Scott C. Holt

Patent Trials and Appeals Board

Jan 30, 2020

14451468 - (D) (P.T.A.B. Jan. 30, 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.
14/451,468 08/05/2014 Scott C. Holt NIKE1110PUS/130513US01 7679
113338 7590 01/30/2020
Quinn IP Law/NIKE, Inc.
21500 Haggerty Road
Ste 300
Northville, MI 48167
EXAMINER
LYNCH, MEGAN E
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
01/30/2020 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):
USDocketing@quinniplaw.com
adomagala@quinniplaw.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 C. HOLT
Appeal 2019-000267
Application 14/451,468
Technology Center 3700
Before JOHN C. KERINS, CHARLES N. GREENHUT, and
MICHAEL L. WOODS, Administrative Patent Judges.
GREENHUT, 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 1–4, 6, 8–10, 12–14, 16, 17, and 21–26.
See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word 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.
3.
Appeal 2019-000267
Application 14/451,468
2
CLAIMED SUBJECT MATTER
The claims are directed to a sole structure for an article of footwear
with spaced recesses. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A sole structure for an article of footwear comprising:
a midsole that has a first side with a first surface and a
second side with a second surface;
wherein:
the second side is opposite from the first side;
wherein the midsole has a heel portion, a midfoot portion,
and a forefoot portion, the forefoot portion extending from a
foremost extent of the midsole to the midfoot portion;
the first side has a plurality of recesses in at least the
forefoot portion and the midfoot portion;
each of the recesses extends toward the second side
without extending to the second surface;
each of the recesses is configured so that a thickness of the
midsole between the second side and a deepest extent of each of
the recesses is substantially uniform in dimension;
the midsole is a unitary foam material that has a first
density in a first portion along the first surface and the second
surface, and a second density in a second portion inward of the
first portion; and
the second density is less than the first density.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Dean US 2011/0232135 A1 Sept. 29, 2011
Lin US 2012/0151793 A1 June 21, 2012
Sullivan US 2012/0180336 A1 July 19, 2012

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REJECTIONS
Claim 26 is rejected under 35 U.S.C. § 112(b) as being indefinite.
Final Act. 2.
Claims 1–4, 6, 8–10, 12, 21, 23, and 24 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Sullivan and Dean. Final Act. 3.
Claims 13, 14, 16, 17, 22, 25, and 26 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Sullivan and Lin. Final Act. 9.
OPINION
Indefiniteness
Claim 26 is rejected as indefinite because, in the Examiner’s view,
claim 26 should recite “the remainder of the midsole” for concordance with
claim 13, as opposed to simply “the remainder.” Ans. 2. However, “the
failure to provide explicit antecedent basis for terms does not always render
a claim indefinite. If the scope of a claim would be reasonably ascertainable
by those skilled in the art, then the claim is not indefinite.” Manual of Patent
Examining Procedure (MPEP) § 2173.05(e) (9th ed., Rev. 08.2017,
Jan. 2018). Although references to a portion of a thing may inherently
implicate the presence of “a remainder,” here, the only portion ever
referenced in any of claims 26, 25, or 13 in conjunction with a “remainder”
is the “outer surface” of the midsole. The Examiner acknowledges “the
remainder” was intended to refer to “the remainder of the midsole,” the
portion that is not the midsole’s outer surface. The Examiner has not
apprised us of any other possible portion of the claimed structure to which
the recited phrase, “the remainder” could reasonably refer. Absent any such
ambiguity or lack of clarity there is no indefiniteness for failing to reproduce
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Application 14/451,468
4
the exact terminology of a previously recited claim element. MPEP
§ 2173.05(e). Accordingly, we do not sustain the indefiniteness rejection
Obviousness
Both obviousness rejections are premised on construing similar
language, “substantially uniform” in claim 1, and “substantially unvarying”
in claim 13, as either covering the spacing between the bottom of the
recesses and the underside of the midsole depicted in Sullivan’s Figure 12,
or by being suggested by paragraph 8 of Sullivan. Final Act. 4–5, 9–11.
When a relative term, such as “substantially,” is combined with terms
of degree such as “uniform” or “unvarying,” in a claim, it must be
determined whether the specification provides some standard for one of
ordinary skill in the art to understand what is claimed when the claim is read
in light of the specification. MPEP 2173.05(b). “[T]he PTO must. . .tak[e]
into account any definitions presented in the specification.” In re Am. Acad.
of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) quoting In re Bass,
314 F.3d 575, 577 (Fed. Cir. 2002). Appellant’s Specification provides, “[a]s
used herein, substantially uniform means that the variation in the thickness
56 is not more than the dimensional tolerance that would be permitted in a
production midsole 10.” Para. 40. The Examiner states:
After a full review of Appellant’s specification there is no
further explanation as to what parameters are attributed to a
“dimensional tolerance”, therefore the recitation of a
“dimensional tolerance” does not lend any further specificity (i.e.
metes and bounds) to the claimed limitation of a “substantially
uniform/unvarying” thickness.
Ans. 6.
Notably, the Examiner has not rejected the claim under § 112(b) for
indefiniteness associated with the “substantially uniform/unvarying” terms
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Application 14/451,468
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in question. Thus, the only issues squarely before us are whether Sullivan
discloses (in Figure 12) or suggests (in paragraph 8) uniformity within
production dimensional tolerances, and if not, whether the Examiner has
articulated sufficient reasons for modifying Sullivan to arrive at subject
matter including this.
Clearly, Figure 12 of Sullivan does not disclose uniformity within
production dimensional tolerances because undulations are clearly visible
and are never described by Sullivan as, for example, greatly exaggerated for
purposes of illustration. The most relevant disclosure of cited paragraph 8
states, “[v]oids defined in the metatarsus and calcaneus portions of the sole
body may have a depth of between about 45% and 90% a thickness of the
sole body.” This may suggest variation of the thickness in question but does
not suggest making the thickness uniform or unvarying over each of the
recesses in the forefoot and midfoot regions as required by claims 1 and 13,
respectively. The Examiner reasons that it would have been obvious to
provide such uniformity “in order to provide a midsole having a thickness
which delivers the desired optimum support and flexibility to the user’s
foot.” Final Act. 5. However, the Examiner has provided neither evidence
nor reasoning supported by rational underpinnings to demonstrate why
uniformity of thickness under the recesses, specifically, facilitates achieving
this goal. Our reviewing court has stated that “rejections 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.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). As the Examiner has not established obviousness of
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Application 14/451,468
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the subject matter claimed, we do not sustain the Examiner’s obviousness
rejections.
CONCLUSION
The Examiner’s rejections are REVERSED.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
26 112(b) Indefiniteness 26
1–4, 6, 8–
10, 12, 21,
23, 24
103 Sullivan, Dean 1–4, 6, 8–
10, 12, 21,
23, 24
13, 14, 16,
17, 22, 25,
26
103 Sullivan, Lin 13, 14, 16,
17, 22, 25,
26
Overall
Outcome
1–4, 6, 8–
10, 12–14,
16, 17, 21–
26

REVERSED