Ex Parte Jarvis

Patent Trial and Appeal Board

Mar 13, 2017

12433097 (P.T.A.B. Mar. 13, 2017)

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.
12/433,097 04/30/2009 Kelly B. Jarvis 005127.01239/08-1392 8402
115726 7590 03/15/2017
BANNER & WITCOFF, LTD
& attorneys for client 005127
1100 13th STREET NW
SUITE 1200
WASHINGTON, DC 20005
EXAMINER
TEFERA, HIWOT E
ART UNIT PAPER NUMBER
3637
NOTIFICATION DATE DELIVERY MODE
03/15/2017 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):
PTO-115726@bannerwitcoff.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 KELLY B. JARVIS
Appeal 2014-009853
Application 12/433,097
Technology Center 3600
Before LINDA E. HORNER, MICHAEL L. HOELTER, and
FREDERICK C. LANEY, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kelly B. Jarvis (Appellant)1 seeks our review under 35 U.S.C. § 134
of the Examiner’s decision, as set forth in the Final Office Action, dated
December 18, 2013 (“Final Act.”), rejecting claims 1, 3—16, 18—28, and 36—
38. App. Br. 2. Claims 2, 17, and 29-35 have been canceled. See
Amendment dated November 27, 2013. Appellant’s representative
presented arguments in an oral hearing on February 28, 2017. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant identifies NIKE, Inc. as the real party in interest. Br. 2.
Appeal 2014-009853
Application 12/433,097
RELATED APPEALS
The application that is the subject of the present appeal is related to
the following three applications, which are the subject of co-pending
appeals, also argued at the oral hearing on February 28, 2017: (1) Appeal
2014-009838, Application 13/357,727; (2) Appeal 2014-009814,
Application 13/357,766; and (3) Appeal 2014-009689, Application
12/433,109. Appellant also identifies the following additional related
appeals: Appeal 2014-001216, Application 12/255,496 and Appeal 2015-
002833, Application 13/357,682. Br. 2.
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to “articles of footwear, and
portions thereof, formed using rapid manufacturing additive fabrication
techniques.” Spec. 12. Claims 1, 9, and 16 are independent. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below.
1. An article of footwear, comprising:
a sole structure including a midsole and an outsole; and
an upper connected to the sole structure and forming a
void for receiving a foot of a wearer, the upper including:
(a) a first portion formed of a thermoplastic elastomer
material as multiple, successive layers of fuse bonded particles
of the thermoplastic elastomer material in a rapid manufacturing
additive fabrication technique, and
(b) a first reinforced region engaged with the first portion
of the upper by adhesive, stitching, or a mechanical fastener, the
first reinforced region including a material selected from the
group of: plastic, metal, leather, and textile materials.
2
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Application 12/433,097
EVIDENCE
The Examiner relies upon the following evidence in the Final Action:
Liggett et al.
Skaja
Clausen
Gross
Soon et al.
Cavanagh et al
From me
Junior
US 4,769,927
US 6,098,313
US 6,110,411
US 6,412,196 B1
US 2003/0233771 Al
US 2006/0070260 Al
US 2006/0143839 Al
WO 2006/122832 A2
Sept. 13, 1988
Aug. 8, 2000
Aug. 29, 2000
July 2, 2002
Dec. 25, 2003
April 6, 2006
July 6, 2006
Nov. 23, 2006
D. Graham-Rowe, “Tailor-printed shoes will offer a perfect fit.” New
Scientist, Vol. 189, Issue 2538, p. 30 (Feb. 11, 2006) (“Graham-Rowe”)
Appellant relies on the following evidence (Br. 22):
“Prior 2 Lever: Footwear Customization with Rapid Manufacturing,”
Mass Customization & Open Innovation News, http://mass-
customization.de/2006/04/prior_2_lever_f.html (posted on Apr. 20, 2006)
(hereinafter “P2L article”).2 3
REJECTIONS
Claims 1, 3, 5, and 9-13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Soon, Graham-Rowe, and Clausen.
Claims 4, 6—8, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Soon, Graham-Rowe, Clausen, and Liggett.
Claims 16 and 18—28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gross, Skaja, Junior, Soon, and Graham-Rowe.
2 Appellant introduced this evidence into the Record by filing it in an
Information Disclosure Statement on August 5, 2013. Br. 10, 16, 23.
3
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Application 12/433,097
Claims 36—38 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Gross, Skaja, Junior, Soon, Graham-Rowe, Fromme, and Cavanagh.
ANALYSIS
The rejection of claims 1, 3, 5, and 9—13
as unpatentable over Soon, Graham-Rowe, and Clausen
Appellant argues claims 1,3, and 5 together (Br. 8—13) and claims 9—
13 together (Br. 13—19). We select independent claims 1 and 9 for review,
with their respective dependent claims (i.e., claims 3,5, and 10-13) standing
or falling with their respective parent claim. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1
Claim 1 includes the limitation of a first portion formed “of a
thermoplastic elastomer material” and that this material is formed “as
multiple, successive layers of fuse bonded particles of thermoplastic
elastomers material in a rapid manufacturing additive fabrication technique.”
Appellant acknowledges that the Examiner relies on the combination of
Soon, Graham-Rowe, and Clausen for disclosing these limitations, and not
Soon alone.3 4Br. 9; see also Final Act. 3—\\ Ans. 4.
Regarding Graham-Rowe, Appellant contends, “[t]o the extent
Graham-Rowe describes details of the shoe, Graham-Rowe only describes
3 Appellant contends, “[njothing in this portion of Soon describes or
suggests that these half-shells are made as multiple, successive layers of
fuse bonded particles of thermoplastic elastomer material in a rapid
manufacturing additive fabrication technique.” Br. 9. Thereafter, Appellant
states that in addition to Soon, “the Primary Examiner relies on Graham-
Rowe and Clausen as teaching these features.” Br. 9.
4
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Application 12/433,097
the footwear sole structure.'1'’ Br. 9 (emphasis added). To emphasize this
point, Appellant states, “Graham-Rowe does not even mention the
footwear uppers, much less any process for making them.” Br. 10; see
also Br. 12. Concerning Appellant’s contention regarding disclosure of an
“upper,” the Examiner relies on Soon, not Graham-Rowe, for such express
teaching.4 See Final Act. 2 (referencing Soon’s “upper (15) connected to the
sole structure (Fig. 1)”). Regarding the process employed, the Examiner
relies on Graham-Rowe for teaching “manufacturing shoes using selective
laser sintering, which is a rapid manufacturing additive technique” and the
Examiner relies on Clausen for teaching thermoplastic fusing “using a
selective laser sintering process.” Final Act. 3; see also Ans. 4—6.
Furthermore, Appellant does not dispute the Examiner’s finding that laser
sintering is a rapid manufacturing technique5 or that Soon teaches
manufacturing shoes “such as [by] plastic welding, fusing, and the like.”6
4 In the Examiner’s Answer, the Examiner further states, “Graham-Rowe
discloses the shoes (which broadly encompasses both upper and sole
structure of the shoes).” Ans. 4. Whether or not Graham-Rowe discloses a
shoe upper, Appellant does not explain how Soon fails to expressly disclose
and depict a shoe upper.
5 Appellant’s Specification states, “[i]n at least some examples, the upper
and/or sole structure may be formed using rapid manufacturing techniques,
such as laser sintering, solid deposition modeling, stereolithography, and
the like.” Spec. 120 (emphasis added).
6 Appellant acknowledges that both Figure 4 and Paragraph 36 of Soon
“show and describe two half-shells 21 and 22 of an upper that may be glued,
cemented, plastic welded, or fused together.” Br. 9.
5
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Application 12/433,097
Soon 136. Accordingly, Appellant’s contention is not persuasive of
Examiner error.
Appellant further contends that Graham-Rowe does not teach a
footwear structure that includes “a first reinforced region including a
material selected from the group of plastic, metal, leather, and textile
engaged with the first portion of the upper.” Br. 11. On this point, the
Examiner does not rely on Graham-Rowe for such teaching, but instead
relies on Soon. Final Act. 2 (“the first reinforced region made from plastic”
(referencing Soon 134)); see also Ans. 4—6 (referencing Soon || 29, 34, 39).
Soon paragraph 34 states, “the various components of the shoe 1”
(i.e., “upper 15 and a sole unit 10” (Soon 128)) “can be manufactured from
any suitable polymeric material” and that “[sjuitable materials include
polyurethanes, such as a thermoplastic polyurethane (TPU); EVA;
thermoplastic polyether block amides,” and the like. Paragraph 29 of Soon
states “[i]n one embodiment, the shell 20 is made from polyurethane (PU),
although other plastic materials are contemplated.” Further, paragraph 39 of
Soon states, “[t]he toe cap 26 provides reinforcement to an area of the shell
20 that may be subjected to a higher load than other areas of the shoe 1” and
discloses that the toe cap can be made “a hide glued section.” Accordingly,
Appellant is not persuasive the Examiner erred in relying on Soon for
disclosing the limitation, “the first reinforced region including a material
selected from the group of: plastic, metal, leather, and textile materials.”
A further argument presented by Appellant is that “Clausen has
absolutely no mention of footwear, shoes, or the upper and/or sole
6
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components thereof.” Br. 11—12. There is general agreement that Clausen
itself does not mention footwear, shoes, uppers, or soles. However, Clausen
was not relied on by the Examiner for such teachings. See Final Act. 3^4.
Instead, Clausen was relied on for teaching the manufacture of “flexible
articles from a thermoplastic elastomer comprising fusing the thermoplastic
elastomer to form an integral layer.” Final Act. 3; see also Ans. 5. Thus,
Appellant’s contention regarding Clausen’s failure to specifically mention
footwear (and the like) is not, of itself, persuasive of Examiner error.
Further addressing Clausen, Appellant states, “[materials for rapid
prototyping at that time [i.e., the time of Clausen] tended to produce hard
and brittle models that would break apart relatively easily.” Br. 11—12.
However, Example 1 of Clausen states that the resultant laser-sintered article
“could not be divided into separate layers by pulling or other types of
deformations with force applied directly by hand.” Clausen 9:14—18.
Another example discussed in Clausen states that the resultant fused product
“was strong and flexible” (Example 3; Clausen 9:30—35). Hence,
Appellant’s contention regarding the “brittle” characteristic of rapid
prototyping materials is not persuasive in view of these teachings in
Clausen.
Appellant further contends, ‘Tnlo cited reference describes or
suggests engaging a rapid manufactured upper portion, by adhesive,
stitching, or a mechanical fastener, with a reinforced region selected
from the group of plastic, metal, leather, and textile.” Br. 12. As
discussed above, Soon teaches the use of a plastic upper and a hide glued
7
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reinforcement toe cap. See Soon || 34, 39. As above, Soon also teaches
interconnections via “gluing” (which Appellant also acknowledges at Br. 9)
and that other techniques, “such as plastic welding, fusing, and the like may
be used to perform the interconnection.” Soon 136, 39.
In view of Appellant’s arguments supra, the Examiner (correctly)
states, “one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.”
Ans. 5. Not previously mentioned, but the Examiner’s stated reason to
combine Soon, Graham-Rowe, and Clausen is “in order to save time and
money by reducing the time required to produce the upper portions
compared to traditional footwear manufacturing techniques.”7 8Final Act. 4.
In summation, Appellant is not persuasive that the Examiner lacked rational
underpinning to (a) combine the references as indicated or (b) reject claims
1,3, and 5 as obvious over Soon, Graham-Rowe, and Clausen. We sustain
the Examiner’s rejection of these claims.
Claim 9
Appellant repeats many of the same arguments for claim 9 as were
presented with respect to claim 1 above. See Br. 13—19. For example,
Appellant again argues Soon alone (and not the combination of Soon,
Graham-Rowe, and Clausen) for its failure to teach shoes “formed as
multiple, successive layers of fuse bonded particles” of thermoplastic
7 The Examiner also states that a reason to combine is “in order to provide
footwear that is comfortable and better fit and save time in the production of
footwear.” Ans. 6 (referencing “Graham-Rowe, page 2”); see also Ans. 5.
8
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Application 12/433,097
material in a rapid manufacturing additive technique. Br. 14. Additional
repeat arguments follow as well (see, e.g., Br. 16—19), which are not
persuasive for reasons previously stated.8 9
However, regarding claim 9, the Examiner additionally finds that the
process limitations cited therein “are not considered to impart any additional
structure to the footwear that would establish a patentable distinction over
the footwear of modified Soon.” Final Act. 4. Appellant replies referencing
MPEP § 2113 which states, ‘Ttlhe structure implied by the process steps
should be considered” especially “where the manufacturing process steps
would be expected to impart distinctive structural characteristics to the final
product.” Br. 15.
We note that in this exchange, Appellant is addressing Soon alone
(Br. 15), whereas the Examiner is addressing “modified Soon” (Final Act.
4). In other words, Appellant does not explain how the shoe of “modified
Soon” (i.e., manufactured via the rapid manufacturing technique of Graham-
Rowe and Clausen) fails to impart the same “distinctive structural
characteristics to the final product” as Appellant now claims. Accordingly,
Appellant is (again) not persuasive of Examiner error when relying on the
combination of Soon, Graham-Rowe, and Clausen to reject claims 9-13.
We sustain their rejection.
8 The Examiner states, “the rejection for claims 9—13 are maintained for the
same reasons as claims 1, 3, and 5.” Ans. 6.
9
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Application 12/433,097
The rejection of claims 4, 6—8, 14, and 15
as unpatentable over Soon, Graham-Rowe, Clausen, and Liggett
Each claim depends, directly or indirectly, from either claim 1 or
claim 9 discussed supra. Appellant’s sole statement regarding the additional
reliance by the Examiner on Liggett for these dependent claims is that
“Liggett does not overcome the deficiencies of Soon, Graham-Rowe, and
Clausen described above.” Br. 25. Appellant’s statement is not persuasive
that the Examiner erred in rejecting these claims. See Final Act. 5—6; Ans.
8. We sustain the Examiner’s rejection of claims 4, 6—8, 14, and 15.
The rejection of claims 16 and 18—28
as unpatentable over Gross, Skaja, Junior, Soon, and Graham-Rowe
Independent claim 16 (and hence dependent claims 18—28) recites a
“midsole” and “an insole configured to mate with the midsole.” The
Examiner relies on Gross for disclosing these limitations.9 10Final Act. 6.
Appellant disputes this characterization by the Examiner of “item 110 of
Gross correspond[ing] to the claimed ‘midsole’” (and likewise of item 160
being characterized by the Examiner as the recited “insole”). Br. 20.
Appellant states, “[tjhis characterization of the Gross structure, however, is
refuted by the text of Gross, which explicitly states that item 160 is a
9 To be clear, in claims 1 and 9 above, the Examiner relied on Soon for
disclosing the recited “midsole.” Final Act. 2.
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midsole component and item 110 is an underlying platform for this midsole
component.” Br. 20 (referencing Gross 12:22—38).
Indeed, Gross identifies item 160 as a “midsole,” and not item 110 as
stated by the Examiner. See, e.g., Gross 12:22—25 (describing referenced
Figure 9). Nevertheless, “the Examiner takes the position that the definition
of insole is ‘an inside sole of a shoe’ (Merriam-Webster) and thus item 160
is equivalent to an insole since it is inside sole of the shoe.” Ans. 7. The
Examiner’s definition is somewhat perplexing since by this definition, both
identified components of Gross (i.e., items 110 and 160) could be deemed to
be “insoles” because both are on an inner or foot side of outsole 150. See
Soon Fig. 9. In short, the Examiner’s definition provides no assistance in
ascertaining what “midsole” means. On the other hand, Gross contains
several passages describing its “midsole” component. See, e.g., Gross 4:24—
29 and 5:1—4 (both stating “a midsole attached to at least a portion of the
interior surface of the contoured platform”); 6:30 (distinguishing between a
midsole and an outsole); 6:64—79 (describing Figs. 9-12 and particularly,
midsole 160, contoured platform 110, and outsole 150).
Appellant’s usage of the term “midsole” in the Specification is not
inconsistent with its usage in Gross. See Spec, generally. Appellant’s usage
is also consistent with how this term is employed in Liggett (see Liggett
4:32-40), Skaja (see Skaja 5:45—47), and Soon (see Soon 111). In other
words, the Examiner fails to explain how one skilled in the art, upon
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reviewing Gross in view of Appellant’s Specification and other references,
would understand Gross’ item 110 as a midsole, and not item 160 instead.10
Accordingly, lacking any reasonable basis for categorizing Gross’
item 110 as a “midsole,” when Gross clearly identifies item 160 as such, we
are not persuaded the Examiner has provided rational underpinning to make
such a correlation, and especially when such correlation is contrary to the
direct teachings of Gross. Hence, based on the record presented, we are not
in agreement with the Examiner that item 110 of Gross can properly be
described as the claimed “midsole” (or that one skilled in the art would
understand this as such). Thus, lacking a foundation for such findings, we
agree with Appellant that the Examiner failed “to render Appellant’s
claimed footwear structure prima facie obvious.” Br. 19. Consequently, we
reverse the Examiner’s rejection of claims 16 and 18—28.
10 Although the PTO must give claims their broadest reasonable
interpretation, this interpretation must be consistent with the one that those
skilled in the art would reach. See In re Morris, 127 F.3d 1048, 1054 (Fed.
Cir. 1997). We have been instructed that “[pjrior art references may be
‘indicative of what all those skilled in the art generally believe a certain term
means ... [and] can often help to demonstrate how a disputed term is used by
those skilled in the art.’ Accordingly, the PTO’s interpretation of claim
terms should not be so broad that it conflicts with the meaning given to
identical terms in other patents from analogous art.” In re Cortright, 165
F.3d 1353, 1358 (Fed. Cir. 1999) (citing Vitronics Corp. v. Conceptronic,
Inc. 90 F.3d 1576, 1584 (Fed. Cir. 1996)).
12
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The rejection of claims 36—38 as unpatentable over
Gross, Skaja, Junior, Soon, Graham-Rowe, Fromme, and Cavanagh
Each claim depends directly from claim 16, and hence also includes
the “midsole” and “insole” limitations discussed supra. On this point, we
are in agreement with Appellant that “[t]he addition of two more references,
namely Fromme and Cavanagh, fails to cure the above-noted deficiencies.”
Br. 26. Accordingly, we reverse the Examiner’s rejection of claims 36—38.
DECISION
The decision of the Examiner to reject claims 1 and 3—15 is
AFFIRMED.
The decision of the Examiner to reject claims 16, 18—28, and 36—38 is
REVERSED.
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)(l)(iv).
AFFIRMED-IN-PART
13