NIKE, Inc.

Patent Trials and Appeals Board

Jun 1, 2021

2020005466 (P.T.A.B. Jun. 1, 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.
15/189,281 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.
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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
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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
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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].”).
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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.
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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
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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
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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