NIKE, Inc.

Patent Trials and Appeals Board

Aug 16, 2021

2020002576 (P.T.A.B. Aug. 16, 2021)

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.
15/209,323 07/13/2016 Patrick Conall Regan 255663/11-0692US01CO 4992
78342 7590 08/16/2021
Shook Hardy & Bacon LLP (NIKE, Inc.)
2555 Grand Boulevard
Kansas City, MO 64108
EXAMINER
LOPEZ ALVAREZ, OLVIN
ART UNIT PAPER NUMBER
2117
NOTIFICATION DATE DELIVERY MODE
08/16/2021 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
nike_docketing@cardinal-ip.com
shbdocketing@shb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PATRICK CONALL REGAN, CHANG-CHU LIAO, and
CHIH-CHI CHANG
____________

Appeal 2020-002576
Application 15/209,323
Technology Center 2100
____________

Before MARC S. HOFF, JOHN A. EVANS, and CATHERINE SHIANG,
Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–20, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Nike, Inc. as the real party in interest. Appeal
Br. 3.

Appeal 2020-002576
Application 15/209,323
2
STATEMENT OF THE CASE
Introduction
The present invention relates to “[m]anufacturing of a shoe or a
portion of a shoe . . . enhanced by automated placement of shoe parts.”
Abstr. “For example, a part-recognition system analyzes an image of a shoe
part to identify the part and determine a location of the part. Once the part is
identified and located, the part can be manipulated in an automated manner.”
Id. Claim 1 is exemplary:
1. A method for positioning and aligning shoe parts in an
automated manner during a shoe-manufacturing process, the
method comprising:
recording a first image of an attachment shoe part
using at least one camera, the first image depicting a two-
dimensional representation of the attachment shoe part;
recording a second image of a base shoe part using
the at least one camera, the second image depicting a
two-dimensional representation of the base shoe part;
identifying at least one reference feature of the
attachment shoe part in the first image depicting the two-
dimensional representation of the attachment shoe part;
determining an identity of the attachment shoe part
by comparing the at least one reference feature identified
in the first image to at least one predetermined reference
feature of a shoe-part reference image;
determining, from the first image, a first geometric
coordinate of the attachment shoe part in a geometric
coordinate system;
determining, from the second image, a second
geometric coordinate of the base shoe part in the
geometric coordinate system;
communicating the first and the second geometric
coordinates to a part-transfer apparatus which operates in
the geometric coordinate system; and
transferring, by the part-transfer apparatus, the
attachment shoe part from the first geometric coordinate
to the second geometric coordinate to align the
Appeal 2020-002576
Application 15/209,323
3
attachment shoe part with the base shoe part for
attachment in the shoe-manufacturing process.

References and Rejections2
Claim(s)
Rejected
35 U.S.C. § References
1–7, 9–12,
14–20
103(a)3 Heiml (WO 2010/034044 A2, pub. Apr. 1, 2010)
(as translated), Cremaschi (US 2006/0155417 A1,
pub. July 13, 2006), Nishida (US 4,803,735, iss.
Feb. 7, 1989)
8 103(a) Heiml, Cremaschi, Nishida, Falk (US 5,255,352,
iss. Oct. 19, 1993)
134 103(a) Heiml, Cremaschi, Nishida, Harvill (US
2010/0036753 A1, pub. Feb. 11, 2010)

ANALYSIS
Obviousness5
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contentions that the Examiner erred in determining that the cited portions of
Heiml, Cremaschi, and Nishida collectively teach
recording a first image of an attachment shoe part
using at least one camera, the first image depicting a two-
dimensional representation of the attachment shoe part;

2 Throughout this opinion, we refer to the (1) Final Office Action dated
April 4, 2019 (“Final Act.”); (2) Appeal Brief dated October 3, 2019
(“Appeal Br.”); and (3) Examiner’s Answer dated December 12, 2019
(“Ans.”).
3 The Examiner has withdrawn the double patenting rejection of claims 1–
20. Ans. 3.
4 The heading of the rejection for claim 13 is on page 34 of the Non-Final
Action dated July 5, 2018.
5 Appellant raises additional arguments. Because the identified issue is
dispositive of the appeal, we do not address the additional arguments.
Appeal 2020-002576
Application 15/209,323
4
recording a second image of a base shoe part using
the at least one camera, the second image depicting a
two-dimensional representation of the base shoe part;
. . .
determining, from the first image, a first geometric
coordinate of the attachment shoe part in a geometric
coordinate system;
determining, from the second image, a second
geometric coordinate of the base shoe part in the
geometric coordinate system;
. . .
transferring, by the part-transfer apparatus, the
attachment shoe part from the first geometric coordinate
to the second geometric coordinate to align the
attachment shoe part with the base shoe part for
attachment in the shoe-manufacturing process,

as recited in independent claim 1 (emphases added). See Appeal Br. 16–20.
The Examiner cites Heiml’s Figure 1 and pages 2 and 15;
Cremaschi’s Figure 10 and paragraphs 127 and 128; and Nishida’s Figure 1
and column 2 for teaching the italicized limitation. See Final Act. 11–14.
We have reviewed the cited prior art portions, and do not agree with
the Examiner’s findings. In particular, the Examiner cites Heiml for
teaching the claimed “first geometric coordinate.” Final Act. 10. The
Examiner finds “the combination of Heiml and Cremaschi . . . does not
explicitly teach . . . determining from the second image a second geometric
coordinate,” but finds Nishida teaches that limitation. Final Act. 13
(emphasis omitted). The Examiner concludes “it would have been obvious .
. . to . . . have modified Heiml-Cremaschi to include” Nishida’s feature of “a
second geometric coordinate.” Final Act. 14 (emphasis omitted). As a
result, the proposed combination includes Heiml’s “first geometric
coordinate” and Nishida’s feature of “a second geometric coordinate.” We
Appeal 2020-002576
Application 15/209,323
5
find that the Examiner does not adequately explain why the resulting
combination teaches or suggests “transferring . . . the attachment shoe part
from the first geometric coordinate to the second geometric coordinate to
align the attachment shoe part with the base shoe part for attachment,” as
required by claim 1.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of independent claim 1, and independent
claims 10 and 14 for similar reasons.
We also reverse the Examiner’s rejections of corresponding dependent
claims 2–9, 11–13, and 15–20. Although the Examiner cites additional
references for rejecting some dependent claims, the Examiner has not shown
the additional references overcome the deficiency discussed above in the
rejection of claim 1.

CONCLUSION
We reverse the Examiner’s decision rejecting claims 1–20 under 35
U.S.C. § 103.
In summary:

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–7, 9–12,
14–20
103 Heiml, Cremaschi,
Nishida
1–7, 9–12,
14–20
8 103 Heiml, Cremaschi,
Nishida, Falk
8
13 103 Heiml, Cremaschi,
Nishida, Harvill
13
Overall
Outcome
1–20
REVERSED