NIKE, INC.Download PDFPatent Trials and Appeals BoardDec 8, 20212020006610 (P.T.A.B. Dec. 8, 2021) Copy Citation 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. 15/403,945 01/11/2017 Meggin B. Alex 279849/150901US02 2390 78342 7590 12/08/2021 Shook Hardy & Bacon LLP (NIKE, Inc.) 2555 Grand Boulevard Kansas City, MO 64108 EXAMINER MCKINNON, LASHAWNDA T ART UNIT PAPER NUMBER 1789 NOTIFICATION DATE DELIVERY MODE 12/08/2021 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 nike_docketing@cardinal-ip.com shbdocketing@shb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MEGGIN B. ALEX and MARTIN WRAGG Appeal 2020-006610 Application 15/403,945 Technology Center 1700 Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and N. WHITNEY WILSON, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3–6, 8–13, 15, and 18–20. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as NIKE, Inc. Appeal Br. 1. Appeal 2020-006610 Application 15/403,945 2 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter (emphasis added to highlight the key limitation in dispute): 1. A woven element, the woven element comprising: a first plurality of warp threads extending in a first direction, the first plurality of warp threads being integrated into a first surface of a first layer on a front side of the woven element; a second plurality of warp threads extending in the first direction, the second plurality of warp threads being integrated into a second surface of a second layer on a back side of the woven element; a first weft thread extending in a second direction, the first weft thread having a first denier, wherein a first portion of the first weft thread is positioned in front of at least two consecutive warp threads of the first plurality of warp threads to form at least a portion of a graphic image on the first surface of the first layer on the front side of the woven element, and wherein a second portion of the first weft thread is positioned between the first plurality of warp threads and the second plurality of warp threads; and a second weft thread, the second weft thread having a second denier greater than the first denier of the first weft thread, wherein the second weft thread comprises one of a thermopolymer or a thermoplastic polymer material with a melting point lower than a melting point of the first plurality of warp threads, the second plurality of warp threads, and the first weft thread, wherein a first portion of the second weft thread is positioned behind at least two consecutive warp threads of the second plurality of warp threads to form at least a portion of the second surface of the second layer on the back side of the woven element. Independent claim 9 recites a woven textile element similar to that of claim 1, but rather than recite that the second weft is behind two consecutive warp threads, claim 9 recites that a second thermoreactive weft thread has an Appeal 2020-006610 Application 15/403,945 3 exposed portion on the back side of “greater than 50% of a length of the second thermoreactive weft thread” (Appeal Br. 17, Claims App.). Independent claim 18 recites an article comprising a woven element similar to that of claim 9 in combination with a base fabric (Appeal Br. 19-20, Claims App). REJECTION Claims 1, 3–6, 8–13, 15, and 18–20 are rejected under 35 U.S.C. § 103 as being unpatentable over Cross et al. (US 2013/0186506 A1; July 25, 2013). OPINION Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions as set forth in the Appeal Brief, we determine that Appellant has not identified reversible error in the Examiner’s rejection (see generally Ans.). In re Jung, 637 F.3d 1356, 1365– 66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant(s) to identify the alleged error in the Examiner’s rejection). We sustain the rejection for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following primarily for emphasis. While Appellant discusses the different wording of claim 1 (that is, weft being under 2 warps) versus claims 9 and 18 (that is, over 50% of weft on back), Appellant de facto argues all the claims as a group, and does not argue any of the dependent claims (Appeal Br. generally). Thus, we select claim 1 as representative, while also addressing the specific language of claims 9 and 18. Appeal 2020-006610 Application 15/403,945 4 The Supreme Court has established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). The sole issue in dispute is whether one of ordinary skill in the art would have used “a first portion of the second weft thread [ ] positioned behind at least two consecutive warp threads” (claim 1) or “wherein the exposed portion [of the second weft thread] is exposed on the back surface and comprises greater than 50% of a length of the second thermoreactive weft thread” (claims 9 and 18) in the woven product of Cross. There is no dispute that Cross teaches or suggests all the limitations of the independent claims except for the above noted language regarding the specific weaving configuration. The Examiner relies upon Cross to further establish that weaving of the weft thread (and the concomitant weave pattern) is a result effective variable (e.g., Ans. 15, 18; Final Act. 10). Appellant contends that the teachings of Cross (1) do not “rise to the level of teaching or suggesting the specific weaving configuration recited” in each independent claim (Appeal Br. 11) and (2) that configuring the weaving pattern to have a greater percentage of the thermoreactive weft yarns on the second surface solves various problems discussed in the Specification such that it is improper for the Examiner to rely upon obviousness based on routine experimentation (Appeal Br. 12, 13). Appeal 2020-006610 Application 15/403,945 5 These arguments are not persuasive of reversible error in the Examiner’s obviousness determination for reasons explained by the Examiner in the Answer (Ans. 13–20). Appellant’s arguments do not take into account the teachings of Cross as a whole and the inferences one of ordinary skill in the art would have made therefrom. The law is replete with cases in which the difference between the claimed invention and the prior art is the claimed range or other variable within the claims. These cases have also consistently held that the Appellant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. See, e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.”); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The burden rests with Appellant to establish (1) that the alleged unexpected results are, in fact, unexpected, (2) that the comparisons are to the disclosure of closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Moreover, it is well settled that it would have been obvious for an artisan with ordinary skill to develop workable or even optimum ranges for result-effective parameters. In re Woodruff, 919 F.2d at 1577; In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955). One of ordinary skill in the art would have readily inferred from the overall teachings of the applied prior art that a weave pattern of the Appeal 2020-006610 Application 15/403,945 6 thermoreactive weft yarn is a result effective variable and that having more of the fusible thermoreactive weft yarn on one surface may be useful in a range such as that recited in claims 9 and 18 (that is, more than 50%) or in the specific weave pattern of claim 1 (weft under two warps which de facto results in more than 50% of the thermoreactive weft yarn length on one surface) in order to secure it to another layer. Appellant does not dispute the Examiner’s finding that Cross teaches using the woven fabric in articles that would include a base fabric layer (e.g., Final 7). Furthermore, “[a] recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). As pointed out by the Examiner, Cross explicitly teaches that the placement of the thermoreactive weft yarns is a result effective variable (Ans. 15) (e.g., Cross ¶¶ 121, 47, 51, 87–88).2 Appellant does not persuasively dispute the Examiner’s finding that one of ordinary skill in the art would have readily inferred from Cross that the weave pattern would have been a result effective variable, as it is a natural consequence of determining workable weft placement and/or optimizing the placement of the thermoreactive “fusable” (sic, fusible) weft yarns of Cross (Cross ¶ 47). Indeed, Appellant does not directly address the Examiner’s finding that weft yarn placement/weave pattern is a result effective variable (Appeal Br. generally). One of ordinary skill, using no more than ordinary creativity, would have placed more of the fusible weft yarn on the back side to provide more fusible area and better bonding to any 2 Cross also contemplates removal of warp threads that are not interwoven with weft threads (Cross, ¶ 122). Appeal 2020-006610 Application 15/403,945 7 future substrate (e.g., Ans. 19). One of ordinary skill would have readily appreciated that more surface area of the fusible weft yarns by weaving under two warps or otherwise increasing the surface area for bonding (e.g., larger diameter fusible weft yarn than the diameter of the non-fusible warp yarn). Accordingly, a preponderance of the evidence supports the Examiner’s obviousness determination of the recited weave pattern of the second weft thread under two warps as recited in claim 1 and the range of “greater than 50%” of a length of the second weft thread on the back side as recited claims 9 and 18 based on the overall teachings of Cross and the reasonable inferences one of ordinary skill would have made therefrom. Having determined that the Examiner has established a prima facie case of obviousness, the issue becomes whether Appellant has established any criticality to the claimed weave pattern as recited in claim 1 or claim 9 or claim 18. Appellant, however, does not rely upon sufficient objective evidence of criticality or unexpected results from the claimed weave pattern(s). As pointed out by the Examiner, Cross has the same benefit as discussed in the Specification of providing bonding within the woven structure (Ans. 19; Spec. ¶ 151; Appeal Br. 12). The mere statement that a woven element “in accordance with the described embodiments” had more breathability and less weight is insufficient to establish criticality absent further objective evidence (Spec. ¶156; Appeal Br. 12; Ans. 19–20). Likewise, the mere statement that “present embodiments may . . . [have] reduc[ed] . . . wash puckering” is insufficient to establish criticality absent further objective evidence (Spec. ¶157; Appeal Br. 12–13). For example, Appellant has not shown that having 51% of the weft yarn on the second Appeal 2020-006610 Application 15/403,945 8 surface provides any surprising or critical results versus 50%. Furthermore, claims 1, 9, and 18 are open-ended to many other materials, layers, and/or weave patterns such that Appellant has not met the burden of showing and/or explaining how the evidence and statements relied upon are commensurate in scope with the claim. In any event, as discussed above, one of ordinary skill in the art would have reasonably expected that having more of the thermoreactive fusible weft threads on the backside would provide better bonding from the express teachings of Cross. In light of these circumstances, we affirm the Examiner’s § 103 rejection of all the claims on appeal. CONCLUSION The Examiner’s rejection is AFFIRMED. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–6, 8–13, 15, 18–20 103 Cross 1, 3–6, 8–13, 15, 18–20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2013). AFFIRMED Copy with citationCopy as parenthetical citation