Ex Parte TurnerDownload PDFPatent Trial and Appeal BoardDec 21, 201713485739 (P.T.A.B. Dec. 21, 2017) 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. 13/485,739 05/31/2012 David Turner 11-1757US58/NIKE.213059 1224 78342 7590 12/26/2017 SHOOK, HARDY & BACON L.L.P. (NIKE, INC.) INTELLECTUAL PROPERTY DEPARTMENT 2555 GRAND BLVD. KANSAS CITY, MO 64108-2613 EXAMINER PIERORAZIO, JILLIAN KUTCH ART UNIT PAPER NUMBER 3765 NOTIFICATION DATE DELIVERY MODE 12/26/2017 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): IPDOCKET@SHB.COM IPRCDKT@SHB.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 DAVID TURNER Appeal 2017-002516 Application 13/485,739 Technology Center 3700 Before JENNIFER D. BAHR, WILLIAM A. CAPP and LEE L. STEPINA, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 1—12. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Nike, Inc., is identified as the real-party-in-interest. Appeal Br. 4. Appeal 2017-002516 Application 13/485,739 THE INVENTION Appellant’s invention relates to an apparel garment with cushions or pads. Spec. 13. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An article of apparel incorporating at least one cushioning element for attenuating impact forces, the cushioning element comprising: a first material layer and a second material layer, the first material layer being formed from an at least partially transparent material; and a pad component located between the first material layer and the second material layer, the pad component including a polymer foam material that defines at least one of a groove and a void, and the pad component including a surface that includes a bonding agent that joins the pad component to the first material layer, the polymer foam material having a first color and the bonding agent having a second color that is different than the first color, the polymer foam material and the bonding agent being visible through the first material layer. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Weder US 5,633,055 May 27, 1997 Cormier US 2005/0161982 A1 July 28, 2005 Turner US 2011/0061154 A1 Mar. 17,2011 Bems US 2011/0209275 A1 Sept. 1,2011 Shiue US 2013/0160179 A1 June 27, 2013 The following rejections are before us for review: 1. Claims 1^4 are rejected under 35 U.S.C. § 103(a), as being unpatentable over Bems, Turner, and Shiue. 2 Appeal 2017-002516 Application 13/485,739 2. Claims 5—8 are rejected under 35 U.S.C. § 103(a), as being unpatentable over Bems, Turner, and Weder. 3. Claims 9, 10, and 12 are rejected under 35 U.S.C. § 103(a), as being unpatentable over Bums and Turner. 4. Claim 11 is rejected under 35 U.S.C. § 103(a), as being unpatentable over Bems, Turner, and Cormier. OPINION Unpatentability of Claims 1—4 Over Berns, Turner, and Shiue Appellant argues claims 1—4 as a group. Appeal Br. 12—14. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that Bems discloses the claimed invention except for: (1) a first material formed of transparent material with the polymer foam material and bonding agent being visible through the transparent material; and (2) a bonding agent with a second/different color. Final Action 3—5. The Examiner relies on Turner for the first material. Id. at 4. The Examiner relies on Shiue for the differently colored bonding agent. Id. at 5. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify Bems with the teachings of Turner and Shiue to achieve the claimed invention. Id. According to the Examiner, a person of ordinary skill in the art would have done this to have a breathable layers for wearer comfort and have an “ascetic [sp. ‘aesthetic’]” appearance.2 Id. 2 From the context in which it is used, we view the Examiner’s use of “ascetic” as an inadvertent typographic error and that “aesthetic” was intended instead. 3 Appeal 2017-002516 Application 13/485,739 Appellant traverses the Examiner’s rejection by arguing that the Examiner failed to provide a rationale to support the proposed combination of references. Appeal Br. 12. However, the Examiner’s rationale for the combination is noted in the previous paragraph and is adequate to support the rejection. Appellant argues that Bems discloses a thermal plastic adhesive whereas Shiue discloses a rubber glue. Id. Appellant argues that rubber and thermal plastic are incompatible. Id. In response, the Examiner states that Shiue is merely relied on for its color teaching, not the chemical composition of its bonding agent. Ans. 4. Appellant’s incompatible bonding agent argument is not persuasive. The obviousness inquiry does not ask “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). “It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). Appellant next argues that the Examiner’s proposed combination fails to teach or suggest a polymer foam material having a first color and the bonding agent having a second color that is different than the first color. Appeal Br. 12—13. Appellant argues that Shiue merely teaches a rubber coating that is brushed onto the outer surface of a garment to repel water. Id. Appellant contends that Shiue’s rubber composition does not serve as a bonding agent. Id. at 13 (“There is no indication in Shiue that the rubber 4 Appeal 2017-002516 Application 13/485,739 glue coating would serve to secure a material layer to a pad component layer”).3 In response, the Examiner states the Bems is relied on for the “bonding agent” limitation. Ans. 4. According to the Examiner, Shiue is merely relied on as teaching a bonding agent with a different color. Id. In response to Appellant’s argument that Shiue’s glue is not used as a bonding agent, the Examiner finds that “Shiue’s glue element 140 is structurally and functionally a glue.” Id. Shiue is directed toward a surface-treated water sports garment. Shiue, Abstract. Shiue’s garment has an outer layer of “rubber glue.” Shiue 125. Shiue also teaches that: In FIG. 1A, the sewed pieces of laminated sheets 150a and 160a are made by sequentially laminating a first fabric layer 110, a rubber sponge layer 120, and a rubber glue layer 140. A seam 170a is formed by gluing and sewing the laminated sheets 150a and 160a arranged side by side. Id. at 118 (emphasis added). Shiue’s express teaching that seam 170a is formed “by gluing” effectively refutes Appellant’s position that Shiue fails to disclose a bonding agent that is capable of securing a material layer to a pad component layer. In the Reply Brief, Appellant argues that Shiue fails to teach a second color that is different from a first color. Reply Br. 4. Appellant emphasizes that Shiue only discloses a single color, such as carbon black, but does not disclose two colors that are different from each other. Id. 3 Similarly, “[tjhough Shiue uses the term 'glue' in the disclosure, there is no indication that the substance disclosed could be used as a material to adhere two items.” Id. at 14. 5 Appeal 2017-002516 Application 13/485,739 Appellant’s “second color” argument is raised for the first time in the Reply Brief. The substance of Appellant’s Appeal Brief that the Examiner’s proposed combination “fails to teach a polymer foam material having a first color and the bonding agent having a second color that is different than the first color” was aimed at whether Shiue’s glue was a bonding agent. See Appeal Br. 12—14. Appellant did not develop and present a “second color” argument until the Reply Brief. The Examiner responded to Appellant’s “bonding agent” argument in the Answer. See Ans. 3^4. The Examiner did not address a “second color” issue in the Answer. Id. The manner in which Appellant briefed its traverse to the claim 1 rejection apparently led the Examiner to believe that Appellant’s argument was directed to the “bonding agent” issue to the exclusion of a “second color” issue. A fair reading of Appellant’s Appeal Brief supports this position. Therefore, the Examiner was effectively precluded from responding to Appellant’s “second color” argument, which was not articulated as such until the Reply Brief. Under the circumstances, we will not consider Appellant’s belated “second color” argument. See 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief which was not raised in the appeal brief. . . will not be considered by the Board for purposed of the present appeal”).4 In view of the foregoing discussion, we determine the Examiner's findings of fact are supported by a preponderance of the evidence and that the Examiner's legal conclusion of unpatentability is well-founded. 4 In any event, we deem it unlikely that a person of ordinary skill in the art would understand Turner and Shiue as both teaching that same uniform color for all colored components, particularly where Turner teaches that its pad components 230 may have different colors and that pad components 230 and frame 240 components may have different colors. See Turner, | 58. 6 Appeal 2017-002516 Application 13/485,739 Accordingly, we sustain the Examiner's unpatentability rejection of claims 1—4. Unpatentability of Claims 5—8 Over Berns, Turner, and Weder Claim 5 Claim 5 is an independent claim that differs in scope from claim 1 in that the claimed bonding agent is comprised of a colored thermoplastic polymer sheet. Claims App. For this, the Examiner relies on Weder. Final Action 7. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to combine Weder with Bems and Turner to achieve the claimed invention. Id. According to the Examiner, a person of ordinary skill in the art would have done this to provide a visual ascetic [sp. ‘aesthetic’] to view the bonding agent through the mesh material. Id. Appellant traverses the rejection by arguing that Weder does not disclose using a thermal plastic sheet as a bonding agent. Appeal Br. 16. According to Appellants, “Weder discloses various bonding agents, such as nitrocellulose adhesive to bond together sheets of material, but the sheets themselves are not the actual bonding agents.” Id. (emphasis omitted). In response, the Examiner concedes that Weder is not relied on as disclosing thermal plastics as a bonding agent. Ans. 5. The Examiner states that Bems is relied on disclosing a thermal plastic bonding agent. Id. However, the Examiner then states: It is Examiner's position that Weder teaches ”a bonding agent comprising a colored thermoplastic polymer sheet” at col. 19, lines 24-32 as cited on page 7 of the Final Rejection “A second Saran coated polypropylene sheet is adhered to this first sheet. 7 Appeal 2017-002516 Application 13/485,739 Inks are added to the acrylic or modified nitrocellulose adhesive for coloring, both adhesives being heat sealable”. Id. at 6. We have reviewed the passage of Weder referenced by the Examiner and do not agree that it discloses “a bonding agent comprising a colored thermoplastic polymer sheet” as claimed. See Weder, col. 19, 11. 24 — 32. Moreover, we are not persuaded that the Examiner has adequately explained how or why a person of ordinary skill in the art would have found it obvious to combine Bems’ thermoplastic bonding agent with the sheet material of Weder to arrive at the claimed bonding agent comprising a thermoplastic polymer sheet. Accordingly, we do not sustain the Examiner’s unpatentability rejection of claim 5 over Bems, Turner, and Weder. Claims 6—8 Claims 6—8 depend from claim 5. Claims App. The Examiner’s rejection of these claims suffers from the same infirmity that was identified above with respect to claim 5. Thus, for essentially the same reason expressed above in connection with claim 5, we do not sustain the rejection of claims 6—8. Unpatentability of Claims 9, 10, and 12 Over Berns and Turner Claim 9 Claim 9 is an independent claim that differs in scope from claims 1 and 5 primarily in that it contains a limitation directed to pads that have a first color on a surface and a second color on the interior of the pad, which second, interior color is exposed in connection with slope-sided grooves. Claims App. The Examiner relies on Turner as disclosing pads with two different colors. Final Action 10. The Examiner concludes that it would 8 Appeal 2017-002516 Application 13/485,739 have been obvious to a person of ordinary skill in the art at the time of the invention to use the teachings of Turner to make a first surface a different color than the pad component. Id. at 11. According to the Examiner, a person of ordinary skill in the art would have done this to identify the configuration of the cushioning element. Id. Appellant argues that the Examiner’s proposed combination is not the same as having a surface of a pad component with a first color and the interior of the pad component with a second color. Appeal Br. 19—20. In response, the Examiner directs our attention to paragraph 58 of Turner as teaching pad components with two different colors. Ans. 6. The Examiner further finds that: it is disclosed in Par. 58 that pad components 230 has different thicknesses may have different colors, which discloses that the interior of the component has a second color which reads on the limitation "the interior of the component having a second color" Id. at 7. Appellant teaches that a router may be used to form grooves 634 and 635 in a pad. Spec. 109. Appellant further teaches that one or both of the surfaces of pad component 630 may be formed to have a first color and the interior of pad component 630 may have a second color. Given that grooves 634 and voids 635 expose the interior of pad component 630, the second color will be visible at the locations of grooves 634 and voids 635. Spec. 1114. In the following paragraph, Appellant explains one of the reasons for this colorization pattern. Based upon the above discussion, grooves 634 and voids 635 may be visible . . . this configuration ensures that an individual me [sp. may] see the structure of pad component 630 and the positions of grooves 634 and voids 635, thereby ensuring that 9 Appeal 2017-002516 Application 13/485,739 will flex and breathe in a manner that is suitable for the particular activities the individual intends to engage in. Id. at 1115. In other words, a user may select a particular garment for one activity (e.g., paintball) and a different garment for another activity (e.g., lacrosse). The pattern of grooves in the pad that is visible through the partially transparent material of the first material layer may assist the user in selecting which garment to use for a particular activity. This follows from the fact that the pattern of grooves provides a visible indication as to how the pad will flex when exposed to bending forces during an activity. Turner does disclose the use of more than one color in pad elements. Turner | 58 (“pad components 230 with different colors”). However, we agree with Appellants that there is no teaching that such different colors are associated with grooves that expose an interior pad color. Given the functional relationship between the color patterning of the grooves and the selection of a garment for a particular use, a factor that is lacking in Turner, both alone and in combination with Bems, we are not persuaded that the Examiner has shown that it would have been obvious to achieve the subject matter of claim 9. We do not sustain the rejection of claim 9. Claims 10 and 12 Claims 10 and 12 depend from claim 9. Claims App. The Examiner’s rejection of these claims suffers from the same infirmity that was identified above with respect to claim 9. Thus, for essentially the same reason expressed above in connection with claim 9, we do not sustain the rejection of claims 10 and 12. 10 Appeal 2017-002516 Application 13/485,739 Unpatentability of Claim 11 Over Berns, Turner, and Cormier Claim 11 depend from claim 9. Claims App. The Examiner’s rejection of these claims suffers from the same infirmity that was identified above with respect to claim 9, which infirmity is not cured by the Cormier reference. Thus, for essentially the same reason expressed above in connection with claim 9, we do not sustain the rejection of claim 11. DECISION The decision of the Examiner to reject claims 1—4 is affirmed. The decision of the Examiner to rejection claims 5—12 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 11 Copy with citationCopy as parenthetical citation