirety of the
adhesive remains covered until the number card is ready for application to
the athlete’s clothing. See, e.g., Loewer 3:20–42, Figs. 1a, 1b.
Accordingly, we enter a NEW GROUND OF REJECTION of claims
18 and 20 under 35 U.S.C. § 103 as unpatentable over Ishiguro, Hirose, and
Loewer.
Dependent claims 22 and 23
Claim 23 depends from claim 22, which depends from claim 21,
which depends from claim 4, which depends from independent claim 1.
Claims 22 and 23 recite, in relevant part, “wherein the repeating pattern of
Appeal 2020-000737
Application 15/345,892
17
slits extends over at least 50% of the surface of the panel,” and “wherein the
repeating pattern of slits are arranged to form repeating sets of convex
quadrilateral shapes,” respectively. Appeal Br. (Claims App.). We apply
our findings with respect to Ishiguro and the perimeter shape recited in claim
1 supra.
The Specification discloses that
[b]ecause the material used to form the bib 400 may lack a high
degree of flexibility or pliability, a repeating pattern of slits 410
may be formed such that the slits 410 extend through the
thickness of the athletic bib 400. A close-up view of the
exemplary pattern of slits 410 is illustrated in FIG. 6. In this
aspect, the pattern of slits 410 are formed along a repeating set
of convex quadrilateral shapes (e.g., diamond shapes). A
representative quadrilateral shape is indicated by the bolded
lines in FIG. 6 and is reference by the numeral 412.
Spec. ¶ 42. Figure 6 of the Specification is reproduced supra.
Ishiguro discloses the size and shape of the vent holes, as well as the
pattern of the vent holes are recognized in the prior art as contributing to the
pore ratio of the number card, and that the pore ratio is a variable known to
effect the stretchability, permeability, and readability of the number card.
See, e.g., Ishiguro ¶ 32 (“forming a large number of vent holes 3 [improves]
the stretchability of the number card”); id. ¶ 39 (disclosing that staggering
vent holes increases “the ratio of the total area of the vent holes 3 to the
surface area of the number card 1B,” or the “pore ratio”); Id. ¶ 40 (“as the
porosity increases, the ventilation performance improves and the area of
contact with the athlete decreases”).
Regarding claim 22, Ishiguro expressly discloses, with respect to
circular vent holes 3, that the vent holes can be “formed in [the] entire
surface [of the number card],” which is over 50% of the surface area of the
Appeal 2020-000737
Application 15/345,892
18
number card. Ishiguro ¶ 22. Ishiguro also depicts vent holes 3 as staggered,
slits (or elongated vent holes). Id. ¶ 38 (with reference to Figure 5(c),
“elongated hole-shaped vent holes 3 may be formed in a zigzag shape”); see
also id. ¶ 47 (“the shape of small-diameter ventilation hole 3 is not limited to
a circular shape, and it may be formed into a long hole, a rhombus shape, or
the like”). In view of these teachings, we reason that it would have been
obvious to one of ordinary skill in the art, at the time the invention was
made, to repeat a pattern of slits over at least 50% of the surface of the
panel,” as required by claim 22, because patterns of vent holes on athletic
bibs are known to cover more than 50% of the surface of the panel, and it is
known to shape vent holes as slits. Thus, selecting the claimed range and
pore shape is merely optimizing the pore ratio to impact the stretchability,
permeability, and readability of the athletic bib.
Similarly, regarding claim 23, we reason that it would have been
obvious to one of ordinary skill in the art, at the time the invention was
made, to optimize the shape and configuration of the claimed pattern (i.e.,
the pore ratio), because circular vent holes and slits are known to be used in
combination, in repeating patterns, to impact the stretchability, permeability,
and readability of the athletic bib, as discussed supra. In other words, the
prior art recognizes that the shape and pattern of vent holes affects the
stretchability, permeability, and readability of the athletic bib, such that the
claimed repeating sets of convex quadrilateral shapes would be discoverable
by routine experimentation.
Accordingly, we enter a NEW GROUND OF REJECTION of claims
22 and 23 under 35 U.S.C. § 103 as unpatentable over Ishiguro.
Appeal 2020-000737
Application 15/345,892
19
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s) Affirmed Reversed New Ground of
Rejection
1–4, 7, 8,
21
103 Ishiguro 1–4, 7, 8,
21
2, 4, 21–23
5, 6 103 Ishiguro,
Loewer
5, 6 5, 6
22, 23 103 Ishiguro,
Collins
22, 23
15, 16,
18, 20
103 Ishiguro,
Hirose
15, 16,
18, 20
15, 16
17 103 Ishiguro,
Hirose,
Loewer
17 17, 18, 20
1, 3–8,
15–18,
20–23
102(a)(1) Ishiguro 1, 3, 7, 8
Overall
Outcome
1–8, 15–
18, 20–
23
1–8, 15–18, 20–23
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
Appeal 2020-000737
Application 15/345,892
20
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
AFFIRMED; 37 C.F.R. 41.50(b)