NIKE, Inc.

Patent Trials and Appeals Board

Nov 24, 2020

2020002773 (P.T.A.B. Nov. 24, 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.
15/259,849 09/08/2016 John Hurd 201882-403239/160054US01 1056
126323 7590 11/24/2020
Honigman LLP/Nike
650 Trade Centre Way
Suite 200
Kalamazoo, MI 49002-0402
EXAMINER
SPATZ, ABBY M
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
11/24/2020 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
araymond@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 JOHN HURD and LEVI J. PATTON
____________

Appeal 2020-002773
Application 15/259,849
Technology Center 3700
____________

Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–23. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellant’s invention relates to shoes. Spec. ¶¶ 1–2. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Nike, Inc. as the Applicant and real
party in interest. Appeal Br. 2.
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1. A method of making an article of footwear having an
upper and a sole structure secured to the upper, the method
comprising:
forming a chamber for receiving a pressurized fluid by:
assembling a stacked arrangement of chamber components
including:
a first chamber barrier layer;
a second chamber barrier layer; and
a tensile member extending between the first chamber
barrier layer and the second chamber barrier layer, the
tensile member including a first tensile member layer, a
second tensile member layer, and a plurality of tethers
connecting the first tensile member layer to the second
tensile member layer, wherein the second tensile
member layer includes a first section and a second
section separate from the first section;
bonding the first chamber barrier layer to the second chamber
barrier layer to form peripheral portions of the chamber
and to define an interior void between the first chamber
barrier layer and the second chamber barrier layer; and
extending a portion of the second chamber barrier layer
toward the first tensile member layer between the first
section of the second tensile member layer and the second
section of the second tensile member layer, pressing the
portion of the second chamber barrier layer against the
first tensile member layer; and
joining the portion of the second chamber barrier layer to the
first tensile member layer between the first section of the
second tensile member layer and the second section of the
second tensile member layer;
bonding the first tensile member layer to the first chamber
barrier layer;
bonding the second tensile member layer to the second
chamber barrier layer;
inflating the chamber with a pressurized fluid;
incorporating the chamber into the sole structure; and
attaching the sole structure to the upper.
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Application 15/259,849
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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Dua US 2009/0288312 A1 Nov. 26, 2009
Chao US 2013/0263391 A1 Oct. 10, 2013
Patton US 2014/0053427 A1 Feb. 27, 2014
Hazenberg US 2015/0208759 A1 July 30, 2015
The following rejections are before us for review:
1. Claims 1, 2, and 8–23 are rejected under 35 U.S.C. § 103 as being
unpatentable over Patton and Chao.
2. Claims 1–7 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hazenberg and Dua.
OPINION
Unpatentability of Claims 1, 2, and 8–23
over Patton and Chao
Claim 1
The Examiner finds that Patton discloses the invention substantially as
claimed except for pressing a portion of the second chamber barrier layer
against the first tensile member layer and joining such layer to the first
tensile member layer, for which the Examiner relies on Chao. Final
Act. 3–4. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art at the time of the invention to modify
Patton to have a continuous tensile layer. Id. at 4. According to the
Examiner, a person of ordinary skill in the art would have done this to
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provide increased support to the chamber and maintain alignment between
sections of tethers. Id. at 4.
Appellant argues, among other things, that neither Patton nor Chao
discloses a lower barrier portion that extends toward, presses against, or
joins to the upper layer of its tensile member, as required by the claim.
Appeal Br. 11.
In response, the Examiner repeats the findings from the Final Action,
stating that Chao discloses tensile member 50, 60 within a fluid chamber and
that the tensile member has two separate sections. Ans. 4. The Examiner
maintains that Chao’s tensile member 61 extends continuously between two
sections. Id. The Examiner furnishes an annotated version of Figure 15D of
Chao to illustrate the point. Id. at 7.
The controversy between the Examiner and Appellant centers on the
following limitation in claim 1:
extending a portion of the second chamber barrier layer
toward the first tensile member layer between the first section
of the second tensile member layer and the second section of
the second tensile member layer, pressing the portion of the
second chamber barrier layer against the first tensile member
layer.
Claims App. Figures 2 and 3 of Appellant’s disclosure illustrates what is
claimed in the foregoing limitation. Figs. 2, 3. In Figure 2, indentations 275
and 280 separate sections of fluid chamber 240. Fig. 2. Indentations 275
and 280 coincide with elongate recesses 160, 185 and flex grooves 145, 150.
Id. This is further illustrated in greater detail in Figure 3, which illustrates
that gap 330 separates tensile member 255 into sections that coincide with
the aforementioned indentations, elongate recesses, and flex grooves.
Figs. 2, 3. Within gap 330, second chamber barrier layer 250, which
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otherwise underlies chamber 240, tensile member 255, tethers 270, and
second tensile layer 265, extends upward and contacts first tensile layer 260
at portion 335. Spec. ¶¶ 83–84. The Specification further explains that
layer 250 “may be joined” to layer 260 at portion 335. Id.
Portion 335 of second chamber barrier layer 250 that extends
toward first tensile member layer 260 may be joined to first
tensile member layer 260. That is, portion 335 of the bottom
barrier layer extends upward between the second tensile
member layer section 272 and third tensile member layer
section 273 of second tensile member layer 265 and joins to a
lower surface 340 of first tensile member layer 260.
Id. ¶ 84.
Having reviewed the Final Action and the Examiner’s Answer and the
passages and Figures of Chao cited therein, including the Examiner’s
annotated Figures, we agree with Appellant that no analogous structure
exists in the Examiner’s applied references, whether taken individually or in
combination. The structures that the Examiner points to in Figure 15D of
Chao are described by Chao as connecting members 63 formed from yarn.
See Chao ¶ 53, Fig. 15D. They do not constitute a chamber barrier layer that
extends as claimed. Id.
Thus, we determine that the Examiner’s findings of fact are not
supported by a preponderance of the evidence and, therefore, the Examiner’s
legal conclusion of unpatentability is in error. We do not sustain the
Examiner unpatentability rejection of claim 1.
Claims 2 and 8–23
Claims 2, 8–10, and 21 depend, directly or indirectly, from claim 1.
Claims App. Claim 11 is an independent method claim that is substantially
similar in scope to claim 1. Id. Claims 12–16 and 22 depend, directly or
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indirectly, from claim 11. Id. Claim 17 is an independent method claim that
has a limitation directed to joinder of layers that is substantially identical to
the limitation of claim 1 discussed hereinabove. Id. Claims 18–20 and 23
depend, directly or indirectly, from claim 17. Id. The Examiner’s rejection
of these claims suffers from the same infirmity that was identified above
with respect to claim 1. Thus, for essentially the same reason expressed
above in connection with claim 1, we do not sustain the rejection of claims 2
and 8–23.
Unpatentability of Claims 1–7
over Hazenberg and Dua
Claim 1
In this ground of rejection, the Examiner admits that Hazenberg fails
to teach pressing a portion of the second chamber barrier layer against the
first tensile member layer and joining the two layers, but, nevertheless, finds
that Dua discloses this limitation. Final Act. 15. The Examiner supplies an
annotated version of Figure 6D of Dua that purportedly supports such
finding. Id. at 20.
We have reviewed Figure 6D of Dua and the corresponding teaching
disclosure in Dua’s Specification. Dua ¶¶ 38–41. There is no evidence in
the record to support the Examiner’s findings regarding the Dua reference.
The structures that the Examiner points to as corresponding to the claimed
lower chamber barrier layer that extends toward the upper tensile layer are
mere connecting members 53 that extend between tensile layers 51 and 52.
See Dua ¶ 38, Fig. 6D; Final Act. 20.
We do not sustain the Examiner’s unpatentability rejection of claim 1
over Hazenberg and Dua.
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Claims 2–7
These claims depend, directly or indirectly, from claim 1. Claims
App. The Examiner’s rejection of these claims suffers from the same
infirmity that was identified above with respect to claim 1. Thus, for
essentially the same reason expressed above in connection with the rejection
of claim 1, we do not sustain the rejection of claims 2–7.
CONCLUSION
Claims
Rejected
§ References Affirmed Reversed
1, 2, 8-23 103 Patton, Chao 1, 2, 8-23
1-7 103 Hazenberg, Dua 1-7
Overall
Outcome
1-23
REVERSED