Ex Parte Jarvis

Patent Trial and Appeal Board

Mar 24, 2017

13357682 (P.T.A.B. Mar. 24, 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.
13/357,682 01/25/2012 Kelly B. Jarvis 005127.01671/11-1361 2197
115726 7590 03/28/2017
BANNER & WITCOFF, LTD
& attorneys for client 005127
1100 13th STREET NW
SUITE 1200
WASHINGTON, DC 20005
EXAMINER
BELL, WILLIAM P
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
03/28/2017 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):
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 KELLY B. JARVIS
Appeal 2015-002833
Application 13/357,682
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s March
13, 2014 decision finally rejecting claims 21—24, 26, and 44—66 (“Final Act.”).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral hearing
was held on March 14, 2017.
We reverse.
1 Appellant identifies the real party in interest as Nike, Inc. (Appeal Br. 2).
Appeal 2015-002833
Application 13/357,682
RELATED APPEALS
Appellant identifies the following related appeals, each of which has
now been decided by the Patent Trial and Appeal Board: Appeal No. 2014-
001216 (Appln. No. 12/255,496 (“’496 Appln.”), parent of the application
subject to the present appeal); Appeal No. 2014-009853 (Appln. No.
12/433,097, claims priority from the ‘496 Appln.); Appeal No. 2014-009689
(Appln. No. 12/433,109, claims priority from the ‘496 Appln.); Appeal No.
2014-009838 (Appln. No. 13/357,727, claims priority from the ‘496
Appln.); Appeal No. 2014-009814 (Appln. No. 13/357,766, claims priority
from the ‘496 Appln.).
CLAIMED SUBJECT MATTER
Appellant’s invention is directed to a method of manufacturing an article
of footwear, and portions of articles of footwear, by scanning the foot of the user
and using the data from the scan to create a three dimensional design of the
article, and then using a technique of laser sintering thermoplastic materials to
manufacture the article (see, generally, Abstract). Details of the claimed
invention are set forth in independent claims 21 and 59, which are reproduced
below from the Claims Appendix:
21. A method of manufacturing an article of footwear,
comprising:
performing a scan of a foot of a user;
creating a data file including a three-dimensional design
of the article of footwear based on the scan performed;
manufacturing the article of footwear including:
forming an upper based on the scan including laser
sintering a first thermoplastic elastomer material;
forming a sole structure based on the scan including laser
sintering a second thermoplastic elastomer material to form a
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Appeal 2015-002833
Application 13/357,682
midsole impact force attenuation system for the sole structure,
wherein the sole structure is formed as a separate part from the
upper; and
engaging the upper with the sole structure.
59. A method of manufacturing a sole structure for an article of
footwear, comprising:
performing a scan of a foot of a user;
creating a data file including a three-dimensional design
of at least a portion of an article of footwear based on the scan
performed;
fusing particles of a thermoplastic elastomer material
together using laser energy to form a midsole impact force
attenuation system of a sole structure for an article of footwear
based on information from the data file generated from the
scan; and
engaging the midsole impact force attenuation system
with an outsole separate from the midsole impact attenuation
system to form a sole structure.
REJECTIONS
I. Claims 21—24, 26, 44-49, 52, 53, 57, 59, 60, and 63 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Piller2 in view of
Martinoni,3 and further in view of Kramer4 and Klavano.5
2 Piller, Frank, “Footwear Application Customization 3.0: The First Rapid
Manufactured Shoe”, Mass Customization & Open Innovation News,
published on-line 24 October 2006 at http://masscustomization.
blogs.com/mass_customization_open_i/2006/l O/footwear custom, html, 4
pages, of record).
3 Martinoni et al., US 2007/0045891 Al, published March 1, 2007.
4 Kramer, US 5,233,767, issued August 10, 1993.
5 Klavano, US 2008/0155855 Al, published July 3, 2008.
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Application 13/357,682
II. Claims 50 and 51 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pillerin view of Martinoni, Kramer, and Klavano,
and further in view of Kubota.6
III. Claim 54 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pillerin view of Martinoni, Kramer, and Klavano, and
further in view of Bolton.7
IV. Claim 55 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pillerin view of Martinoni, Kramer, and Klavano, and
further in view of Bolton and Urakami.8
V. Claim 56 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Piller in view of Martinoni, Kramer, and Klavano, and
further in view of Fried9 and Urakami.10
VI. Claim 58 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pillerin view of Martinoni, Kramer, and Klavano, and
further in view of Schmidt.* 11
VII. Claims 64—66 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pillerin view of Martinoni, Kramer, and Klavano, and
further in view of Z-Corporation.12
6 Kubota et al., JP-013198801 A, published August 30, 1991.
7 Bolton et al., US 2,288,388, issued June 30, 1942.
8 Urakami, US 5,588,900, issued December 31, 1996.
9 Fried, US 2007/0016323 Al, published January 18, 2007.
10 Lach, US 1,887,026, issued November 8, 1932.
11 Schmidt, US 2001/0036516 Al, published November 1, 2001.
12 (“Z Corporation 30 Printing Technology”, available at
http://www.zcorp.com/documents/108_3D%20Printing%20White%20Paper
%20FINAL.pdf, 2005, of record).
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Application 13/357,682
DISCUSSION
Because we decide this appeal based on limitations and reasoning
which are common to independent claims 21 and 59 and, therefore, common
to each of the claims, we focus our discussion on the obviousness rejections of
claims 21 and 59.
Appellant has not disputed that each of the elements of the claims are
shown in the prior art (see, generally, Appeal Br. 9-14). However,
Appellant contends that the Examiner has not provided an adequate
explanation of why a person of skill in the art would have combined the
cited art in the manner needed to arrive at the claimed processes. For
example, Appellant has argued that the Examiner has not adequately
established why a person of skill in the art would have used the
thermoplastic materials disclosed by Martinoni in the process taught by
Piller (Appeal Br. 11).
The Supreme Court has rejected a rigid requirement of a teaching,
suggestion or motivation to combine known elements in order to show
obviousness, but has emphasized that “rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” KSRInt’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
In relying on a combination of prior art references, the Examiner’s
proposed modification cannot render a prior art reference unsatisfactory for
its intended purpose. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
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Application 13/357,682
In this instance, we agree with Appellant that the Examiner’s stated
rationale that modifying Piller in the manner required to arrive at the
claimed invention would render Piller unsatisfactory for its intended
purpose.
The Examiner determines that:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to have modified the method taught by
Piller, as modified by Martinoni, by separately forming the
upper, an outsole forming the majority of the sole structure, and a
separate midsole impact attenuation system, each produced by
laser sintering of different thermoplastic elastomers; engaging the
midsole impact attenuation system with the outsole using an
adhesive; and then engaging the upper and the assembled midsole
and outsole together for the benefit ofproviding a fully
customized shoe with different flexibilities and other mechanical
properties for the outsole, the midsole impact attenuation system,
and the upper.
(Final Act 4—5). However, as argued by Appellant (Appeal Br. 13), Piller is
plainly directed to a method for making a shoe in a single step (Piller, p. 2,
12). While it is not disputed that it was known in the art to prepare soles and
uppers separately and then to join them together, Piller itself touts its method
as avoiding any manufacturing steps other than the laser sintering step. The
Examiner finds that “the express purpose of Piller is to create a rapidly
manufactured customized shoe” (Ans. 3). However, Piller explicitly states
that the advantage of its system is that its shoes “come[] out of the
manufacturing machine as you see it in the pictures on the left - in one
manufacturing process, no assembly required''’ (Piller, p. 2,12, emphasis
added).
Thus, we determine that the preponderance of the evidence of record
shows that the additional manufacturing steps recited by claim 21 (“engaging
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Application 13/357,682
the upper with the sole structure”) and claim 59 (“engaging the midsole
impact force attenuation system with an outsole separate from the midsole
impact attenuation system to form a sole structure”) would render Piller,
which is necessary for the rejections set forth by the Examiner, unsatisfactory
for its intended purpose. None of the additional references cited in Rejections
II-VII cures this deficiency in the rejections.
We are, therefore, constrained to reverse the rejections on appeal. In re
Gordon, 733 F.2d at 902.
CONCLUSION
We REVERSE the rejection of claims 21—24, 26, 44^49, 52, 53, 57,
59, 60, and 63 under 35 U.S.C. § 103(a) as being unpatentable over Piller in
view of Martinoni, and further in view of Kramer and Klavano.
We REVERSE the rejection of claims 50 and 51 under 35 U.S.C. § 103(a)
as being unpatentable over Piller in view of Martinoni, Kramer, and Klavano,
and further in view of Kubota.
We REVERSE the rejection of claim 54 under 35 U.S.C. § 103(a) as
being unpatentable over Piller in view of Martinoni, Kramer, and Klavano,
and further in view of Bolton.
We REVERSE the rejection of claim 55 under 35 U.S.C. § 103(a) as
being unpatentable over Piller in view of Martinoni, Kramer, and Klavano,
and further in view of Bolton and Urakami.
We REVERSE the rejection of claim 56 under 35 U.S.C. § 103(a) as
being unpatentable over Piller in view of Martinoni, Kramer, and Klavano,
and further in view of Fried and Urakami.
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Appeal 2015-002833
Application 13/357,682
We REVERSE the rejection of claim 58 under 35 U.S.C. § 103(a) as
being unpatentable over Pillerin view of Martinoni, Kramer, and Klavano,
and further in view of Schmidt.
We REVERSE the rejection of claims 64-66 under 35 U.S.C. § 103(a)
as being unpatentable over Piller in view of Martinoni, Kramer, and
Klavano, and further in view of Z-Corporation.
REVERSED
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