Ex Parte Turner

Patent Trial and Appeal Board

Dec 21, 2017

13485739 (P.T.A.B. Dec. 21, 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.
13/485,739 05/31/2012 David Turner 11-1757US58/NIKE.213059 1224
78342 7590 12/26/2017
SHOOK, HARDY & BACON L.L.P.
(NIKE, INC.)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BLVD.
KANSAS CITY, MO 64108-2613
EXAMINER
PIERORAZIO, JILLIAN KUTCH
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
12/26/2017 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.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 DAVID TURNER
Appeal 2017-002516
Application 13/485,739
Technology Center 3700
Before JENNIFER D. BAHR, WILLIAM A. CAPP and
LEE L. STEPINA, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1—12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Nike, Inc., is identified as the real-party-in-interest. Appeal Br. 4.
Appeal 2017-002516
Application 13/485,739
THE INVENTION
Appellant’s invention relates to an apparel garment with cushions or
pads. Spec. 13. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. An article of apparel incorporating at least one
cushioning element for attenuating impact forces, the
cushioning element comprising:
a first material layer and a second material layer, the first
material layer being formed from an at least partially
transparent material; and
a pad component located between the first material layer
and the second material layer, the pad component including a
polymer foam material that defines at least one of a groove and
a void, and the pad component including a surface that includes
a bonding agent that joins the pad component to the first
material layer, the polymer foam material having a first color
and the bonding agent having a second color that is different
than the first color,
the polymer foam material and the bonding agent being
visible through the first material layer.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Weder US 5,633,055 May 27, 1997
Cormier US 2005/0161982 A1 July 28, 2005
Turner US 2011/0061154 A1 Mar. 17,2011
Bems US 2011/0209275 A1 Sept. 1,2011
Shiue US 2013/0160179 A1 June 27, 2013
The following rejections are before us for review:
1. Claims 1^4 are rejected under 35 U.S.C. § 103(a), as being
unpatentable over Bems, Turner, and Shiue.
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2. Claims 5—8 are rejected under 35 U.S.C. § 103(a), as being
unpatentable over Bems, Turner, and Weder.
3. Claims 9, 10, and 12 are rejected under 35 U.S.C. § 103(a), as
being unpatentable over Bums and Turner.
4. Claim 11 is rejected under 35 U.S.C. § 103(a), as being
unpatentable over Bems, Turner, and Cormier.
OPINION
Unpatentability of Claims 1—4
Over Berns, Turner, and Shiue
Appellant argues claims 1—4 as a group. Appeal Br. 12—14. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Bems discloses the claimed invention except
for: (1) a first material formed of transparent material with the polymer
foam material and bonding agent being visible through the transparent
material; and (2) a bonding agent with a second/different color. Final
Action 3—5. The Examiner relies on Turner for the first material. Id. at 4.
The Examiner relies on Shiue for the differently colored bonding agent. Id.
at 5. The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art at the time of the invention to modify Bems with
the teachings of Turner and Shiue to achieve the claimed invention. Id.
According to the Examiner, a person of ordinary skill in the art would have
done this to have a breathable layers for wearer comfort and have an “ascetic
[sp. ‘aesthetic’]” appearance.2 Id.
2 From the context in which it is used, we view the Examiner’s use of
“ascetic” as an inadvertent typographic error and that “aesthetic” was
intended instead.
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Application 13/485,739
Appellant traverses the Examiner’s rejection by arguing that the
Examiner failed to provide a rationale to support the proposed combination
of references. Appeal Br. 12. However, the Examiner’s rationale for the
combination is noted in the previous paragraph and is adequate to support
the rejection.
Appellant argues that Bems discloses a thermal plastic adhesive
whereas Shiue discloses a rubber glue. Id. Appellant argues that rubber and
thermal plastic are incompatible. Id.
In response, the Examiner states that Shiue is merely relied on for its
color teaching, not the chemical composition of its bonding agent. Ans. 4.
Appellant’s incompatible bonding agent argument is not persuasive.
The obviousness inquiry does not ask “whether the references could be
physically combined but whether the claimed inventions are rendered
obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d
852, 859 (Fed. Cir. 1985) (en banc). “It is well-established that a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.” In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012).
Appellant next argues that the Examiner’s proposed combination fails
to teach or suggest a polymer foam material having a first color and the
bonding agent having a second color that is different than the first color.
Appeal Br. 12—13. Appellant argues that Shiue merely teaches a rubber
coating that is brushed onto the outer surface of a garment to repel water. Id.
Appellant contends that Shiue’s rubber composition does not serve as a
bonding agent. Id. at 13 (“There is no indication in Shiue that the rubber
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Application 13/485,739
glue coating would serve to secure a material layer to a pad component
layer”).3
In response, the Examiner states the Bems is relied on for the
“bonding agent” limitation. Ans. 4. According to the Examiner, Shiue is
merely relied on as teaching a bonding agent with a different color. Id. In
response to Appellant’s argument that Shiue’s glue is not used as a bonding
agent, the Examiner finds that “Shiue’s glue element 140 is structurally and
functionally a glue.” Id.
Shiue is directed toward a surface-treated water sports garment.
Shiue, Abstract. Shiue’s garment has an outer layer of “rubber glue.” Shiue
125. Shiue also teaches that:
In FIG. 1A, the sewed pieces of laminated sheets 150a and 160a
are made by sequentially laminating a first fabric layer 110, a
rubber sponge layer 120, and a rubber glue layer 140. A seam
170a is formed by gluing and sewing the laminated sheets 150a
and 160a arranged side by side.
Id. at 118 (emphasis added). Shiue’s express teaching that seam 170a is
formed “by gluing” effectively refutes Appellant’s position that Shiue fails
to disclose a bonding agent that is capable of securing a material layer to a
pad component layer.
In the Reply Brief, Appellant argues that Shiue fails to teach a second
color that is different from a first color. Reply Br. 4. Appellant emphasizes
that Shiue only discloses a single color, such as carbon black, but does not
disclose two colors that are different from each other. Id.
3 Similarly, “[tjhough Shiue uses the term 'glue' in the disclosure, there is no
indication that the substance disclosed could be used as a material to adhere
two items.” Id. at 14.
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Appellant’s “second color” argument is raised for the first time in the
Reply Brief. The substance of Appellant’s Appeal Brief that the Examiner’s
proposed combination “fails to teach a polymer foam material having a first
color and the bonding agent having a second color that is different than the
first color” was aimed at whether Shiue’s glue was a bonding agent. See
Appeal Br. 12—14. Appellant did not develop and present a “second color”
argument until the Reply Brief. The Examiner responded to Appellant’s
“bonding agent” argument in the Answer. See Ans. 3^4. The Examiner did
not address a “second color” issue in the Answer. Id. The manner in which
Appellant briefed its traverse to the claim 1 rejection apparently led the
Examiner to believe that Appellant’s argument was directed to the “bonding
agent” issue to the exclusion of a “second color” issue. A fair reading of
Appellant’s Appeal Brief supports this position. Therefore, the Examiner
was effectively precluded from responding to Appellant’s “second color”
argument, which was not articulated as such until the Reply Brief. Under
the circumstances, we will not consider Appellant’s belated “second color”
argument. See 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply
brief which was not raised in the appeal brief. . . will not be considered by
the Board for purposed of the present appeal”).4
In view of the foregoing discussion, we determine the Examiner's
findings of fact are supported by a preponderance of the evidence and that
the Examiner's legal conclusion of unpatentability is well-founded.
4 In any event, we deem it unlikely that a person of ordinary skill in the art
would understand Turner and Shiue as both teaching that same uniform
color for all colored components, particularly where Turner teaches that its
pad components 230 may have different colors and that pad components 230
and frame 240 components may have different colors. See Turner, | 58.
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Accordingly, we sustain the Examiner's unpatentability rejection of
claims 1—4.
Unpatentability of Claims 5—8
Over Berns, Turner, and Weder
Claim 5
Claim 5 is an independent claim that differs in scope from claim 1 in
that the claimed bonding agent is comprised of a colored thermoplastic
polymer sheet. Claims App. For this, the Examiner relies on Weder. Final
Action 7. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art at the time of the invention to combine
Weder with Bems and Turner to achieve the claimed invention. Id.
According to the Examiner, a person of ordinary skill in the art would have
done this to provide a visual ascetic [sp. ‘aesthetic’] to view the bonding
agent through the mesh material. Id.
Appellant traverses the rejection by arguing that Weder does not
disclose using a thermal plastic sheet as a bonding agent. Appeal Br. 16.
According to Appellants, “Weder discloses various bonding agents, such as
nitrocellulose adhesive to bond together sheets of material, but the sheets
themselves are not the actual bonding agents.” Id. (emphasis omitted).
In response, the Examiner concedes that Weder is not relied on as
disclosing thermal plastics as a bonding agent. Ans. 5. The Examiner states
that Bems is relied on disclosing a thermal plastic bonding agent. Id.
However, the Examiner then states:
It is Examiner's position that Weder teaches ”a bonding agent
comprising a colored thermoplastic polymer sheet” at col. 19,
lines 24-32 as cited on page 7 of the Final Rejection “A second
Saran coated polypropylene sheet is adhered to this first sheet.
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Inks are added to the acrylic or modified nitrocellulose adhesive
for coloring, both adhesives being heat sealable”.
Id. at 6. We have reviewed the passage of Weder referenced by the
Examiner and do not agree that it discloses “a bonding agent comprising a
colored thermoplastic polymer sheet” as claimed. See Weder, col. 19,
11. 24 — 32. Moreover, we are not persuaded that the Examiner has
adequately explained how or why a person of ordinary skill in the art would
have found it obvious to combine Bems’ thermoplastic bonding agent with
the sheet material of Weder to arrive at the claimed bonding agent
comprising a thermoplastic polymer sheet.
Accordingly, we do not sustain the Examiner’s unpatentability
rejection of claim 5 over Bems, Turner, and Weder.
Claims 6—8
Claims 6—8 depend from claim 5. Claims App. The Examiner’s
rejection of these claims suffers from the same infirmity that was identified
above with respect to claim 5. Thus, for essentially the same reason
expressed above in connection with claim 5, we do not sustain the rejection
of claims 6—8.
Unpatentability of Claims 9, 10, and 12
Over Berns and Turner
Claim 9
Claim 9 is an independent claim that differs in scope from claims 1
and 5 primarily in that it contains a limitation directed to pads that have a
first color on a surface and a second color on the interior of the pad, which
second, interior color is exposed in connection with slope-sided grooves.
Claims App. The Examiner relies on Turner as disclosing pads with two
different colors. Final Action 10. The Examiner concludes that it would
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Application 13/485,739
have been obvious to a person of ordinary skill in the art at the time of the
invention to use the teachings of Turner to make a first surface a different
color than the pad component. Id. at 11. According to the Examiner, a
person of ordinary skill in the art would have done this to identify the
configuration of the cushioning element. Id.
Appellant argues that the Examiner’s proposed combination is not the
same as having a surface of a pad component with a first color and the
interior of the pad component with a second color. Appeal Br. 19—20.
In response, the Examiner directs our attention to paragraph 58 of
Turner as teaching pad components with two different colors. Ans. 6. The
Examiner further finds that:
it is disclosed in Par. 58 that pad components 230 has different
thicknesses may have different colors, which discloses that the
interior of the component has a second color which reads on the
limitation "the interior of the component having a second color"
Id. at 7.
Appellant teaches that a router may be used to form grooves 634 and
635 in a pad. Spec. 109. Appellant further teaches that
one or both of the surfaces of pad component 630 may be
formed to have a first color and the interior of pad component
630 may have a second color. Given that grooves 634 and
voids 635 expose the interior of pad component 630, the second
color will be visible at the locations of grooves 634 and
voids 635.
Spec. 1114. In the following paragraph, Appellant explains one of the
reasons for this colorization pattern.
Based upon the above discussion, grooves 634 and voids 635
may be visible . . . this configuration ensures that an individual
me [sp. may] see the structure of pad component 630 and the
positions of grooves 634 and voids 635, thereby ensuring that
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will flex and breathe in a manner that is suitable for the
particular activities the individual intends to engage in.
Id. at 1115. In other words, a user may select a particular garment for one
activity (e.g., paintball) and a different garment for another activity (e.g.,
lacrosse). The pattern of grooves in the pad that is visible through the
partially transparent material of the first material layer may assist the user in
selecting which garment to use for a particular activity. This follows from
the fact that the pattern of grooves provides a visible indication as to how the
pad will flex when exposed to bending forces during an activity.
Turner does disclose the use of more than one color in pad elements.
Turner | 58 (“pad components 230 with different colors”). However, we
agree with Appellants that there is no teaching that such different colors are
associated with grooves that expose an interior pad color. Given the
functional relationship between the color patterning of the grooves and the
selection of a garment for a particular use, a factor that is lacking in Turner,
both alone and in combination with Bems, we are not persuaded that the
Examiner has shown that it would have been obvious to achieve the subject
matter of claim 9.
We do not sustain the rejection of claim 9.
Claims 10 and 12
Claims 10 and 12 depend from claim 9. Claims App. The
Examiner’s rejection of these claims suffers from the same infirmity that
was identified above with respect to claim 9. Thus, for essentially the same
reason expressed above in connection with claim 9, we do not sustain the
rejection of claims 10 and 12.
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Unpatentability of Claim 11
Over Berns, Turner, and Cormier
Claim 11 depend from claim 9. Claims App. The Examiner’s
rejection of these claims suffers from the same infirmity that was identified
above with respect to claim 9, which infirmity is not cured by the Cormier
reference. Thus, for essentially the same reason expressed above in
connection with claim 9, we do not sustain the rejection of claim 11.
DECISION
The decision of the Examiner to reject claims 1—4 is affirmed.
The decision of the Examiner to rejection claims 5—12 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)(l)(iv).
AFFIRMED-IN-PART
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