adidas AG

Patent Trials and Appeals Board

Sep 1, 2020

14043365 - (D) (P.T.A.B. Sep. 1, 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.
14/043,365 10/01/2013 Deborah YEOMANS 2483.2440000 1032
63504 7590 09/01/2020
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
COLLIER, JAMESON D
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
09/01/2020 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):
e-office@sternekessler.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DEBORAH YEOMANS, DAVID O'MAHONY,
TRUDY ANNE WATSON, and JAMES TARRIER
____________

Appeal 2019-005328
Application 14/043,365
Technology Center 3700
____________

Before EDWARD A. BROWN, CHARLES N. GREENHUT, and
LEE L. STEPINA, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1, 2, 5–14, and 16–20.2 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION.

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 Adidas AG.
Appeal Br. 3.
2 Claims 3, 4, 15, and 21–30 are withdrawn. Appeal Br. (Claims App.).
Appeal 2019-005328
Application 14/043,365

2
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is representative of the claimed subject
matter on appeal.
1. An item of clothing comprising:
a first textile area having a portion adapted to receive at
least one sensor;
a second textile area; and
a third textile area, which is arranged at least partially
between the first and second textile areas,
wherein the third textile area is adapted to isolate relative
motion between the first textile area and the second textile area,
so that the portion of the first textile area adapted to receive at
least one sensor remains substantially fixed in relation to an
area of a subjacent organ of a wearer of the item of clothing
when the item of clothing is worn,
wherein the first textile area is adapted to exhibit a
stretching pattern in response to forces experienced during a
motion so that the portion of first textile area adapted to receive
at least one sensor remains substantially fixed during the
motion to an area of a subjacent organ of the wearer of the item
of clothing when the item of clothing is worn, and
wherein the first textile area comprises a first piece and a
second piece, wherein the first piece is adapted to exhibit a
maximum stretch during the motion of between 25% and 60%
longer than an initial length of the first piece, and wherein the
second piece is adapted to exhibit a maximum stretch during
the motion of between 10% and 20% longer than an initial
length of the second piece.

Appeal Br. 24 (Claims App.).

REJECTIONS ON APPEAL
Claims 1, 2, 5–9, 12–14, 16, and 17 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Olrich (US 2,554380, issued May 22, 1951)
and Uno (US 6,892,396 B2, issued May 17, 2005).
Appeal 2019-005328
Application 14/043,365

3
Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable over
Olrich, Uno, and Louis (CA 2504416 A1, published Oct. 10, 2006).
Claims 11, 12, 19, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Olrich, Uno, and Eldridge (US 2006/02111937 A1, Sept.
21, 2006).
Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Olrich, Uno, and Lebby (US 6,080,690, issued June 27, 2000).

ANALYSIS
New Ground of Rejection of Claims 1, 2, 5–14, and 16–20
Claim 1 is directed to an item of clothing, “wherein the first textile
area is adapted to exhibit a stretching pattern in response to forces
experienced during a motion so that the portion of first textile area adapted
to receive at least one sensor remains substantially fixed during the motion
to an area of a subjacent organ of the wearer of the item of clothing when the
item of clothing is worn.” Appeal Br. 15 (Claims App.) (emphasis added).
As further recited, “the first textile area comprises a first piece and a second
piece,” “the first piece is adapted to exhibit a maximum stretch during the
motion of between 25% and 60% longer than an initial length of the first
piece,” and “the second piece is adapted to exhibit a maximum stretch
during the motion of between 10% and 20% longer than an initial length of
the second piece.” Id. (emphasis added) (herein also “maximum stretch
limitations”). Based on our review of the record before us, we determine
that claim 1 is indefinite.
Appellant contends that the claimed first and second pieces of the first
textile area are adapted to exhibit the recited maximum stretch values during
Appeal 2019-005328
Application 14/043,365

4
the motion, that is, the recited values refer to the greatest stretch experienced
by these pieces during the motion. Appeal Br. 7–8 (citing Spec. ¶¶ 103–111,
Fig. 11). Further, Appellant contends, the maximum stretch of the first and
second pieces must be within the respective recited ranges during the same
motion. Id. at 8. Appellant also asserts, “although the claims do not limit
the minimum stretch that the pieces are adapted to exhibit during the motion,
the claims do set both upper and lower bounds on the maximum stretch the
pieces are adapted to exhibit during the motion.” Reply Br. 6.
The Examiner notes, however, that claim 1 recites an “arbitrary
‘motion.’” Final Act. 6. Indeed, claim 1 does not specify a type of motion
of the wearer of the item (e.g., bending, twisting, running, or jumping)
during which the maximum stretch limitations are exhibited by the first and
second pieces. Nor does claim 1 limit the wearer’s motion to a single type
of motion. It appears, however, that the type of motion made by the wearer,
as well as aspects of the motion, for example, the motion’s speed, direction
and/or range, would affect the forces that the first textile area is subjected to,
and, consequently, the maximum stretch exhibited by the first and second
pieces during the motion.
Additionally, claim 1 recites the maximum stretch limitations of the
first and second pieces in relation to an undefined “wearer.” Wearers can,
however, vary significantly in their body types and sizes, for example.
These variations would affect how the item fits a given wearer. For
example, the same item of clothing when worn could range from being very
loose-fitting to very tight, depending on the wearer. This relative size
difference between the item and the wearer would, for different wearers,
affect the forces that the item is subjected to, even during the same motion.
Appeal 2019-005328
Application 14/043,365

5
Further, the item could be stretched, even significantly, by a relatively larger
wearer even before the wearer makes a motion. It is unclear whether the
recited maximum stretch includes this pre-motion stretching of the item in
determining the maximum stretch. In contrast, for a relatively smaller
wearer of the same item with a loose fit, such pre-motion stretching could be
substantially or completely absent. Consequently, it appears that for the
same claimed item of clothing, different wearers may or may not cause the
item of clothing to infringe the claim even if the wearers undergo the same
motion.
In sum, based on the claim language, a particular “item of clothing”
may or may not infringe depending on the particular wearer and the
particular motion used for analysis of “maximum stretch.” There is nothing
wrong, per se, with defining the claimed subject matter based on functional
language, or based on its interaction with some unclaimed subject matter.
Here, however, the range of potential motions, and potential wearers, is so
vast as to make it unduly burdensome for the potential infringer seeking to
determine the meets and bounds of the claim, insofar as the claimed “item of
clothing” itself is concerned. See In re Hammack, 427 F.2d 1378, 1382
(CCPA 1970) (“the language of the claims must make it clear what subject
matter they encompass . . . [to provide the potential infringer] with the
adequate notice demanded by due process of law, so that they may more
readily and accurately determine the boundaries of protection involved”).
A claim is properly rejected as indefinite under 35 U.S.C. § 112,
second paragraph, if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear. See
In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014). Thus, we conclude
Appeal 2019-005328
Application 14/043,365

6
that claim 1 and dependent claims 2, 5–14, and 16–20 fail to comply with
the requirements of 35 U.S.C. § 112, second paragraph. Therefore, pursuant
to 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claims 1, 2,
5–14, and 16–20 under this ground.

Claims 1, 2, 5–9, 12–14, 16, and 17 over Olrich and Uno
Claim 10 over Olrich, Uno, and Louis
Claims 11, 12, 19, and 20 over Olrich, Uno, and Eldridge
Claim 18 over Olrich, Uno, and Lebby
The Examiner finds that Olrich discloses an item of clothing
comprising a first textile area made from a stretchable material and including
first and second pieces. Final Act. 4–7. The Examiner concedes that Olrich
does not describe that the first and second pieces of the first textile area
satisfy the recited maximum stretch limitations, and relies on Uno to attempt
to cure this deficiency in Olrich. Id. at 6–7.
Appellant contends that the combination of Uno and Olrich fails to
disclose or suggest the recited maximum stretch limitations. Appeal Br. 5–
13. As we determine that claims 1, 2, 5–14, and 16–20 are indefinite under
35 U.S.C. § 112, second paragraph, for the above-discussed reasons,
sustaining the rejections of these claims under 35 U.S.C. § 103(a) as
unpatentable over the noted combinations of references would require
speculation on our part as to their scope. See In re Steele, 305 F.2d 859,
862–63 (CCPA 1962) (holding that the Board erred in affirming an
obviousness rejection of indefinite claims because the rejection was based
on speculative assumptions as to the meaning of the claims). Thus, we do
Appeal 2019-005328
Application 14/043,365

7
not sustain the rejection of claims 1, 2, 5–14, and 16–20 under 35 U.S.C.
§ 103(a).3

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed New
Ground
1, 2, 5–9,
12–14, 16,
17
103(a) Olrich, Uno 1, 2, 5–9,
12–14, 16,
17

10 103(a) Olrich, Uno, Louis 10
11, 12, 19,
20
103(a) Olrich, Uno,
Eldridge
11, 12, 19,
20

18 103(a) Olrich, Uno, Lebby 18
1, 2, 5–14,
16–20
112, second
paragraph
1, 2, 5–14,
16–20
Overall
Outcome
1, 2, 5–14,
16–20
1, 2, 5–14,
16–20

FINALITY OF DECISION AND RESPONSE
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of

3 It should be understood, however, that our decision is based solely on the
indefiniteness of the claimed subject matter, and does not reflect on the
adequacy of the references applied in the prior art rejections.
Appeal 2019-005328
Application 14/043,365

8
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision,
[Appellant], 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] may again appeal to the Board pursuant
to this subpart.
(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 MPEP § 1214.01.

REVERSED; 37 C.F.R. § 41.50(b)