NIKE, Inc.

Patent Trials and Appeals BoardJul 31, 2020

15345892 - (D) (P.T.A.B. Jul. 31, 2020)

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. 15/345,892 11/08/2016 SCOTT E. TOUIDJINE-WILLIAMS 264679/150946US02 5775 78342 7590 07/31/2020 SHOOK, HARDY & BACON L.L.P. (NIKE, INC.) INTELLECTUAL PROPERTY DEPARTMENT 2555 GRAND BLVD. KANSAS CITY, MO 64108-2613 EXAMINER SILBERMANN, JOANNE ART UNIT PAPER NUMBER 3631 NOTIFICATION DATE DELIVERY MODE 07/31/2020 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 docket.shb@clarivate.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 SCOTT E. TOUIDJINE-WILLIAMS and PETER G. KRAMER ____________ Appeal 2020-000737 Application 15/345,892 Technology Center 3600 ____________ Before MICHAEL L. HOELTER, LISA M. GUIJT, and LEE L. STEPINA, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection of claims 1–8, 15–18, and 20–23. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION of claims 1–4, 7, 8, and 21 under 35 U.S.C. § 102(a)(1), and of claims 5–8, 15– 18, 20, 22, and 23 under 35 U.S.C. § 103, pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies NIKE, Inc. as the real party in interest. Appeal Br. 3. Appeal 2020-000737 Application 15/345,892 2 THE INVENTION Appellant’s invention relates to “an athletic bib adapted to conform to a wearer’s body surface and provide breathability and permeability characteristics.” Spec. ¶ 2. Claims 1 and 15 are the independent claims on appeal. Claim 1, reproduced below with paragraph spacing added, is illustrative of the subject matter on appeal. An athletic bib comprising: a panel defined by a perimeter shape comprising: an upper margin having a first length; a lower margin having a second length less than the first length, wherein the lower margin is parallel to the upper margin; a right side margin joining a first end of the upper margin to a first end of the lower margin; and a left side margin joining a second end of the upper margin to a second end of the lower margin, wherein the right side margin and the left side margin each comprise a first portion extending away from a midline bisecting the athletic bib into right and left halves and a second portion of extending toward the midline, wherein the first portion and the second portion of the right side margin meet at a first apex region, and wherein the first portion and the second portion of the left side margin meet at a second apex region. Appeal 2020-000737 Application 15/345,892 3 THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Loewer US 6,256,788 B1 July 10, 2001 Collins US 2002/0053152 A1 May 9, 2002 Hirose US 2006/0147668 A1 July 6, 2006 Ishiguro2 WO 2009123205 A1 Oct. 8, 2009 The following rejections are before us for review: I. Claims 1–4, 7, 8, and 21 stand rejected under 35 U.S.C. § 103 as unpatentable over Ishiguro. II. Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as unpatentable over Ishiguro and Loewer. III. Claims 22 and 23 stand rejected under 35 U.S.C. § 103 as unpatentable over Ishiguro and Collins. IV. Claims 15, 16, 18, and 20 stand rejected under 35 U.S.C. § 103 as unpatentable over Ishiguro and Hirose. V. Claim 17 stands rejected under 35 U.S.C. § 103 as unpatentable over Ishiguro, Hirose, and Loewer. 2 We rely on the English language translation provided in the record. Appeal 2020-000737 Application 15/345,892 4 OPINION Rejection I Regarding independent claim 1, the Examiner finds that Ishiguro discloses an athletic bib, but does not disclose “the particular shape of the bib,” as claimed. Final Act. 3 (citing, e.g., Fig. 1). The Examiner relies on Ishiguro’s disclosure that the bib is “‘not particularly limited’” and may have “different shape[s] . . . so as to accommodate different sizes and shapes of wearers.” Id. at 3 (citing Ishiguro ¶¶ 22, 89–91, Fig. 17). The Examiner reasons, inter alia, that it would have been obvious “to modify the size and shape of the bib so that it appropriately fits the intended use (such as different wearers),” as taught by Ishiguro, and also that it would have been obvious “to utilize any shape which would reduce contact with the wearer or which would be more comfortable for the wearer,” as taught by Ishiguro. Id. Appellant argues that the Examiner has failed to state a prima facie case of obviousness. Appellant submits that Ishiguro fails to disclose (i) a lower margin having a length less than the length of an upper margin; and (ii) left and right side margins having portions extending away from and portions extending toward a midline bisecting the athletic bib; as claimed. Appeal Br. 10. Appellant submits that although Ishiguro broadly states, “[t]he shape of the number card 1A is not particularly limited, and it is generally formed in a rectangular shape, but may be formed in a circular shape or an elliptical shape,” . . . Ishiguro fails to provide a teaching, suggestion, or motivation to modify the number card to have lower margin of less length than the upper margin and to have left and right sides [sic] margins that each include first portions that extend away from a midline of the athletic bib and second portions that extend toward the midline as required in independent claim 1. Appeal 2020-000737 Application 15/345,892 5 Id.3 Appellant also argues that modifying Ishiguro’s number card to have the claimed perimeter would render Ishiguro’s number card unsatisfactory for its intended purpose because “there would potentially be an increased likelihood that the arms of slender athletes or small children would contact the right and left side margins causing chaffing” and because “the waist- slimming illusion created by the constricted portion of the number card in Ishiguro would be unsatisfactory.” Appeal Br. 16–17. We agree with Appellant that the Examiner’s reliance on a general reference to the use of any shape fails to provide the necessary rationale for teaching, with or without modification, the number card of Ishiguro to have the specific perimeter shape recited in claim 1. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring an obviousness conclusion to be based on explicit articulated reasoning with rational underpinning) cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). 3 Regarding Appellant’s argument that the Examiner’s reasoning lacks rational underpinning because the Examiner’s reasoning is different from the advantages stated in the Specification, or because the Examiner does not explain why Ishiguro’s number card would have performed equally well as the claimed invention, we note that there is no requirement that the Examiner’s reasoning must yield the same advantages or result in a device that performs in the same manner as the claimed invention. Appeal Br. 13– 15. See, e.g., Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”); In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972) (holding that it is not necessary for the prior art to serve the same purpose as that disclosed in the specification in order to support the conclusion that the claimed subject matter would have been obvious). Appeal 2020-000737 Application 15/345,892 6 Accordingly, we do not sustain the Examiner’s rejection of independent claim 1, and claims 2–4, 7, 8, and 21 depending therefrom. Rejections II and III The Examiner’s reliance on Loewer for disclosing an adhesive for attaching the bib to clothing, and on Collins for disclosing a repeating pattern of slits, does not cure the deficiency in the Examiner’s reasoning with respect to Ishiguro in the rejection of independent claim 1 supra. Final Act. 3–4. Therefore, for essentially the same reasons as stated supra, we also do not sustain the Examiner’s rejection of claims 5, 6, 22, and 23, which depend from independent claim 1. Rejection IV Regarding independent claim 15, the Examiner appears to rely on the same insufficient rationale as relied upon in the rejection of claim 1 supra to result in the perimeter shape of the panel as recited in claim 15. Final Act. 4–5; see Appeal Br. (Claims App.) (claim 15: “. . . the panel is defined by a perimeter shape . . . wherein the right side margin and the left side margin each comprise a first portion extending away from a midline bisecting the athletic bib and a second portion extending toward the midline”). The Examiner’s reliance on Hirose for disclosing transport and carrier layers does not cure the deficiency in the Examiner’s reasoning with respect to Ishiguro in the rejection of independent claim 1 supra. Final Act. 5. Therefore, for essentially the same reasons as stated supra, we also do not sustain the Examiner’s rejection of independent claim 15, and claims 16, 18, and 20, which depend from independent claim 15. Appeal 2020-000737 Application 15/345,892 7 Rejection V The Examiner’s reliance on Loewer for disclosing a releasable layer does not cure the deficiency in the Examiner’s reasoning with respect to Ishiguro in the rejection of independent claim 15 supra. Final Act 5. Therefore, for essentially the same reasons as stated supra, we also do not sustain the Examiner’s rejection of claim 17, which depends from independent claim 15. NEW GROUNDS OF REJECTION Independent claim 1 We find that Ishiguro expressly discloses the perimeter shape of the panels as required by independent claims 1 and 15.4 4 Notably, although the Specification explains that “by configuring the right and left side margins 114 and 116 as described to form the apex region 142, the surface area of the athletic bib 100 is increased while still maintaining the overall tapering shape of the bib 100,” and also that “the tapering shape of the bib 100 corresponds to the natural anatomical tapering of different body areas on which the bib 100 overlies when worn,” claims 1 and 15 do not specify that the first portions of the right and left side margins, which extend away from the midline, must join the end of the upper margin or that the second portions of the right and left side margins, which extend toward the midline, must join the end of the lower margin. Spec. ¶¶ 7, 33; see also id. ¶¶ 31, 32; Appeal Br. 7 (citing Spec. ¶ 31, Fig. 1 as disclosing the claimed apex regions). Put another way, claims 1 and 15 do not require distance 128 to have a length that is less than or greater than either of the lengths of the upper or lower margins, but rather, the apex regions of claims 1 and 15 read on the apex regions formed by the first and second portions of the left and right side margins as depicted in Figure 17 of Ishiguro. However, Ishiguro does not describe the lower margin as having a length less than the length of the upper margin, as required by claims 1 and 15, but rather, depicts the upper and lower margins as having an approximately equal length; thus, a limitation of claims 1 and 15 is missing from the depiction of an athletic bib in Figure 17 of Ishiguro. Appeal 2020-000737 Application 15/345,892 8 For a prior art reference to anticipate a claim, it must disclose all of the limitations of the claim, “arranged or combined in the same way as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008). “A reference may be read for all that it teaches, including uses beyond its primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR, 550 U.S. at 418-421. Ishiguro discloses that when using slim women or small children of the body, the arms rubbed against the left and right end portions of the number cards as an obstacle. . . . In response to such a problem, in the eighth embodiment, the number card 1H is slimmed by the constricted portion 8 to prevent the arm from rubbing against the left and right ends of the number card 1H. . . . [A]nd it can be shown as an inverted triangular shape, which is suitable for female athletes. Ishiguro ¶ 89 (emphasis added). Ishiguro also discloses that, with respect to forming constricted portion (i.e., constricted portion 8), “it is possible to apply chamfering to corners or the like which are sharpened by forming the waist portion 8 so as to prevent accidental injuries.” Id. ¶ 86. In this respect we understand chamfering to mean to cut off a corner. Thus, Ishiguro teaches forming a number card as an inverted triangle and cutting off the sharp corners of the triangle, so that the sharp corners do not rub against the moving arms and legs of the athlete, resulting in a number card having the claimed perimeter shape. Moreover, we are not persuaded that chamfering the corners of Ishiguro’s inverted triangular shaped number card would cause the number card to be unsatisfactory for its intended purpose of displaying an athlete’s number. See Appeal Br. 16 Appeal 2020-000737 Application 15/345,892 9 (arguing that “[m]odifying the shape of the number card in Ishiguro to have the shape of … the athletic bib of [independent] claim 1 would render … Ishiguro unsatisfactory for its intended purpose.”). Rather, Ishiguro discloses the benefits of chamfering the corners, namely, to prevent accidental injuries (by chafing on a sharp point), and the inverted triangular shape would still serve to present a waist-slimming illusion. Accordingly, we enter a NEW GROUND OF REJECTION of independent claim 1 under 35 U.S.C. § 102(a)(1) as anticipated by Ishiguro. Independent claim 15 We apply our findings with respect to Ishiguro and the perimeter shape recited in claim 1 to the perimeter shape recited in independent claim 15, supra. We also rely on the Examiner’s findings with respect to Hirose and the Examiner’s reasoning with respect to modifying Ishiguro in view of Hirose to result in the claimed subject matter, for example, a kit having transport and carrier layers, relative to a panel, as applied to claim 15 by the Examiner in Rejection IV of the Final Office Action. Final Act. 5 (finding that Hirose’s information-indicating sheet 5 corresponds to the claimed transport layer, Hirose’s non-adhesive release sheet 7 corresponds to the claimed carrier layer, and Hirose’s adhesive layer 3 corresponds to a panel, (citing Hirose, Fig. 1), wherein Hirose’s panel (or adhesive layer 3) is releasably secured to the carrier layer (or Hirose’s non-adhesive release sheet 7), and reasoning that it would have been obvious to use Hirose’s construction with Ishiguro’s panel to provide structural integrity); see Hirose, e.g., ¶ 27, Fig. 1. Notably, when using adhesive as a substitute method for attaching Ishiguro’s number card to an athlete, in lieu of safety pins, as disclosed in Ishiguro, it would be obvious to modify Ishiguro’s Appeal 2020-000737 Application 15/345,892 10 number card to have a release sheet from which number card would be peeled off when ready for use by the athlete, as taught in Hirose. Accordingly, we enter a NEW GROUND OF REJECTION of claim 15 under 35 U.S.C. § 103 as unpatentable over Ishiguro and Hirose. Dependent claim 2 Claim 2 depends from independent claim 1 and recites, in relevant part, “wherein the first portion of the left and right side margins has a third length, and wherein the second portion of the left and right side margins has a fourth length, and wherein the third length is less than the fourth length.” Appeal Br. (Claims App.). We apply our findings with respect to Ishiguro and the perimeter shape recited in claim 1 supra. We further find that a triangle having sides that are longer than the base of the triangle is known, and that Ishiguro suggests selecting such a triangle to match the torso of a female athlete, wherein the female athlete’s torso is longer than her chest span. See Ishiguro ¶ 17 (“an inverted triangular shape . . . is suitable for female athletes”); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)(“A person of ordinary skill is also a person of ordinary creativity, not an automaton”). Accordingly, we enter a NEW GROUND OF REJECTION of claim 2 under 35 U.S.C. § 103 as unpatentable over Ishiguro. Dependent claim 3 Claim 3 depends from independent claim 1 and recites, in relevant part, “wherein the panel is formed from one of a knit material, a paper material, a woven material, or a non-woven material.” Appeal Br. (Claims App.) (emphasis added). We apply our findings with respect to Ishiguro and the perimeter shape recited in claim 1 supra. In addition, Ishiguro discloses Appeal 2020-000737 Application 15/345,892 11 the subject matter of claim 3, because Ishiguro discloses that “number card 1A is made up of paper material,” which is one of the materials required by claim 3. See, e.g., Ishiguro ¶ 28 (emphasis added). Accordingly, we enter a NEW GROUND OF REJECTION of claim 3 under 35 U.S.C. § 102(a)(1) as anticipated by Ishiguro. Dependent claims 4, 16, and 21 Claim 4 depends from independent claim 1 and recites, in relevant part, “wherein the panel comprises a plurality of perforations extending through the thickness of the panel,” and claim 21 depends from claim 4 and recites, in relevant part, “wherein the panel comprises a repeating pattern of slits extending from an outer-facing surface through an inner-facing surface of the panel. Appeal Br. (Claims App.). Similarly, claim 16 depends from independent claim 15 and recites, in relevant part, “wherein the athletic bib further comprises a repeating pattern of slits extending through a thickness of the panel.” Id. Notably, the Specification identifies “slits 410,” which are depicted in Appellant’s Figure 6, reproduced below, as elongated or rectangular holes. Appeal 2020-000737 Application 15/345,892 12 Appellant’s Figure 6 depicts an athletic bib having a pattern of slits 410 arranged in repeating sets of convex quadrilateral shapes, which form diamond shapes. The Specification discloses that “slits may be formed by, for example, laser cutting, water-jet cutting, ultrasonic cutting, die cutting, and the like.” Spec. ¶ 53. Absent a special definition of the claim term “slit” in the Specification, we construe the claim term “slit” to mean “a straight, narrow cut, opening, or aperture,” which is an ordinary definition of the claim term “slit” consistent with the Specification.5 Cf. Spec. ¶ 55 (disclosing that perforations may be formed via hole punching, but also by “laser cutting, die cutting, water-jet cutting, ultrasonic cutting, and the like,” which are the same processes disclosed for forming a slit, such that a narrower definition of slit (i.e., cutting without the removal of material) is not required by the Specification). In sum, we find that the claim term “slit” reads on the elongated holes disclosed in Ishiguro. We apply our findings with respect to Ishiguro and the perimeter shape recited in claims 1 and 15 supra. In addition, Ishiguro discloses long holes 4 (i.e., slits) extending through the thickness of number card (see, e.g., Ishiguro, Figs. 1, 2), which may have a repeating pattern, for example, “a plurality of the long holes are arranged side by side . . . [along] the end edge portion of the number card,” wherein the long holes “can be formed relatively large because there is no display portion, and it is effective for enhancing the effect of air permeability” (id. ¶ 26). To the extent that it is not expressly disclosed in Ishiguro that Ishiguro’s inverted triangularly shaped perimeter card with chamfered corners has long holes (or slits) 5 https://www.dictionary.com/browse/slit# (last visited July 21, 2020) (see Exhibit A). Appeal 2020-000737 Application 15/345,892 13 extending through the thickness of the card, we reason that it would have been obvious to modify the inverted triangularly shaped perimeter card with chamfered corners embodiment to have long holes extending through the thickness of the number card and arranged in side-by-side, repeating pattern along the edge of the sides of the triangle to enhance air permeability without interfering with display indicia in the central portion of the inverted triangularly shaped perimeter of the card. Accordingly, we enter a NEW GROUND OF REJECTION of claims 4 and 21 under 35 U.S.C. § 103 as unpatentable over Ishiguro, and of claim 16 under 35 U.S.C. § 103 as unpatentable over Ishiguro and Hirose. Dependent claims 5, 6, and 17 Claims 5 and 6 depend from independent claim 1 and recite, in relevant part, “wherein an adhesive is selectively applied to an inner-facing surface of the panel” and “wherein the adhesive comprises a releasable adhesive,” respectively. Appeal Br. (Claims App.) (emphasis added). We apply our findings with respect to Ishiguro and the perimeter shape recited in claim 1 supra. In addition, we apply the Examiner’s findings with respect to Loewer and also the Examiner’s reasoning as applied to claim 5 by the Examiner in Rejection II of the Final Office Action. Final Act. 3–4. In particular, the Examiner finds that “Loewer teaches attaching a panel to clothing by releasable adhesive 34,” as claimed, and the Examiner reasons that it would have been obvious to modify attach Ishiguro’s bib to clothing with a releasable adhesive, as taught in Loewer, rather than by using safety pins as taught in Ishiguro, “as a simple substitution of one known element for another to obtain predictable results” Final Act. 3–4 (citing Loewer 3:43–47, Fig. 1b; MPEP § 2143(II)B) Appeal 2020-000737 Application 15/345,892 14 (emphasis added)). See, e.g., Loewer 3:37–42 (“[t]he pressure sensitive adhesive 34 used to coat the back side of the bib 10 should be formulated to have a low tack characteristic so that it is readily releasable from the wearer’s person following use of the bib 10 without leaving adhesive residue yet has sufficient adhesiveness to secure the lightweight disposable bib 10 during use”). Regarding the selective application of adhesive to the inner facing of the panel, as required by claim 6, we find that Loewer discloses applying strips 44, 44' of adhesive coating to a panel (disposable bib 19). See, e.g., Loewer, Fig. 1c. We reason that it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to selectively apply the adhesive between to an inn-facing surface of Ishiguro’s number card, as taught by Loewer, to allow the number card to be secured to the athlete’s clothing, while using less adhesive to lower manufacturing cost. See Loewer 3:67–4:4 (disclosing that “[t]he disposition of the pressure sensitive adhesive coating [in two longitudinal pressure sensitive adhesive strips 44, 44'] . . . secur[es] both first side 12 and second side 14 and both upper end 16 and lower end 18 to the wearer yet uses substantially less adhesive and is therefore manufacturable at a lower cost”), Fig. 1c. Similarly, claim 17 depends from independent claim 15 and recites, in relevant part, “wherein the third surface of the panel is releasably secured to the first surface of the carrier layer via a releasable adhesive that is selectively applied to the third surface of the panel.” Appeal Br. (Claims App.) (emphasis added). We apply our findings with respect to Ishiguro and the perimeter shape recited in claim 15 supra, and rely on the Examiner’s findings and reasoning relative to Hirose with respect to claim 15 as set forth Appeal 2020-000737 Application 15/345,892 15 supra. In addition, we find that Loewer discloses the selective application of a releasable adhesive between a carrier layer (i.e., peel off backing 38) and a panel (disposable bib 19), as the adhesive coating is applied in strips 44, 44'. Loewer, Fig. 1c. We reason that it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to selectively apply the releasable adhesive between the interfacing panel and carrier layer surfaces, as embodied by Ishiguro’s number card modified in view of Hirose, to allow the number card to be ready for securing to an athlete’s clothing upon removal of the carrier layer, while using less adhesive to lower manufacturing cost. See Loewer 3:67–4:4. Accordingly, we enter a NEW GROUND OF REJECTION of claims 5 and 6 under 35 U.S.C. § 103 as unpatentable over Ishiguro and Loewer, and of claim 17 under 35 U.S.C. § 103 as unpatentable over Ishiguro, Hirose, and Loewer. Dependent claims 7 and 8 Claims 7 and 8 depend from independent claim 1 and recite, in relevant part, “wherein visual indicia is printed on an outer-facing surface of the panel” and “wherein the athletic bib is adapted to be affixed to an apparel item configured for an upper torso of a wearer . . . , and wherein the athletic bib is adapted to overlie a chest area . . . when the athletic bib is affixed to the apparel item,” respectively. Appeal Br. (Claims App.). We apply our findings with respect to Ishiguro and the perimeter shape recited in claim 1 supra. In addition, Ishiguro discloses, for example, that the number card has “printing on the display part 2” (Ishiguro ¶ 28) and is affixed by a safety pin to an athlete’s clothes (id. ¶ 27), such as in the chest area (id. ¶ 89). Appeal 2020-000737 Application 15/345,892 16 Accordingly, we enter a NEW GROUND OF REJECTION of claims 7 and 8 under 35 U.S.C. § 102(a)(1) as anticipated by Ishiguro. Dependent claims 18 and 20 Claims 18 and 20 depend from independent claim 15 and recite, in relevant part, “wherein visual indicia are printed on the fourth surface of the panel,” and “wherein the transport layer and the carrier layer have the same perimeter shape as the panel,” respectively. Appeal Br. (Claims App.). We apply our findings with respect to Ishiguro and the perimeter shape recited in claim 15 supra, and rely on the Examiner’s findings and reasoning relative to Hirose with respect to claim 15 as set forth supra. In addition, we find that Ishiguro discloses printing visual indicia on the fourth surface of the panel, for example, by disclosing that the number card has “printing on the display part 2.” Ishiguro ¶ 28. Loewer discloses that the peel-off backing (or carrier layer) has the same perimeter shape as the panel, such that it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to match the perimeter shapes of Ishiguro’s number card to Hirose’s transport and carrier layers, to ensure the entirety of the adhesive remains covered until the number card is ready for application to the athlete’s clothing. See, e.g., Loewer 3:20–42, Figs. 1a, 1b. Accordingly, we enter a NEW GROUND OF REJECTION of claims 18 and 20 under 35 U.S.C. § 103 as unpatentable over Ishiguro, Hirose, and Loewer. Dependent claims 22 and 23 Claim 23 depends from claim 22, which depends from claim 21, which depends from claim 4, which depends from independent claim 1. Claims 22 and 23 recite, in relevant part, “wherein the repeating pattern of Appeal 2020-000737 Application 15/345,892 17 slits extends over at least 50% of the surface of the panel,” and “wherein the repeating pattern of slits are arranged to form repeating sets of convex quadrilateral shapes,” respectively. Appeal Br. (Claims App.). We apply our findings with respect to Ishiguro and the perimeter shape recited in claim 1 supra. The Specification discloses that [b]ecause the material used to form the bib 400 may lack a high degree of flexibility or pliability, a repeating pattern of slits 410 may be formed such that the slits 410 extend through the thickness of the athletic bib 400. A close-up view of the exemplary pattern of slits 410 is illustrated in FIG. 6. In this aspect, the pattern of slits 410 are formed along a repeating set of convex quadrilateral shapes (e.g., diamond shapes). A representative quadrilateral shape is indicated by the bolded lines in FIG. 6 and is reference by the numeral 412. Spec. ¶ 42. Figure 6 of the Specification is reproduced supra. Ishiguro discloses the size and shape of the vent holes, as well as the pattern of the vent holes are recognized in the prior art as contributing to the pore ratio of the number card, and that the pore ratio is a variable known to effect the stretchability, permeability, and readability of the number card. See, e.g., Ishiguro ¶ 32 (“forming a large number of vent holes 3 [improves] the stretchability of the number card”); id. ¶ 39 (disclosing that staggering vent holes increases “the ratio of the total area of the vent holes 3 to the surface area of the number card 1B,” or the “pore ratio”); Id. ¶ 40 (“as the porosity increases, the ventilation performance improves and the area of contact with the athlete decreases”). Regarding claim 22, Ishiguro expressly discloses, with respect to circular vent holes 3, that the vent holes can be “formed in [the] entire surface [of the number card],” which is over 50% of the surface area of the Appeal 2020-000737 Application 15/345,892 18 number card. Ishiguro ¶ 22. Ishiguro also depicts vent holes 3 as staggered, slits (or elongated vent holes). Id. ¶ 38 (with reference to Figure 5(c), “elongated hole-shaped vent holes 3 may be formed in a zigzag shape”); see also id. ¶ 47 (“the shape of small-diameter ventilation hole 3 is not limited to a circular shape, and it may be formed into a long hole, a rhombus shape, or the like”). In view of these teachings, we reason that it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to repeat a pattern of slits over at least 50% of the surface of the panel,” as required by claim 22, because patterns of vent holes on athletic bibs are known to cover more than 50% of the surface of the panel, and it is known to shape vent holes as slits. Thus, selecting the claimed range and pore shape is merely optimizing the pore ratio to impact the stretchability, permeability, and readability of the athletic bib. Similarly, regarding claim 23, we reason that it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to optimize the shape and configuration of the claimed pattern (i.e., the pore ratio), because circular vent holes and slits are known to be used in combination, in repeating patterns, to impact the stretchability, permeability, and readability of the athletic bib, as discussed supra. In other words, the prior art recognizes that the shape and pattern of vent holes affects the stretchability, permeability, and readability of the athletic bib, such that the claimed repeating sets of convex quadrilateral shapes would be discoverable by routine experimentation. Accordingly, we enter a NEW GROUND OF REJECTION of claims 22 and 23 under 35 U.S.C. § 103 as unpatentable over Ishiguro. Appeal 2020-000737 Application 15/345,892 19 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s) Affirmed Reversed New Ground of Rejection 1–4, 7, 8, 21 103 Ishiguro 1–4, 7, 8, 21 2, 4, 21–23 5, 6 103 Ishiguro, Loewer 5, 6 5, 6 22, 23 103 Ishiguro, Collins 22, 23 15, 16, 18, 20 103 Ishiguro, Hirose 15, 16, 18, 20 15, 16 17 103 Ishiguro, Hirose, Loewer 17 17, 18, 20 1, 3–8, 15–18, 20–23 102(a)(1) Ishiguro 1, 3, 7, 8 Overall Outcome 1–8, 15– 18, 20– 23 1–8, 15–18, 20–23 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2020-000737 Application 15/345,892 20 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. AFFIRMED; 37 C.F.R. 41.50(b)