Ex Parte Carbo et alDownload PDFPatent Trial and Appeal BoardJan 31, 201813544524 (P.T.A.B. Jan. 31, 2018) 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. 13/544,524 07/09/2012 Jorge E. CARBO JR. 9672-98028-01 7698 143990 7590 02/02/2018 Klarniiist Snarkman T T P fNikefl EXAMINER 121 SW Salmon Street, Suite 1600 Portland, OR 97204 LYNCH, MEGAN E ART UNIT PAPER NUMBER 3765 NOTIFICATION DATE DELIVERY MODE 02/02/2018 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): docketing @klarquist.com nike_docketing @ cardinal-ip. com AS CChair @klarquist. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JORGE E. CARBO JR. and BRYAN N. FARRIS Appeal 2016-007691 Application 13/544,524 Technology Center 3700 Before JENNIFER D. BAHR, DANIEL S. SONG, and SEAN P. O’HANLON, Administrative Patent Judges. O’HANLON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jorge E. Carbo Jr. and Bryan N. Farris (Appellants)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s September 21, 2015, final decision 1 The Appeal Brief identifies Nike, Inc. as the real party in interest. Appeal Br. 2. Appeal 2016-007691 Application 13/544,524 rejecting claims 1—20 and 22.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. SUMMARY OF THE INVENTION Appellants’ disclosure is directed to “an article of footwear having a reflective outsole.” Spec. 11. Claim 1, reproduced below from page 10 (Claims Appendix) of the Appeal Brief, is illustrative of the claimed subject matter: 1. An article of footwear having a medial portion, a lateral portion, a forefoot portion, and a heel portion, the article of footwear configured to be worn on a foot, the article of footwear comprising: an upper that defines a cavity configured for receiving the foot; and an outsole formed from a rigid material, the outsole attached to the upper, the outsole including a ground-opposing surface having an outer periphery, the outer periphery extending along the medial portion, across the forefoot portion, along the lateral portion, across the heel portion, and back to the medial portion, the ground-opposing surface configured to span underneath the foot when worn; a heat-reflective coating on the ground-opposing surface of the outsole, the heat-reflective coating defining an exterior surface of the article of footwear; and a grip structure that protrudes from the ground-opposing surface and the exterior surface, the grip structure being encompassed by the outer periphery and being spaced apart from the outer periphery, the grip structure configured to maintain separation between the exterior surface and a ground surface; 2 Claim 21 is canceled. Appeal Br. 14 (Claims App.). 2 Appeal 2016-007691 Application 13/544,524 wherein the exterior surface spans between the medial portion, the lateral portion, the forefoot portion, and the heel portion and is configured to be disposed underneath the foot; wherein the exterior surface defined by the heat- reflective coating is configured to oppose the ground during use and to reflect heat from the ground; wherein the heat-reflective coating surrounds the grip structure; and wherein the heat-reflective coating is absent from the grip structure. REJECTIONS Claims 1—4, 6—12, 14—20, and 22 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Schwirian (US 2011/0107622 Al, published May 12, 2011). Claims 5 and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Schwirian and Skirrow (US 2008/0271344 Al, published Nov. 6, 2008). ANALYSIS Withdrawn Rejections The Final Action includes a rejection of claims 1—4, 6, 9-12, 16—18, 20, and 22 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement due to the inclusion of a “rigid member” recitation. Final Act. 2—3. Claim 22 was further rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement due to the inclusion of a “heat-reflective member” recitation. Id. at 3. We understand these rejections to be withdrawn, as the cited recitations have since been removed by amendment. See Amendment, 2—9 3 Appeal 2016-007691 Application 13/544,524 (entered Nov. 3, 2015); see also Adv. Act., 1 (mailed Nov. 18, 2015) (indicating that the Amendment was entered). Consistent therewith, we note that Appellants did not mention these rejections in their Appeal or Reply Briefs, and the Examiner did not address these rejections in the Examiner’s Answer. Anticipation Rejection The Examiner finds that Schwirian discloses all of the elements of claims 1—4, 6—12, 14—20, and 22. Final Act. 4—13. In relevant part, the Examiner finds that Schwirian discloses an article of footwear comprising an upper (upper 20), an outsole formed by a rigid member (layers 71 of fiber reinforcement), and a heat-reflective coating (shell ground portion 41) layered on a ground-opposing surface (bottom surface of layers 71) of the outsole. Id. at 4—5; see also Adv. Act. 2 (“if the amended claims were to be rejected now then the claimed ‘outsole’ would be rejected with layers 71 of Schwirian.”); and Ans. 5. Appellants argue that Schwirian’s “layers 71 of fiber and the polymer resin together constitute the composite material of the shell 40 that ‘imparts relatively high stiffness ... to sole structure 30,’” and, thus, “it is erroneous to interpret the layers 71 of fiber reinforcement as the outsole formed of a rigid material.” Appeal Br. 6. Appellants also argue that Schwirian does not disclose a heat-reflective coating on the exterior surface of the footwear. Id. at 7—8. According to Appellants, Schwirian’s “polymer resin and the layers 71 of fiber collectively define the shell 40” and “there is no additional coating on the shell 40.” Id. at 7. Appellants argue that the Examiner ignores the plain meaning of “coating,” which, Appellants assert, is “a 4 Appeal 2016-007691 Application 13/544,524 relatively thin layer of material that is layered over a substrate.” Id. Continuing, Appellants argue “the polymer resin of Schwirian is not a ‘coating’ applied to a surface defined by the layers 71 of fiber reinforcement.” Id. at 8. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). Moreover, the reference must also “disclose[] within the four comers of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net Money IN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Schwirian discloses that its article of footwear 10 includes upper 20 and sole stmcture 30. Schwirian 125. The sole stmcture includes shell 40 and core 50. Id. H 28, 37. The shell may be formed of a composite matrix that includes “a polymer matrix having fiber reinforcement, in which a polymer material (i.e., the polymer matrix) encloses, extends around, or otherwise includes a plurality of fibers (i.e., the fiber reinforcement).” Id. 131; see also id. 140 (explaining that shell ground portion 41 is formed by molding layers 71 with a polymer resin). Thus, a person of ordinary skill in the art would understand that Schwirian’s fiber layers 71 and polymer resin collectively form shell 40 of sole stmcture 30, including its ground portion 41 and footbed portion 42. Accordingly, we are persuaded of error in the Examiner’s interpretation that fiber layers 71, alone, correspond to the recited outsole. 5 Appeal 2016-007691 Application 13/544,524 We are further persuaded of error in the Examiner’s determination that Schwirian’s polymer resin corresponds to the recited heat-reflective coating. As noted above, Schwirian’s polymer “encloses, extends around, or otherwise includes” fiber layers 71. Id. ^ 31. Thus, the polymer extends throughout shell 40 rather than being a coating applied to the ground- opposing surface thereof. Accordingly, we do not sustain the rejection of independent claims 1, 11, and 22, nor of their dependent claims 2—4, 6—10, 12, and 14—20. Obviousness Rejection Skirrow is not relied upon by the Examiner in any manner that would remedy the deficiencies noted above with respect to the rejection of claims 1 and 11, from which claims 5 and 13 depend, respectively. The rejection of claims 5 and 13, therefore, is not sustained. DECISION The Examiner’s decision to reject claims 1—20 and 22 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation