Scott R. Berggren et al.

Patent Trials and Appeals Board

Jul 18, 2019

14143364 - (D) (P.T.A.B. Jul. 18, 2019)

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.
14/143,364 12/30/2013 Scott R. Berggren NIKE1347CIP/09-1068US69 4170
113338 7590 07/18/2019
Quinn IP Law/NIKE, Inc.
21500 Haggerty Road
Ste 300
Northville, MI 48167
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
07/18/2019 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 R. BERGGREN, ALLISON C. HAMMOND,
VINCENT F. WHITE, SCOTT W. JOHNSON,
ELEAZAR C. CHAVEZ, TAL COHEN, and
GEOFFREY C. RAYNAK
____________________

Appeal 2019-000577
Application 14/143,364
Technology Center 3700
____________________

Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Nike (“Appellant”)1 appeals under 35 U.S.C. § 134(a) from the
Examiner’s final decision rejecting claims 1, 3–8, and
10–12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM, designating our affirmance A NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).

1 Nike, Inc. is the Applicant and is identified as the real party in interest. Br.
2.
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BACKGROUND
Appellant’s invention relates to a sport ball having seam reinforcing
strips. Spec. ¶ 7. Claim 1, reproduced below, is illustrative of the claimed
subject matter, with certain limitations highlighted with italics:
1. A sport ball comprising:
exactly four layers including:
a first casing layer having a plurality of panels welded to
one another that together form an external exposed surface of the
sport ball;
wherein adjacent ones of the plurality of panels abut and
are welded to one another without stitching at one of a plurality
of seams;
wherein each of the plurality of seams includes:
a first one of the plurality of panels having a first internal
surface and a first edge, wherein the first edge has a projection
extending outwardly from the first edge;
a second one of the plurality of panels having a second
internal surface and a second edge abutting the projection at an
interface; and
a second reinforcing strip layer affixed to the first internal
surface with a first thermal bond, and to the second internal
surface with a second thermal bond;
wherein the second reinforcing strip layer extends across
the projection at the interface and joins the first one of the
plurality of panels to the second one of the plurality of panels;
wherein the second reinforcing strip layer forms an
intersecting reinforcement structure shaped as a polygonal grid
including a plurality of polygons joined to one another;
a third bladder layer disposed within the first casing layer
and configured to retain a pressurized gas; and
a fourth intermediate layer disposed between the first
casing layer and the third bladder layer;
wherein the fourth intermediate layer contacts the second
reinforcing strip layer and the third bladder layer;
wherein the second reinforcing strip layer is disposed
between and contacts the first casing layer and the fourth
intermediate layer at the at least one of the plurality of seams.
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REJECTION
Claim 1, 3–8, and 10–12 stand rejected under 35 U.S.C. § 103 as
unpatentable over Shishido (US 4,856,781, iss. Aug. 15, 1989) and Marc
(US 2012/0172160 A1, pub. July 5, 2012). Final Act. 2.

ANALYSIS
Claims 1, 4–8, and 10–12
Appellant makes arguments in support of the patentability of claims 1,
4–8, and 10–12 as a group. See Br. 8–16. We select claim 1 as
representative, and claims 4–8 and 10–12 stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).
Regarding claim 1, the Examiner considers that the limitation “a
plurality of panels welded to one another” is a product-by-process limitation
that is met by Shishido because “Shishido teaches using hot melt adhesive
(25) in the seam for joining the two panels and can be treated as welding.”
Final Act. 3. The Examiner further considers the limitation “welded to one
another without stitching” to be a negative limitation that does not add any
structure that defines over the references. Id. The Examiner finds that
Shishido discloses many of the limitations of claim 1, including a plurality
of panels with a first panel having a projection, and relies on Marc as
disclosing an intersecting reinforcement structure formed as a polygonal
grid, and four layers, concluding that it would have been obvious to modify
Shishido based on the teachings of Marc for various reasons. Id. at 4–5.
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Exactly Four Layers
Appellant argues that Shishido requires “at least five (and preferably
six) layers” whereas Marc “is limited to three layers.” Br. 13–14.
According to Appellant, there is no evidence that “the combination of
Shishido and Marc teaches exactly four layers.” Br. 14. Appellant asserts
that the Examiner cannot eliminate layers from Shishido because doing so
would require a redesign and render Shishido “inoperable for its intended
purpose,” and because the Examiner has not provided a reason for doing so.
Id. Appellant notes that the transitional term “comprising” in the preamble
is not a proper reason for asserting that Shishido suggests exactly four
layers. Id.
The Examiner responds that “the combination of Shishido and Marc
teaches exactly four layers as required by the claim,” because Marc discloses
three layers and an optional fourth intermediate layer. Ans. 5 (citing Marc
¶ 30).
Appellant’s arguments are not persuasive. Initially, we note that the
Examiner has, in fact, stated reasons for modifying Shishido to add the
recited fourth intermediate layer based on the teachings of Marc. See Final
Act. 5. We also note that Appellant has not addressed the reasons stated by
the Examiner for the modification. See Br. 13–14. In support of the
contention that Shishido requires more than four layers, Appellant relies on
the Abstract, Figures 8 and 9, and column 8, lines 21–26 of Shishido. Br.
14. Notwithstanding that the five (5) layers of Figures 8 and 9 of Shishido
only depict one embodiment, Shishido discloses that one of the layers,
namely, thin layer 11 can be eliminated. Shishido 8:27–29 (“In order to
make the ball lighter, leather pieces 12 can be directly adhered to the fabric
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layer 2 using an adhesive without providing a rubber-based thin layer.”).
Appellant does not point to any portion of Shishido that requires 5 or more
layers. Indeed, by removing one of the layers in Figures 8 and 9 of Shishido
“to make the ball lighter,” Shishido suggests a ball having exactly four
layers, and as such, Appellant’s arguments that Shishido would require a
redesign or be inoperable are not persuasive.
Furthermore, Marc discloses that its sports ball 10 comprises “an
inflatable bladder 20,” “a reinforced cover 30,” and “[o]ne or more optional
intermediate layers (not shown) [residing] . . . between the reinforced cover
30 [(of blanks 35)] and bladder 20 as is known to those skilled in the art.”
Marc ¶ 30 (emphasis omitted). Thus, Marc discloses a first casing layer 35,
a second reinforcing layer 65, a third bladder layer 20, and a fourth
intermediate layer between the cover 30 and the bladder 20. A
preponderance of the evidence supports the Examiner’s findings that “the
combination of Shishido and Marc teaches exactly four layers as required by
the claim.” Final Act. 5. Given that Shishido suggests a four layer ball,
Appellant does not explain why it is not within the skill of an artisan to
employ Marc’s four-layered ball design in the proposed combination.
Welded Panels
Appellant argues that a skilled artisan would understand that a weld is
a structural limitation that must be given patentable weight. Br. 16.
Appellant further argues that the references do not disclose “panels that are
welded to one another to form the external exposed surface of the sport ball,
as required by all of Appellant’s claims.” Id.
In the Answer, the Examiner responds that Marc discloses “heat
bonding” to secure materials together. Ans. 4 (citing Marc ¶ 32) (emphasis
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omitted). According to the Examiner, it would have been obvious for one of
ordinary skill in art to use Marc’s “heat bond or weld process for joining.”
Ans. 5.
The structure implied by process steps should be considered when
assessing patentability of product-by-process claims over the prior art,
especially where the product can only be defined by the process steps by
which the product is made, or where the manufacturing process steps would
be expected to impart distinctive structural characteristics to the final
product. See, e.g., In re Garnero, 412 F.2d 276, 279 (CCPA 1969) (noting
that terms such as “welded,” “intermixed,” “ground in place,” “press fitted,”
and “etched” are capable of construction as structural limitations).
Here, Appellant’s Specification explicitly defines the term “weld” as
“the thermal bond, link, or structure that joins two elements through a
process that involves a softening or melting of a polymer material within at
least one of the elements such that the materials of the elements are secured
to each other when cooled.” Spec. ¶ 67 (emphasis added). Thus, the
broadest reasonable interpretation of adjacent panels “welded to one
another” consistent with the Specification requires, structurally, that the
materials of the panels are secured to each other when cooled.
We agree with Appellant that “welded to one another” includes a
structural limitation, and the Examiner has not established that Shishido’s
hot melt adhesive secures the materials of the panels to each other under the
broadest reasonable interpretation consistent with the Specification.
However, the Examiner finds that Marc’s panels are welded. See Ans. 4–5.
Specifically, Marc discloses that “free edges 48 of the cover panel blank are
heat bonded together to form a hemispherical cover portion 50.” Marc ¶ 44
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(emphasis omitted); Fig. 5. Marc discloses that heat bonding and stitching
are known alternatives for joining adjacent cover panels. See Marc ¶ 3.
Appellant does not argue that Marc’s heat bonding fails to secure the
material of its panels together in a manner consistent with the structure
derived from a weld. Appellant also has not provided evidence that, or a
persuasive explanation regarding why, the structural result of their welding
process would be unpredictable. We are not persuaded that the Examiner’s
findings or reasoning contain error.
Without Stitching and Intended Purpose
Appellant argues that the limitation “without stitching” is a proper
limitation that must be given patentable weight. Br. 15. According to
Appellant, Shishido “explicitly requires” panels that are sewn together and,
therefore, Shishido teaches away from a ball that does not use stitching, or
would be inoperable for its intended purpose without stitching. Id.
Although we agree that negative limitations must be given weight, we
do not agree that the combined teachings of Shishido and Marc do not teach
“without stitching.” Marc defines heat bonding as “a securing technique
between two elements” that “does not generally involve the use of stitching
or adhesives.” Marc ¶ 32; cf. Spec. ¶ 67. Similar to Appellant, Marc
discloses that heat bonding (e.g., welding) would only use stitching to
supplement heat bonding. Id. We determine that the Examiner properly
relied on this disclosure of Marc to establish that sewing and heat bonding
are known alternative methods of joining panels. See Ans. 5. Further, we
discern no unpredictable result of substituting these known alternatives.
Because the heat bonding of Marc is being substituted for stitching, a
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preponderance of the evidence supports the Examiner’s determination that
the combination of Shishido and Marc teaches joining without stitching.
Regarding teaching away, “[t]he prior art’s mere disclosure of more
than one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed . . . .” In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). Because Shishido does not “criticize, discredit,
or otherwise discourage” heat bonding or welding, Shishido does not teach
away from the Examiner’s proposed combination with Marc. In addition,
although Shishido prefers sewing, an object of Shishido is “to provide a ball
having superior sphericity, dimensional stability and durability as well as
having a soft feeling.” Shishido 2:67–3:2.
Further, given that Marc’s heat bonding is a known alternative to
stitching, and results in a ball that is “generally durable” (Marc ¶ 34), “is a
perfect sphere” (increased sphericity), and “allow[s] for deformation” while
enabling the ball to “rebound to its original shape” (Marc ¶ 68), we are not
persuaded that the Examiner’s proposed combination would render
Shishido’s ball inoperable for its intended purpose (see Br. 15).
Conclusion
For the reasons set forth above, we sustain the Examiner’s rejection of
claim 1 as unpatentable over Shishido and Marc. Claims 4–8 and 10–12 fall
with claim 1. Because our reasoning provides a more detailed explanation
of, and perhaps expands upon, the determination that stitching and welding
are known alternatives yielding predictable results, we designate our
affirmance a NEW GROUND of rejection pursuant to 37 C.F.R. § 41.50(b).

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Claim 3
Claim 3 recites the fourth intermediate layer having an elasticity that
is less than an elasticity of the first casing layer. Appellant argues that the
Examiner does not provide evidence that Shishido’s fabric intermediate
layer 2 has an elasticity less than that of a rubber cover layer. Br. 17.
Appellant’s argument does not address the rejection articulated by the
Examiner and is, therefore, not persuasive. The Examiner contends that “it
would have been obvious to use any suitable desired elastic material of
choice,” and that a skilled artisan “would have suggested using any known
material for [Shishido’s] fourth layer.” Final Act. 5–6.
Appellant’s Specification discloses that “[t]he elasticity of
intermediate layer 130 may be less than the elasticity of casing 120,” such
that “intermediate layer 130 may resist or limit stretch of ball 110 upon
inflation of bladder 140[,] . . . may maintain the shape (for example
sphericity)[, and] . . . may restrict the distortion of ball 110.” Spec.
¶ 113. Shishido discloses maximizing the elongation of fabric layer 2 to
keep the ball “at a prescribed size” and to “maintain the sphericity.”
Shishido 8:4–16. Thus, Shishido, similar to Appellant, recognizes that
material properties affect ball shape and dimensional stability. Given that an
object of Shishido “is to provide a ball having superior sphericity,
dimensional stability and durability” (Shishido 2:67–3:2), the Examiner has
a sound basis to find that one of ordinary skill in the art would select the
appropriate materials to attain this object. Appellant does not apprise us of
Examiner error.
Accordingly, we sustain the rejection of claim 3. Because the
reasoning provides a more detailed explanation of, and perhaps expands
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upon, the determination that it would have been obvious to select a known
material, we designate our affirmance a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).

DECISION
We AFFIRM the rejection of claims 1, 3–8, and 10–12 under 35
U.S.C. § 103(a) as unpatentable over Shishido and Marc, and we designate
our affirmance a NEW GROUND of rejection.

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the
appellant[(s)], 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:
(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. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant[(s)] may again appeal to the Board pursuant to this
subpart.
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(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the MANUAL OF PATENT EXAMINING PROCEDURE § 1214.01 01 (9th
Ed., Rev. 08.2017, Jan. 2018).
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).

AFFIRMED; 37 C.F.R. § 41.50(b)