Ex Parte Lambert et al

Patent Trial and Appeal BoardAug 31, 2017

13437722 (P.T.A.B. Aug. 31, 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. 13/437,722 04/02/2012 William Paul Lambert 526211 8029 30955 7590 09/05/2017 T ATHROP ^ GAGV. T T P EXAMINER 4845 PEARL EAST CIRCLE ROLLAND, ALEX A SUITE 201 BOULDER, CO 80301 ART UNIT PAPER NUMBER 1712 NOTIFICATION DATE DELIVERY MODE 09/05/2017 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): patent @ lathropgage. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM PAUL LAMBERT, OLIVER MA, OTTO TING, and PATRICK LIAO Appeal 2017-001377 Application 13/437,722 Technology Center 1700 Before PETER F. KRATZ, GEORGE C. BEST, and DEBRA L. DENNETT, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35U.S.C. § 134 from the Examiner’s final rejection of claim 1. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellants’ claimed invention is directed to an ethylene vinyl acetate- based (EVA) injected molded shoe having a unitary molded base section formed of an upper and a sole, wherein the base section has a plurality of holes and having a pattern formed on the upper. According to Appellants’ claimed invention, the use of a mask carrier with a horn can stretch the base section with sufficient tightness such that coating spray cannot completely Appeal 2017-001377 Application 13/437,722 penetrate openings in the base section during spray coating operations employed in making a pattern on the product shoe upper. Claim 1 is reproduced below: 1. A shoe produced according to a method including the steps of: molding a base section by injecting a first ethylene vinyl acetate-based (EVA) resin into a mold to form a unitary molded base section formed of an upper and a sole, the base section having a plurality of openings; expanding the base section by removal of the base section from the mold, masking the upper by placing the base section on a mask carrier including a horn that presents a selected portion of the upper and stretches the base section with sufficient tightness that spray cannot completely penetrate openings in the base section; and thereafter moving the mask carrier through one or more coating stations to conduct spray coating on the selected portion of said upper with a liquid EVA material mixed with a colorant to impart bonding compatibility with the upper and to form a pattern on the upper. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Ishimoto US 4,181,761 Jan. 1, 1980 Davis US 6,533,885 B2 Mar. 18,2003 Seamans US 6,993,858 B2 Feb. 7,2006 The Examiner maintains the following grounds of rejection: Claim 1 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Seamans in view of Davis and Ishimoto. We reverse the stated rejection. Our reasoning follows. 2 Appeal 2017-001377 Application 13/437,722 The Examiner finds that Seamans teaches or suggests breathable footwear that is made with an EVA injection molded base section, which base section includes a sole and an upper section (Final Act. 3^4; Seamans, col. 4,11. 45^19, col. 7,11. 50-66, col. 8,11. 37—40). The Examiner finds that Seamans fails to disclose the application of EVA and a colorant mixture onto the upper to form a pattern thereon, as required by Appellants’ claim 1 (Final Act. 4). The Examiner finds that Davis discloses the use of a coating method, such as screen printing, wherein material used in making an upper portion of footwear can be decorated before or after molding (Final Act. 4; Davis, col. 7,11. 5—24). The Examiner finds that Davis, unlike Seamans, forms the footwear upper separately and thereafter attaches the upper “to the rest of the shoe” and that “Davis also teaches the screen printing as an alternative process,” which alternative involves “a selective coating process that would avoid overspray and prevent coating material from entering the interior of the shoe” (Final Act. 5—6). The Examiner finds that Ishimoto teaches, inter alia, a method for coating shaped EVA articles with a EVA resin solution (Final Act. 4; Ishimoto, Abstract, col. 1,11. 41—65, col. 2,11. 3—12, col. 3,11. 3—21, col. 4, 11. 35-68). The Examiner maintains that (Final Act. 5): Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to practice the method taught by Seamans and include a posttreatment decorating step because Davis states it is desirable to print on an EVA upper after molding to produce a desired aesthetic effect. Additionally, it would have been obvious to one of ordinary skill in the art at the time the invention was made to practice the 3 Appeal 2017-001377 Application 13/437,722 method of Seamans and Davis and use an EVA coating to achieve the decorative effect because Ishimoto states that an EVA coating will bond to an EVA substrate. As argued by Appellants, however, the Examiner has not established that Davis teaches or suggests that its post-treatment decorative coating step or screen printing step pertaining to its shoe upper material 500 can be applied as a coating step to a unitary molded base section of a shoe, wherein the unitary molded base section includes an upper and a sole and wherein the base section has a plurality of openings formed in the shoe upper, such as provided for in the base section of the shoe of Seamans, to thereby form a pattern on the upper of the unitary molded base section as required by appealed claim 1 (Reply Br. 4—5; App. Br. 9; Davis, col. 7,11. 5—24). In this regard, Davis teaches its coating/screen printing step is applied to a footwear upper material 500 prior to its subsequent assembly into the shape of a shoe, such as by stitching, and prior to its combination and assembly with other parts/layers of the shoe, including the shoe sole, in completing the shoe construction of Davis, which construction does not include a unitary molded base section, onto which unitary construction a coating pattern is formed, as required by claim 1 (App. Br. 9-10; Davis, col. 8,1. 64—col. 9,1. 21, col. 11, 11. 31—46). Appellants contend that the Examiner has not specifically pointed to where any of the applied prior art references provide support for the Examiner’s contentions concerning screen printing that undergird the Examiner’s position that it would have been “within the purview of one of ordinary skill in the art to use a screen printing process to produce a coated unitary shoe” (Reply Br. 5—7; Ans. 2—3). 4 Appeal 2017-001377 Application 13/437,722 As stated in KSRInt’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), ‘“[R]ejections 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’” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner has not otherwise carried the burden to fully address the differences in the teachings of Davis and/or Ishimoto with the teachings of Seamans and the claimed subject matter and adequately explain why, regardless of the differences, one of ordinary skill in the art would have been led by the teachings of Davis and/or Ishimoto to modify Seamans in a manner to arrive at a product corresponding to that claimed by Appellants. Thus, the record indicates that the Examiner used impermissible hindsight in rejecting the Appellants’ claims. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). Accordingly, we do not sustain the Examiner’s rejection. CONCLUSION The Examiner’s decision to reject the appealed claims is reversed. REVERSED 5