NIKE, Inc.Download PDFPatent Trials and Appeals BoardMar 23, 20222021001616 (P.T.A.B. Mar. 23, 2022) 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. 15/604,707 05/25/2017 Tory M. Cross NIKE1422PUS/150954US01 4470 113338 7590 03/23/2022 Quinn IP Law/NIKE, Inc. 21500 Haggerty Road Ste 300 Northville, MI 48167 EXAMINER MANGINE, HEATHER N ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 03/23/2022 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 TORY M. CROSS, BRYAN N. FARRIS, and ELIZABETH LANGVIN ____________ Appeal 2021-001616 Application 15/604,707 Technology Center 3700 ____________ Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and MICHELLE R. OSINSKI, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 7, and 9-11.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Nike, Inc. as the real party in interest. Appeal Br. 3. 2 Claims 2-6, 8, 19, and 20 are cancelled, and claims 12-18 are withdrawn. Reply (July 9, 2020), 2-4. Appeal 2021-001616 Application 15/604,707 2 THE CLAIMED SUBJECT MATTER Claim 1, the sole independent claim, is reproduced below. 1. An article of footwear comprising: an upper defining a cavity, wherein the cavity is configured to receive a foot; and a sole structure attached to the upper, wherein the sole structure includes: a ground-facing surface and a top surface that faces opposite the ground-facing surface; an auxetic structure formed from a first foam material, the auxetic structure having a negative Poisson’s ratio such that the auxetic structure expands in both a lateral direction of the sole structure and in a longitudinal direction of the sole structure when the auxetic structure is tensioned in either the longitudinal direction or the lateral direction, wherein the negative Poisson’s ratio is attributable to an arrangement of a plurality of apertures across the auxetic structure, each aperture of the plurality of apertures extending through the first material from the top surface to the ground-facing surface, and wherein each aperture of the plurality of apertures has a respective inner wall; and a plurality of discrete foam fillers formed from a second foam material that is softer than the first foam material, each foam filler of the plurality of discrete foam fillers being provided within a corresponding one of the plurality of apertures, and wherein each foam filler of the plurality of discrete foam fillers has a respective surface that is flush with at least one of the top surface or ground-facing surface and is attached to the inner wall; wherein the sole structure is configured to deform from a neutral position to a deformed position in response to an applied tension; wherein each aperture of the plurality of apertures and each filler provided with the corresponding aperture expand in both the lateral direction and the longitudinal direction as the sole structure deforms from the neutral position to the deformed position[.] Appeal Br. 12 (Claims App.). Appeal 2021-001616 Application 15/604,707 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Toronjo US 2014/0101816 A1 Apr. 17, 2014 Cross US 2015/0245683 A1 Sept. 3, 2015 Schiller WO 2016/077443 A1 May 19, 2016 THE REJECTION3 Claims 1, 7, and 9-11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cross, Schiller, and Toronjo. Final Act. 4-9. OPINION The Examiner relies on Cross for many of the limitations of independent claim 1, including, among other things, an auxetic structure with a plurality of apertures and a filler “provided within each of the plurality of apertures.” Final Act. 4-5 (citing Cross Figs. 1-3). The Examiner, however, acknowledges that Cross fails to expressly disclose, among other things, the fillers being “formed from a second foam material that is softer than the first foam material [of the surrounding auxetic structure].” Id. at 5. The Examiner finds that: Schiller teaches a sole structure (174) with a plurality of discrete foam fillers (600) formed from a second foam material (see para. 0061) that is softer than the first foam material (see paras. 0022-0023 where the fillers (resilient members) can be 10-45 Asker C, and the layer analogous to the auxetic structure with the plurality of apertures can be 25-60 Asker C, further see para. 0064 where the foam of the filler and the foam of the layer with the apertures may have different densities and/or different 3 The Examiner entered amendments that overcame a rejection of claims 1, 7, and 9-11 under 35 U.S.C. §112(b) as being indefinite as set forth in the Final Action. Final Act. 3; Adv. Act. (July 21, 2020), 2. Appeal 2021-001616 Application 15/604,707 4 physical properties, and therefore the second foam material in at least one example is softer than the first foam material). Id. The Examiner concludes that it would have been obvious “to add softer foam fillers to the aperture of Cross as taught by Schiller” because, as evidenced by Toronjo[,] . . . the filler “provides additional padding to the arrangement, with addition[al] impact forces to the auxetic layer being absorbed by the foam layer” (see para. 0096 of Toronjo) and “the resilient nature of the [filler] also urges the auxetic layer back to its static shape once a stretch[ing] force is removed from the auxetic layer'” (see para. 0096 of Toronjo). Final Act. 6. Although Schiller discloses that Schiller’s first (i.e., continuous) region “has a hardness between about 25 and about 60 Asker C” and that Schiller’s resilient members of a second (i.e., discontinuous) region “have a hardness between about 10 and about 45 Asker C” (Schiller ¶¶ 22-23), as well as a general disclosure that the foams of the first and second regions may “have different physical properties” (id. ¶ 64), Appellant argues that Schiller actually lacks “a single embodiment” in which the resilient members are softer than the continuous region and fails to “make a direct comparison” that the resilient members are softer than the continuous region. Appeal Br. 9. We agree that Schiller lacks “at least one example” in which “the second foam material . . . [of the resilient members of the discontinuous region] is softer than the first foam material [of the continuous region],” contrary to the Examiner’s finding. Final Act. 5. Indeed, when Schiller makes a direct comparison between the hardness of the first foam relative to the hardness of the second foam, Schiller states that “[i]n some embodiments, discontinuous regions 600 [comprised of the second foam] Appeal 2021-001616 Application 15/604,707 5 may have an Asker C hardness that is about 15 Asker C greater than the Asker C of continuous region 602 [comprised of the first foam]” and “[i]n other embodiments, the Asker C value of discontinuous regions 600 may be [even] greater than 15 Asker C higher than the Asker C of continuous region 602.” Schilling ¶ 77. To the extent the Examiner is suggesting that it would have been obvious to use a softer foam for the resilient members of the discontinuous region relative to the foam of the surrounding continuous region in Schiller, as this would fall within the ranges set forth in paragraphs 22 and 23 of Schiller (Ans. 10), we find the Examiner to be lacking an adequate explanation in support of the obviousness of such an arrangement. The Examiner assumes a person of ordinary skill in the art would be motivated to use a particular value for hardness for a first material and a particular value for hardness for a second material to achieve a particular relationship therebetween, but the Examiner does not explain, based on Schiller’s teachings, why a person of ordinary skill in the art would be prompted to rearrange the material, or even try to do so. In short, the Examiner points to nothing in Schiller, except for the statement of the existence of ranges of hardness values that would potentially allow for the selection of a softer material for a discontinuous resilient member and a harder material for surrounding continuous material, as leading one of ordinary skill in the art to select materials having such characteristics. In connection with the modification of Cross based on the teachings of Schiller, the Examiner states that the motivation to modify Cross would not be to “eject mud and debris” which is the purpose of the resilient members in Schiller. Ans. 10 (“Whether or not such a teaching [of softer Appeal 2021-001616 Application 15/604,707 6 resilient members relative to their surrounding material] would eject mud and debris is not pertinent to the rejection as it has not been used as motivation by [the] Examiner.”). The Examiner’s motivation to modify Cross instead relates to Toronjo’s teachings that “the filler ‘provides additional padding to the arrangement with addition[al] impact forces to the auxetic layer being absorbed by the foam layer’ . . . and ‘the resilient nature of the [filler] also urges the auxetic layer back to its static shape once a stretch force is removed from the auxetic layer.” Id. at 11 (citing Toronjo ¶ 96). Toronjo discloses a foam layer that provides padding to a layered arrangement including an auxetic layer and a base layer. Toronjo ¶ 96. Toronjo describes that the foam layer “is provided between and couples the auxetic layer 20 to the base layer 22” and absorbs additional impact forces to the auxetic layer. Id. Although Toronjo’s “foam layer 36 is resilient and elastic . . . [so as to] allow some expansion and contraction of the auxetic layer 20,” “the foam layer provides some resistance to expansion and contraction of the auxetic layer 20” “because the foam layer 36 is continuous across the surface of the base layer 22 (and thus under the auxetic layer 20).” Id. Toronjo describes that the foam layer’s “resilient nature . . . urges . . . auxetic layer 20 back to its static shape once a stretching force is removed from the auxetic layer.” Id. The Examiner does not explain adequately how Toronjo’s teachings would have led one of ordinary skill in the art to select a softer material for a discontinuous resilient member (filler) and a harder material for a surrounding continuous material (auxetic layer). First, Toronjo’s foam layer is disposed between an auxetic layer and a base layer, rather than being Appeal 2021-001616 Application 15/604,707 7 provided as a filler within a plurality of apertures across the auxetic layer. Second, Toronjo makes no disclosure regarding the relative hardness of its foam layer compared to either the auxetic layer or the base layer. In addition, the Examiner does not explain how Toronjo’s teaching that its foam layer “provides additional padding” and absorbs “additional impact forces to the auxetic layer” (Toronjo ¶ 96; Final Act. 6) is suggestive of a material for the foam layer that is, in particular, softer than its surrounding materials. The Examiner also does not explain how Toronjo’s teaching that the “resilient nature” of its foam layer “urges the auxetic layer [] back to its static shape once a stretching force is removed from the auxetic layer” (Toronjo ¶ 96; Final Act. 6) is suggestive of a material for the foam layer that is, in particular, softer than its surrounding materials. In short, the Examiner has not provided an adequate reason with rational underpinnings to explain why one of ordinary skill in the art would have been led to utilize a softer material for a discontinuous resilient member within an auxetic structure and a harder material for the surrounding continuous material making up the auxetic structure. Neither the teachings of Schiller, nor Toronjo, are relied on in such a way as to explain adequately why one of ordinary skill in the art would have been led to modify Cross so that the apertures of its auxetic sole structure would include fillers formed from a foam material that is softer than the material of the surrounding auxetic structure. Without an articulated reason based on rational underpinning for modifying Cross as proposed, the Examiner’s rejection appears to be the result of an impermissible hindsight reconstruction. See Appeal Br. 10; see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418) (“rejections on obviousness Appeal 2021-001616 Application 15/604,707 8 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”). Absent hindsight, we fail to see why one having ordinary skill in the art would have been led to modify the teachings of Cross based on the teachings of Schiller and Toronjo in the manner proposed by the Examiner. For the foregoing reasons, the Examiner erred in determining that the combination of Cross, Schiller, and Toronjo renders obvious the subject matter of claim 1. Accordingly, we do not sustain the rejection of claim 1, and claims 7 and 9-11 depending therefrom, under 35 U.S.C. § 103(a) as unpatentable over these references. CONCLUSION The Examiner’s rejection is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 7, 9-11 103(a) Cross, Schiller, Toronjo 1, 7, 9-11 REVERSED Copy with citationCopy as parenthetical citation