NIKE, Inc.Download PDFPatent Trials and Appeals BoardJun 1, 20212020005466 (P.T.A.B. Jun. 1, 2021) 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. 15/189,281 06/22/2016 Thomas G. Bell 11-1258US61/005127.01927\ 8338 115726 7590 06/01/2021 BANNER & WITCOFF, LTD & attorneys for client 005127 1100 13th STREET NW SUITE 1200 WASHINGTON, DC 20005 EXAMINER LYNCH, MEGAN E ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 06/01/2021 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): PTO-115726@bannerwitcoff.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 THOMAS G. BELL, TOBIE D. HATFIELD, CHIP JONES, BROOKE P. RAPF, and RICARDO SALINAS JR. ____________________ Appeal 2020-005466 Application 15/189,281 Technology Center 3700 ____________________ Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and JILL D. HILL, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Action (dated Mar. 8, 2019, hereinafter “Final Act.”) rejecting claims 1–20 under 35 U.S.C. § 103(a) as unpatentable over Lyden2 and Norton.3 We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. NIKE, Inc. is identified as the real party in interest in Appellant’s Appeal Brief (filed Sept. 9, 2019, hereinafter “Appeal Br.”). Appeal Br. 1. 2 Lyden, US 5,384,973, issued Jan. 31, 1995. 3 Norton, US 4,559,724, issued Dec. 24, 1985. Appeal 2020-005466 Application 15/189,281 2 SUMMARY OF DECISION We REVERSE. CLAIMED SUBJECT MATTER The invention relates “to a golf shoe having structures to support and enhance the natural motion and feel of the shoe, e.g., more akin to the feel when barefoot.” Spec., para. 2. Claims 1, 12, and 17 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A golf shoe, comprising: an upper defining at least a portion of an interior chamber for receiving a foot; and a sole structure engaged with the upper, wherein the sole structure includes: a midsole component formed, at least in part, from a polymeric foam material, a first longitudinal flexion groove defined, at least in part, in the midsole component, a first transverse flexion groove defined, at least in part, in the midsole component, a second transverse flexion groove located on a forefoot side of the first transverse flexion groove and defined, at least in part, in the midsole component, an outsole engaged with the midsole component, wherein the outsole includes at least: (a) a first portion located on a lateral side of the first longitudinal flexion groove between the first transverse flexion groove and the second transverse flexion groove, and (b) a second portion located on a medial side of the first longitudinal flexion groove between the first transverse flexion groove and the second transverse flexion groove, wherein the second portion of the outsole includes a side wall portion that extends continuously from a bottom Appeal 2020-005466 Application 15/189,281 3 surface to a medial side surface of the midsole component, a first cleat element provided with the first portion of the outsole, and a second cleat element extending outward from the side wall portion of the second portion of the outsole in a sideways direction. Appeal Br. 24 (Claims Appendix). ANALYSIS The Examiner finds Lyden discloses a golf shoe including, inter alia, an outsole having first and second portions 82b'', 82a'' located on lateral and medial sides, respectively, of first longitudinal flexion groove 67'' between first and second transverse flexion grooves 69'', 68'', wherein first portion 82b" “includes a side wall portion (i.e. tab extending beyond perimeter of the sole) that extends continuously from a bottom surface.” Final Act. 3 (citing Lyden, Fig. 3). The Examiner further finds that “Lyden does not disclose the side wall portion extending from the second portion [82a"] to a medial side of the sole.” Id. at 4. Nonetheless, the Examiner determines that it would have been obvious to a person of ordinary skill in the art “to have modified the second portion [82a''] of Lyden to have a side wall portion extending to the medial side of the sole, in order to provide the optimum outsole configuration for supporting a user’s foot.” Id (emphasis added). The Examiner notes that “it has been held that rearranging parts of an invention involves only routine skill in the art.” Id (citing MPEP § 2144.04 (VI)). The Examiner further finds that the sidewall portion of Lyden (i.e., tab), as modified, does not “extend[] to a side surface of the footwear” such Appeal 2020-005466 Application 15/189,281 4 that a “second cleat element extend[s] outward from the side wall portion of the outsole in a sideways direction.” Id. Thus, the Examiner relies on Norton to disclose a sole having a continuous side wall portion 50a extending to a side surface of the footwear such that second cleat element 54f extends outward from the side wall portion in a sideways direction. Id. The Examiner concludes that it would have been obvious for a skilled artisan to have [further] modified the outsole of Lyden such that the sidewall extend[s] to a side surface of the midsole with a cleat element projecting sideways, as taught by Norton, in order to provide increased traction at an inner toe portion of a user’s foot for contacting slick surfaces or a sports ball. Id. Appellant argues that the Examiner’s reasoning to move Lyden’s extension portions (tabs) from the lateral to the medial side of the footwear, namely, “to provide the optimum outsole configuration for supporting a user’s foot” and “because it is an obvious ‘rearrangement of parts’,” “is based on Appellant’s [S]pecification and the use of improper hindsight.” Appeal Br. 16. According to Appellant, “there is no evidence to support the Examiner’s assertion that such a ‘rearrangement’ of the Lyden sole parts— from the lateral side to the medial side—would ‘provide the optimum outsole configuration for supporting a user’s foot.’” Id. Appellant further contends that “moving the extensions to the medial side of the sole—would destroy the intended benefit of the extensions in the Lyden/Norton sole structure by not providing the desired traction and support at the outside ball area of the foot.” Id. at 18; see also Norton, col. 2, ll. 33–37 (“Traction and flexibility are further enhanced by a pair of lateral traction extensions [50A, 50B].”). Appeal 2020-005466 Application 15/189,281 5 In response, the Examiner notes that the “rejection does not suggest eliminating the lateral extensions,” but rather, “provide[s] the second portion of Lyden with a side wall/extension . . . in addition to, not instead of, the lateral extensions.” Examiner’s Answer (dated May 19, 2020, hereinafter “Ans.”) 11 (emphasis added). According to the Examiner, such a modification “would clearly provide added traction, a known improvement in the footwear art that results from providing additional cleat elements in various places on a sole.” Id. at 12. The Examiner explains that “the addition of a traction element on the medial side of Lyden would serve the purpose of enhanced traction and stability to a user, for athletic events that require additional traction at the medial side of the foot.” Id. at 9. A conclusion of obviousness must be supported by explicit findings and analysis establishing an adequate reason to combine the known elements in the manner required in the claims at issue. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this case, it is undisputed that Lyden fails to disclose a sidewall portion extending from second portion 82a" on the medial side of the sole. See Final Act. 4; Ans. 6 (“Lyden does not teach these elements.”). Rather, Lyden’s sidewall portion (tab), extends from first portion 82b" on the lateral side of the sole. See Lyden, Fig. 3. We appreciate Appellant’s position that Lyden fails to explicitly explain why the sidewall portion (tab) extends from first portion 82b" located on the lateral side of the shoe. See Reply Brief (filed July 20, 2020, hereinafter “Reply Br.”) 3. Appellant is correct that Lyden explains that “when running, people tend to land a step on the rear lateral side of the foot, and then the foot rolls forward and inward until it leaves the ground for the next step.” See Appeal Br. 16 (citing Lyden, col.1, l. 53–col. 2, l. 34, Fig. Appeal 2020-005466 Application 15/189,281 6 15) (emphasis added). Appellant is also correct that Norton’s sidewall portion, i.e., traction extensions 50A, 50B, located on the lateral side of a track (i.e., running) shoe, allows cleats 54f to function as “ground engaging elements along the outside of the ball of the foot.” See Reply Brief 4 (citing Norton, col. 4, ll. 52–55, Fig. 2). As such, in light of the teachings of Leyden and Norton, we agree with Appellant that a skilled artisan would readily understand that in a running shoe the location of the sidewall portion, i.e., traction extensions or tabs, on the lateral side of the shoe has a specific purpose, namely, to provide “traction and stability at the outside ball of the foot.” Appeal Br. 17. In particular, the Examiner’s determination of obviousness is not supported by sufficient explanation or citation to reflect a rational relationship between providing an additional sidewall extension (tab) to Lyden’s second portion 82a" located on the medial side of the shoe, wherein the sidewall extends to a side surface of the midsole with a cleat element projecting sideways, as taught by Norton, and the purpose of making such a modification in the context of Lyden’s shoe. Although we appreciate the Examiner’s position that additional cleat elements provide for improved traction (see Ans. 12), this does not adequately explain why a skilled artisan would have provided additional cleats specifically on a sidewall extension (tab) located on the medial side of Lyden’s shoe, rather than in other areas 140 on Lyden’s outsole. See Lyden, Figs. 3, 27. We also do not agree with the Examiner’s position that the modification is a mere “rearrangement of parts” (see Final Act. 4; Ans. 11) because providing an additional sidewall extension (tab) to Lyden’s second portion 82a" located on the medial side of the shoe, wherein the sidewall extends to a side surface of the midsole with a Appeal 2020-005466 Application 15/189,281 7 cleat element projecting sideways, as taught by Norton, would result in both lateral and medial stabilization, and, thus, would change the mode of operation of Lyden’s shoe. See In re Japikse, 181 F.2d 1019 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.). Furthermore, the Examiner’s reasoning that the modification provides “enhanced traction and stability . . . for athletic events that require additional traction at the medial side of the foot” (see Ans. 9) does not sufficiently explain in what context the modification to provide sidewall extensions (tabs) to both the lateral and medial sides of Lyden’s shoe, would be suitable when considering the purpose of the shoe. Although we appreciate the Examiner’s position that the modification would be useful when additional traction is needed “at the medial side of the foot,” nonetheless, the Examiner has not made any finding as to the particular shoe called for in the claim, namely, a golf shoe, or for that matter for any particular type of shoe that would require such additional traction. The mere fact that elements can be combined is not, in itself, a reason to combine them. Rather, an obviousness rejection further must adequately explain the reasoning by which those findings support the Examiner’s conclusion of obviousness. In conclusion, for the foregoing reasons, the Examiner fails to articulate a sufficient reason with rational underpinnings to provide an additional sidewall extension (tab) to Lyden’s second portion 82a" located on the medial side of the shoe, wherein the sidewall extends to a side surface of the midsole with a cleat element projecting sideways, as taught by Appeal 2020-005466 Application 15/189,281 8 Norton. As such, without a persuasive articulated rationale based on rational underpinnings for providing an additional sidewall extension (tab) to Lyden’s second portion 82a" located on the medial side of the shoe, according to Norton, the Examiner’s rejection appears to be the result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR, 550 U.S. at 418). Accordingly, we do not sustain the rejection under 35 U.S.C. § 103(a) of claims 1–20 as unpatentable over Lyden and Norton. CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 103(a) Lyden, Norton 1–20 REVERSED Copy with citationCopy as parenthetical citation