Ex Parte Peyton et al

Patent Trials and Appeals Board

Mar 25, 2019

14179956 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/179,956 02/13/2014
113338 7590
Quinn IP Law/NIKE, Inc.
21500 Haggerty Road
Ste 300
Northville, MI 48167
03/27/2019
FIRST NAMED INVENTOR
Lee D. Peyton
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
NIKE1108PUS/130515US01 1045
EXAMINER
HUYNH, KHOA D
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
03/27/2019 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):
nike _ docketing@cardinal-ip. com
USDocketing@quinniplaw.com
adomagala@quinniplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEED. PEYTON, MARGARITA CORTEZ and
BENJAMIN J. MONFILS
Appeal2017-009966
Application 14/179,956 1
Technology Center 3700
Before JOHN C. KERINS, DAVID M. KOHUT, and
JEREMY M. PLENZLER, Administrative Patent Judges.
KOHUT, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claim 21 under 35 U.S.C. § l 12(b) as being indefinite (see
Final Office Action, mailed Sept. 22, 2016 ("Final Act."), at 2); claims 1-7,
12-22 and 37--45 under 35 U.S.C. § 103 as being unpatentable over Peyton
(US 2011/0277346 Al, publ. Nov. 17, 2011) and Schwirian (US
2011/0107622 Al, publ. May 12, 2011) (see Final Act. 8); and claim 23
The Appellants identify Nike, Inc., of Beaverton, Oregon, the
Applicant under 37 C.F.R § l.43(a), as the real party in interest. (See
"Appeal Brief under 35 U.S.C 134," dated Jan. 27, 2017, at 3).
Appeal2017-009966
Application 14/179,956
1 under § 103 as being unpatentable over Peyton, Schwirian and Sink (US
2 4,241,524, issued Dec. 30, 1980) (see Final Act. 24). Claims 8-11 have
3 been withdrawn from consideration. Claims 24--36 are cancelled. We have
4 jurisdiction under 35 U.S.C. § 6(b).
5 We REVERSE.
6 The appealed claims are directed to an article of footwear 110
7 including a sole assembly 112. The sole assembly 112, in tum, includes a
8 cushioning component 16 and a shell 114. The shell 114 is multi-layered,
9 including an inner textile layer 148; one or more outer textile layers 15 0,
10 151; and a middle layer of a polymer foam material captured between the
11 textile layers 148, 150. (See Specification, dated Feb. 13, 2013 ("Spec."),
12 para. 50; & Figs. 8 & 10). According to the Specification:
13 The shell 114 is pleated at a transition from a bottom surface 152
14 to the sides of the lower portion 191. Sample pleats 195 are
15 shown in FIG. 11. The transition at which the folds of the pleats
16 195 overlay is the perimeter 194 of the bottom surface 152 of the
17 outer textile layer 150 of the formed shell 114, as indicated in
18 FIG. 9. The perimeter 194 includes flex locations of the sole
19 assembly 112. The fold lines of the pleats 195 of FIG. 11 are
20 indicated at phantom lines L of FIG. 9. Pleating the layers of the
21 shell 114 aids in the construction of the shell 114, allowing it to
22 extend both under the cushioning component 16, forming a
23 cavity 124 in which the cushioning component 16 is received, as
24 well as to extend upward to form the upper portion 192 and to
25 flex at the transition. The shell 114 thus serves as a carrier for
26 the cushioning component 16 and as an integral footwear upper.
27 (Spec., para 52).
28 Claims 1 and 42 are independent. Claim 1 is illustrative:
29 1. An article of footwear comprising:
30 a sole assembly having:
31 a cushioning component;
2
Appeal2017-009966
Application 14/179,956
1 a shell composed at least partially of a textile layer,
2 and forming a cavity with an opening; wherein the shell
3 has pleats with folds of the pleats at a perimeter of a
4 bottom surface of the shell; and
5 wherein the cushioning component is positioned in
6 the cavity so that the cushioning component is supported
7 on a lower surface by the shell, an upper surface of the
8 cushioning component is at least partially uncovered by
9 the shell at the opening, and the shell extends upward
10 beyond the upper surface of the cushioning component.
11 Dependent claims 20 and 21 recite:
12 20. The article of footwear of claim 1, wherein the shell
13 is a footwear upper that extends around the cushioning
14 component and below the cushioning component.
15 21. The article of footwear of claim 20, wherein the
16 pleats are at a transition from a lower portion of the shell below
17 the cushioning component to an upper portion of the shell that
18 extends upward beyond the upper surface of the cushioning
19 component, and the pleats extend up at least one of a medial side
20 or a lateral side of the upper portion of the shell.
21 We do not sustain the rejection of claim 21 as indefinite under
22 § 112(b ). The Examiner concludes that the recitation, "the upper portion of
23 the shell," lacks antecedent basis. (See Final Act. 2). As the Appellants
24 point out, claim 21 recites "an upper portion of the shell that extends upward
25 beyond the upper surface of the cushioning component" prior to reciting "the
26 upper portion of the shell." (See "Appeal Brief under 35 U.S.C 134," dated
27 Jan. 27, 2017 ("App. Br."), at 5 & 6). Therefore, the latter recitation has an
28 antecedent basis. The Examiner does not appear to respond to this argument
29 in the Examiner's Answer, mailed May 19, 2017 ("Ans.").
30 Turning to the prior art, Peyton describes an article of footwear 110
31 including a sole structure 130. The sole structure 130 includes an insole
3
Appeal2017-009966
Application 14/179,956
1 140; a resilient framework 144; and fluid-filled heel and forefoot chambers
2 146, 148 positioned between the insole and the resilient framework. (See
3 Peyton, para 30 & Fig. 2). The heel and forefoot chambers 146, 148 have
4 networks of fluid-filled arms 15 0 held together by webs 154. (See Peyton,
5 para. 37 & Figs. 3-5B). The top portion 164 of the resilient framework 144
6 is breached by heel and forefoot recesses 170, 180 complementary in shape
7 to the arms 150 of the heel and forefoot chambers 146, 148. Channels 172
8 separated by support walls 17 4 define the heel and forefoot recesses 146,
9 148. (See Peyton, para. 39 & Fig. 6). When the sole structure 130 is
10 assembled, interconnecting web member 15 6 extending between the arms
11 150 of the heel and forefoot chambers 146, 148 are affixed to top surfaces of
12 the support walls 174, providing space for the arms 150 and the interior
13 surfaces of the channels 17 2 when the footwear 110 is in a relaxed state.
14 (See generally Peyton, paras. 42--44 & Fig. 8).
15 Peyton teaches that"[ o ]utsole features 176 can be formed on bottom
16 portion 166 of the framework for interacting with the ground during use."
17 (Peyton, para. 39). In Figures 7 and 8, these outsole features 176 take the
18 form of grooves inscribed into the bottom portion 166 of the resilient
19 framework 144. In the particular sections depicted in Figures 7 and 8, these
20 grooves appear to align with the support walls 174. The Examiner identifies
21 the combinations of the support walls 17 4 and the grooves as folds; and,
22 based on this finding, further infers that the resilient framework 144 is
23 pleated, as recited in claims 1 and 42. (See Final Act. 9; Ans. 3).
24 Schwirian describes an article of footwear 10 including an upper 20
25 and a sole structure 30. (See Schwirian, para. 25). The sole structure 30
26 includes a shell 40 and a core 50. The "shell 40 is formed from a composite
4
Appeal2017-009966
Application 14/179,956
1 material that defines a cavity within sole structure 30, and core 50 is formed
2 from a polymer foam material that is enclosed within and substantially fills
3 the cavity." (Schwirian, para. 28). Schwirian describes a shell 40
4 comprising a textile layer formed from a synthetic fiber such as an aramid
5 fiber, surrounded by a polyurethane polymer matrix. (See Schwirian, para.
6 31 ). As depicted in Figure 3A, sides of the shell 40 extend upwardly beyond
7 the upper surface of the core 50.
8 Both claim 1 and claim 42 recite articles of footwear having shells.
9 The shell recited in each claim "has pleats with folds of the pleats at a
10 perimeter of a bottom surface of the shell." The Examiner concludes that
11 the ordinary meaning of the term "pleat" as "a fold, especially one of several
12 parallel folds made by doubling cloth or other material on itself and then
13 pressing or stitching into place." (Final Act. 9, citing AMERICAN HERITAGE
14 DICTIONARY OF THE ENGLISH LANGUAGE (5th edition 2016) ("pleat," n),
15 reproduced at https://www.thefreedictionary.com/pleat (last accessed Feb.
16 19, 2019)). The Appellants argue patentability on the basis of this ordinary
17 meaning. (See generally App. Br. 7-11).
18 Because both claim 1 and claim 42 recite that the pleats have "folds,"
19 the claims appear to use "pleat" to mean something other than merely a fold.
20 Thus, in terms of the definition quoted by the Examiner, the broadest
21 reasonable interpretation of the term "pleat," as used in claims 1 and 42, is
22 "one of several parallel folds made by doubling cloth or other material on
23 itself and then pressing or stitching into place." This definition is consistent
24 with the function of the pleats as described in the Specification, namely, to
25 aid "in the construction of the shell 114, allowing it to extend both under the
26 cushioning component 16, forming a cavity 124 in which the cushioning
5
Appeal2017-009966
Application 14/179,956
1 component 16 is received, as well as to extend upward to form the upper
2 portion 192 and to flex at the transition." (Spec., para. 52). It is the
3 doubling of the cloth or other material on itself that enables the cloth or
4 other material to extend during fabrication of the article of footwear.
5 The Examiner identifies the combinations of the support walls 17 4
6 and the grooves of Peyton's resilient framework 144 as folds. (See Final
7 Act. 9; Ans. 3). Alternatively, the Examiner finds that, if Peyton's sole
8 structure 13 0 is modified in view of the teachings of Schwirian to include a
9 textile layer, the textile layer will have a fold at each support wall 174. (See
10 Ans. 3 & 4). The mere existence of folds does not imply the existence of
11 "pleats," as that term is used in claims 1 and 42. In particular, the
12 Appellants correctly point out that the Examiner has not shown that Peyton's
13 support walls 17 4 and grooves are folded over on themselves. (See App. Br.
14 11).
15 Therefore, the teachings of Peyton and Schwirian, alone or in
16 combination, fail to teach or suggest a shell that "has pleats with folds of the
1 7 pleats at a perimeter of a bottom surface of the shell," as recited in claims 1
18 and 42. We do not sustain the rejection of claims 1-7, 12-22 and 37--45
19 under § 103 as being unpatentable over Peyton.
20 Turning to the rejection of dependent claim 23, Sink describes an
21 article of footwear having a sole 2 2 from which a series of bar treads 3 5
22 separated by valley areas 36 project. (See Sink, col. 1, 11. 64--66; col. 2, 11.
23 30-32; & Figs. 1 & 3). "The front wall 39 of the bar tread in the
24 embodiment shown is of a stepped or serrated configuration formed of steps
25 39A extending from the valley area 36 between the bar treads." (Sink, col.
26 2, 11. 3 8--41 ). The Examiner cites Sink as teaching:
6
Appeal2017-009966
Application 14/179,956
1 A sole (22) for an article of footwear (15) including an outer
2 surface (annotated Figure 4) with walls (37, 39) having a
3 reinforcing member ( annotated Figure 4) secured to the outer
4 surface (annotated Figure 4) and extending along the walls (37,
5 39) and not along the crest (as seen in annotated Figure 4, the
6 reinforcing members extend along the plane of the walls, but are
7 not on a crest [38]); wherein the reinforcing member (annotated
8 Figure 4) has laterally extending slats (39A) and has a webbing
9 (annotated Figure 4) that interconnects the slats (39A).
10 (Final Act. 24 & 25). Even assuming the correctness of this finding, the
11 finding does not remedy the deficiencies in the combined teachings of
12 Peyton and Schwirian, as applied to parent claim 1. Therefore, we do not
13 sustain the rejection of claim 23 under§ 103 as being unpatentable over
14 Peyton, Schwirian and Sink.
15
16 DECISION
17 We REVERSE Examiner's decision rejecting claims 1-7, 12-23 and
18 37--45.
19 More specifically, we do not sustain the rejection of claim 21 under
20 § 112(b) as being indefinite; the rejection of claims 1-7, 12-22 and 37--45
21 under § 103 as being unpatentable over Peyton and Schwirian; or the
22 rejection of claim 23 under§ 103 as being unpatentable over Peyton,
23 Schwirian and Sink.
REVERSED
7