FALKE KGaA

Patent Trials and Appeals Board

Feb 23, 2022

2021005031 (P.T.A.B. Feb. 23, 2022)

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. 15/258,729 09/07/2016 Michael KLEIN 20099/A 109 025 f 8813 34431 7590 02/23/2022 HANLEY, FLIGHT & ZIMMERMAN, LLC 150 S. WACKER DRIVE SUITE 2200 CHICAGO, IL 60606 EXAMINER LYNCH, MEGAN E ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 02/23/2022 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): jflight@hfzlaw.com mailroom@hfzlaw.com mhanley@hfzlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL KLEIN and JÜRGEN MROZEK Appeal 2021-005031 Application 15/258,729 Technology Center 3700 ____________ Before ANTON W. FETTING, MICHAEL C. ASTORINO, and KENNETH G. SCHOPFER, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 4-6, 9-25, and 27-30. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as FALKE KGaA. Appeal Br. 2. Appeal 2021-005031 Application 15/258,729 2 STATEMENT OF THE CASE Claimed Subject Matter Claims 1, 13, and 20 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. Method for producing an article of clothing which is in the form of an article of leg clothing or an article of upper body clothing and comprises a textile main body and functional elements arranged on the textile main body, comprising the following: - producing the textile main body; - providing a shaped part having at least one recess for a functional element for accommodating a functional-element starting material; - introducing the functional-element starting material into the at least one recess for a functional element; - bringing the shaped part which is provided with the functional-element starting material into contact with the textile main body; - producing at least one functional element which is connected by a substance-to-substance bond to the textile main body from the functional-element starting material; wherein at least two functional elements are produced which are of mutually differing Shore A hardness, wherein the at least two functional elements are produced in a compression region of the textile main body of the article of clothing which includes at least one elastic thread and in which, in the worn state of the article of clothing, the textile main body exerts a compressive effect on the body of the wearer of the article of clothing, and wherein the article of clothing comprises a first region which rests on a concavely curved part of the body of the wearer in the worn state of the article of clothing, and a second region which rests on a convexly curved part of the body of the wearer in the worn state of the article of clothing, Appeal 2021-005031 Application 15/258,729 3 wherein a first functional element is arranged in the first region of the article of clothing and a second functional element is arranged in the second region of the article of clothing and wherein the Shore A-hardness of the first functional element is higher than the Shore A-hardness of the second functional element. References The prior art relied upon by the Examiner is: Name Reference Date Galasso US 4,896,441 Jan. 30, 1990 Hiraoka et al. (“Hiraoka”) US 6,255,235 B1 July 3, 2001 Williams US 2007/0028365 A1 Feb. 8, 2007 Maihoefer et al. (“Maihoefer”) US 2009/0288566 A1 Nov. 26, 2009 Zhang US 2011/0143633 A1 June 16, 2011 Cherneski US 2012/0058316 A1 Mar. 8, 2012 Rejections To facilitate our analysis, we set forth the rejections in a different order than the order presented in the Answer and Appeal Brief. Claims 1, 2, 4-6, 23, 24, and 27 are rejected under 35 U.S.C. § 103 as unpatentable over Cherneski, Galasso, and Williams. Claims 1 and 9-12 are rejected under 35 U.S.C. § 103 as unpatentable over Hiraoka, Williams, and Galasso. Claims 13-19, 25, and 28 are rejected under 35 U.S.C. § 103 as unpatentable over Williams and Galasso. Claims 20-22 are rejected under 35 U.S.C. § 103 as unpatentable over Hiraoka, Maihoefer, and Zhang. Claims 29 and 30 are rejected under 35 U.S.C. § 103 as unpatentable over Hiraoka, Maihoefer, Zhang, Galasso, and Williams. Appeal 2021-005031 Application 15/258,729 4 ANALYSIS The rejection of claims 1, 2, 4-6, 23, 24, and 27 as unpatentable over Cherneski, Galasso, and Williams The Appellant points out, and we agree, that independent claim 1 requires: a first functional element (arranged in the first region which rests on a concavely curved part of the body of the wearer) with a Shore A-hardness that is higher than the Shore A-hardness of the second functional element (which is arranged in the second region which rests on a convexly curved part of the body of the wearer). Appeal Br. 10. The Appellant argues that the Examiner’s rejection combines teachings from Cherneski, Galasso, and Williams that would not result in the foregoing requirement of claim 1. Appeal Br. 10-15; Reply Br. 2-4. The Examiner’s rejection relies on Cherneski to teach an article of clothing (a sock) having a first functional element, a first region (the ankle region of the sock), and a second functional element arranged in a second region (the heel region of the sock). See Non-Final Act. 3-4. The Examiner does not find that Cherneski’s first functional element is arranged in the first region (an ankle region) or that the Shore-A hardness of the first functional element is higher than the Shore-A hardness of the second functional element. See Non-Final Act. 3-5. The Examiner relies on Williams to teach an article of clothing (a sock) having a first functional element that is arranged in a first region (an ankle region of the sock) and Galasso to teach an article of clothing (a removable innersole for footwear) having a Shore-A hardness of a first functional element (element 1) in a first region (heel region 3 of the insole) that is higher than a Shore-A hardness of a second Appeal 2021-005031 Application 15/258,729 5 functional element (element 1) in a second region (intermediate region 4 of the insole). See Non-Final Act. 4-5; Ans. 4. Generally, the Appellant’s argument reviews the Examiner’s application of the references, as well as some relevant teachings of the references, to explain a disconnect between the teachings of the relative Shore-A hardness values of the concave and convex regions of the articles of clothing in the references and claimed relative Shore-A hardness of the first and second functional elements and their regions as required by claim 1. See Reply Br. 2-4. Of particular note is the Appellant’s point that the Examiner relies on Galasso to teach the Shore-A hardness of the first functional element being higher than the Shore-A hardness of the second functional element, but that the structures that the Examiner points to in Galasso teach the opposite relative hardness of the first and second functional elements with respect to the concave and convex regions that these elements rest on. See Reply Br. 2-3. The Appellant’s argument is persuasive. In our view the Examiner’s rejection lacks rational underpinning, particularly in how the teachings of the references are combined to result in the disputed subject matter. This is because there is an inconsistency in how the Examiner identifies and applies the teachings of the prior art references as they relate to the first and second regions of their respective articles of clothing. See also Reply Br. 2-4. More specifically, the Examiner identifies the ankle region of Cherneski’s and Williams’ article of clothing as the first region, but the heel region of Galasso’s article of clothing as the first region. Additionally, the heel region is the same region that the Examiner identifies as Cherneski’s second region. On this record, the Examiner fails to adequately reconcile these inconsistencies. Rather, the Examiner appears to Appeal 2021-005031 Application 15/258,729 6 gloss over these inconsistencies by relying on a broader teaching of Galasso. Namely, that Galasso teaches an article of clothing having functional elements with different Shore-A hardness values in different regions of the article of clothing. However, this finding falls short of adequately supporting the Examiner’s rejection. Thus, we do not sustain the Examiner’s rejection of independent claim 1 and claims 2, 4-6, 23, 24, and 27, which depend therefrom. The rejection of claims 1 and 9-12 as unpatentable over Hiraoka, Williams, and Galasso The Appellant argues, and we agree, that the Examiner’s rejection of claim 1 as unpatentable over Hiraoka, Williams, and Galasso includes a similar deficiency as the rejection of claim 1 as unpatentable over Cherneski, Galasso, and Williams. Appeal Br. 16-18; Reply Br. 7-8. Thus, we do not sustain the Examiner’s rejection of independent claim 1 and claims 9-12, which depend therefrom. The rejection of claims 13-19, 25, and 28 as unpatentable over Williams and Galasso The Appellant argues, and we agree, that the Examiner’s rejection of claim 13 as unpatentable over Williams and Galasso includes a similar deficiency as the rejection of claim 1 as unpatentable over Cherneski, Galasso, and Williams. See generally Appeal Br. 18-19; Reply Br. 8. Thus, we do not sustain the Examiner’s rejection of independent claim 13 and claims 14-19, 25, and 28, which depend therefrom. Appeal 2021-005031 Application 15/258,729 7 The rejection of claims 20-22 as unpatentable over Hiraoka, Maihoefer, and Zhang The Appellant argues, among other things, that Maihoefer is not an analogous prior art reference. Appeal Br. 23-24. The Appellant submits that Maihoefer is directed to printed circuit boards and the Examiner does not consider the problem faced by the inventors as explained in the Appellant’s Specification. Appeal Br. 23-24 (citing Spec. ¶¶ 2-5). In response, the Examiner finds that “Maihoefer is drawn to a method of molding which is both in the field of applicant’s endeavor and reasonably pertinent to the particular problem with which the applicant was concerned.” Ans. 11. Also, the Examiner finds that “[c]laim 20 is directed to a method of molding using a flowable material.” Ans. 11. The Appellant’s argument is persuasive. At the outset, we note that two separate tests are used to define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. See In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979); see also In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (citing In re GPAC, Inc., 57 F.3d 1573, 1577 (Fed. Cir. 1995)) (explaining “[t]he identification of analogous prior art is a factual question.”). With regard to the Examiner’s response to the Appellant’s argument, we note that the Examiner does not offer an explanation or support for the finding that Maihoefer is drawn to a method of molding. In our view Appeal 2021-005031 Application 15/258,729 8 Maihoefer pertains to “[a] method for producing printing stencils, especially for screen printing methods, and particularly those for use in filling at least one contact hole formed in a printed-circuit board, a pattern artwork being reproduced on the stencil, which corresponds to an arrangement of contact holes on the printed-circuit board.” Maihoefer, Abstract. Additionally, we note that the Appellant’s field of endeavor does not pertain to the production and use of a stencil, especially a stencil for producing a printed circuit board, like that of Maihoefer. In this regard, we note that the Specification describes the Appellant’s field of disclosure as “relat[ing] to a method for producing an article of clothing which comprises a textile main body and functional elements arranged on the textile main body.” Spec. ¶ 2. Lastly, to the extent that the Examiner finds Maihoefer is reasonably pertinent to the particular problem with which the inventor/Appellant is involved, we determine that this finding is not adequately supported on the record before us. Therefore, we determine that the Examiner, on this record, fails to adequately support the finding that Maihoefer is an analogous prior art reference. Thus, we do not sustain the Examiner’s rejection of independent claim 20 and claims 21 and 22, which depend therefrom. The rejection of claims 29 and 30 as unpatentable over Hiraoka, Maihoefer, Zhang, Galasso, and Williams Claims 29 and 30 depend from independent claim 20. Appeal Br., Claims App. As discussed above, the Examiner’s rejection of claim 20 includes a deficiency and this deficiency is not cured by the Examiner’s Appeal 2021-005031 Application 15/258,729 9 reliance on the teachings of Galasso or Williams. Thus, we do not sustain the Examiner’s rejection of claims 29 and 30. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4-6, 23, 24, 27 103 Cherneski, Galasso, Williams 1, 2, 4-6, 23, 24, 27 1, 9-12 103 Hiraoka, Williams, Galasso 1, 9-12 13-19, 25, 28 103 Williams, Galasso 13-19, 25, 28 20-22 103 Hiraoka, Maihoefer, Zhang 20-22 29, 30 103 Hiraoka, Maihoefer, Zhang, Galasso, Williams 29, 30 Overall Outcome 1, 2, 4-6, 9-25, 27-30 REVERSED