NIKE, Inc.

Patent Trials and Appeals Board

Oct 30, 2020

15165617 - (D) (P.T.A.B. Oct. 30, 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.
15/165,617 05/26/2016 Carl L. Madore NIKE1356PUS/150422US01 1069
113338 7590 10/30/2020
Quinn IP Law/NIKE, Inc.
21500 Haggerty Road
Ste 300
Northville, MI 48167
EXAMINER
HUYNH, KHOA D
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
10/30/2020 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):
USDocketing@quinniplaw.com
adomagala@quinniplaw.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 CARL L. MADORE
____________

Appeal 2020–000998
Application 15/165,617
Technology Center 3700
____________

Before ANTON W. FETTING, ULRIKE W. JENKS, and AMEE A. SHAH,
Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Carl L. Madore (Appellant2) seeks review under 35 U.S.C. § 134 of a
final rejection of claims 1–4, 8–15, and 19–23, the only claims pending in

1 Our decision will make reference to Appellant’s Appeal Brief (“Appeal
Br.,” filed June 10, 2019) and Reply Brief (“Reply Br.,” filed November 21,
2019), and the Examiner’s Answer (“Ans.,” mailed September 30, 2019),
and Final Action (“Final Act.,” mailed January 14, 2019).
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the application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
Appellant invented a sole structure including a sensory feedback
system. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. An insole, comprising:
[1] a first insole layer defining a foot-receiving surface
and made of a first material, wherein the first material has a
first hardness;
[2] a second insole layer coupled to the first insole layer;
[3] a plurality of protrusions each extending from the
second insole layer,
wherein each of the protrusions extends through the first
insole layer,
each of the protrusions is made of a second material,
the second material has a second hardness, and
the second hardness is greater than the first
hardness;
and
[4] wherein the second hardness is between ten percent
and twenty-five percent greater than the first hardness.

2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as NIKE, Inc.
(Appeal Br. 2).

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PRIOR ART
The Examiner relies upon the following prior art:
Name Reference Date
Robbins US 4,823,799 Apr. 25, 1989
Youngs US 2012/0055047 A1 Mar. 8, 2012
REJECTIONS
Claims 1–4 and 8–11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Robbins.
Claims 12–15 and 19–23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Robbins and Youngs.
ISSUES
The issues of obviousness turn primarily on whether Robbins
describes the combination of materials recited in the claims and whether the
range recited in the claims was within routine optimization.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Appellant’s Disclosure
01. The only support in the disclosure for limitation 4 regarding
percentage differences in hardness is “the indentation hardness of
the material (measured, for example, in the Shore C Hardness
Scale) forming the protrusions 46 may be greater than the
indentation hardness of the material forming the first insole
layer 42. For example, the hardness of the material forming the
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protrusions 46 may be between ten percent (10%) and twenty-five
percent (25%) greater than the hardness of the material forming
the first insole layer 42.” Spec. para. 22.
Facts Related to the Prior Art
Robbins
02. Robbins is directed to injury prevention and, more
particularly, to a biofeedback interface adapted to be interposed
between the plantar surface and the ground to enhance the
sensation perceived by the individual during heavy plantar surface
loading to produce enhanced protective behavioral response.
Robbins 1:10–16.
03. Robbins describes an insole of a shoe having a base member
of a relatively rigid plastic material including a plurality of
upwardly extending projections. The size and the spacing of
projections are not critical to the invention as long as they provide
the desired level of sensory enhancement. A layer of foamed
plastic material is fixed on the base member, the top of projections
being substantially flush with the top surface of foam-like layer
which is provided with a series of openings to receive the
projection. Robbins 4:5–26.
04. Robbins describes an insole of a shoe having a layer with
irregularities of particular design (height, spacing, rigidity, shape),
as to produce the local plantar deformations to enhance perceived
plantar surface load magnitude. Robbins 2:20–24.
05. Robbins describes the resiliency of the foam-like layer as of
importance that should be sufficiently soft. Robbins 5:29–34.
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06. Robbins describes upper layer as a layer of compressible and
resilient material. Robbins Claim 2.
ANALYSIS
Claims 1–4 and 8–11 rejected under 35 U.S.C. § 103(a) as unpatentable
over Robbins
Claim 1 is the only claim argued. As such it is representative. As
Examiner determines, Robbins’ Fig. 2 shows limitations 1, 2, and 3, except
for the final clause of limitation 3 that “the second hardness is greater than
the first hardness.” Robbins describes this final clause in general by
describing its upper layer as foam contrasted with the lower layer of
relatively rigid plastic material. FF 03 and 06. The Examiner determines
that the range in limitation 4 is a range that one of ordinary skill would find
by routine optimization. “[W]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456
(CCPA 1955). See Final Act. 2–3.
Appellant argues that Robbins fails to describe the term “hardness,”
and therefore cannot be relied on for that aspect of limitation 3 or for the
hardness range in limitation 4. Appellant argues that the definition of
hardness is the “resistance of metal to indentation under a static load or to
scratching.” Appeal Br. 5. From this, Appellant then argues that because
Robbins does not describe such hardness, hardness has not been shown to be
a results effective variable, and so cannot be the subject of routine
optimization, citing In re Antonie, 559 F.2d 618, 620 (CCPA 1977). Appeal
Br. 5 and 8. From this, Appellant concludes the Examiner failed to present a
prima facie case. Appeal Br. 12.
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We are not persuaded that the Examiner failed to present a prima facie
case. First, Appellant’s definition of hardness as argued is not pertinent to
shoe insoles because the definition Appellant proffers is for hardness of
metal. Nothing in the art of record or Appellant’s disclosure describes or
suggests using metal for insoles.
Second, we are not persuaded that “[t]here is no recognition in
Robbins that the hardness of the projections 14 or the foamed based
material 16 achieves a recognized result.” Appeal Br. 5. Appellant argues
that Robbins’ description of rigidity is not the same as hardness. Id. But
aside from a definition only pertinent to metal, Appellant provides no
evidence to support this. It is apparent on its face that Robbins’ lower layer
rigid material is harder than its upper layer compressible and resilient
material, because the attribute of rigidity means resisting compression and so
being harder than the attributes of being compressible and resilient. See
FF 06.
Appellant goes on to argue that Robbins at column 4, lines 5–26 (see
FF 03) fails to show that hardness is a results effective variable. Appeal
Br. 6. This portion of Robbins at least describes the recited difference in
hardness, as it describes a rigid base layer and a foamed upper layer. As we
determined above, Robbins goes on to further characterize the foam layer as
being compressible and resilient. FF 06. This is “to produce the local
plantar deformations to enhance perceived plantar surface load magnitude.”
FF 04. Thus the difference in hardness must produce such enhanced
perceptions, and therefore is results effective toward such perception. As the
Examiner determines,
The protrusions of Robbins are designed to come into direct
contact with the user's foot in order to relay biofeedback and
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use the information gained to adjust the arched position of the
shoe[,] provide a shock absorbing action, or run with less
vertical force to reduce discomfort (Column 4, lines 37-46). In
order for this to be the case there must be sufficient contact with
the protrusions, and in this way, the protrusions are hard
enough to withstand the pressure forced upon them by a user
walking, jumping, or running. This sets groundwork to provide
a result effective variable, the result and effect being the
hardness of the protrusions allowing a user to exert a force on
them to provide adequate biofeedback to use that information
and reduce stress on the user's foot.
Ans. 3. From this, Examiner goes on to determine
Providing the desired level of sensory enhancement (Column
4, lines 13-15) and adequate biofeedback would be why one
of ordinary skill in the art would arrive at the claimed
hardness percentage, which could be arrived at through
routine experimentation, since it has been held that
differences in material properties will not support the
patentability of subject matter encompassed by the prior art
unless there is evidence indicating the criticality of such
properties.
Ans. 4. Thus, the Examiner determines that the range recited in limitation 4
is the result of routine experimentation and optimization.
We are not persuaded by Appellant's argument that “there is no
recognition in Robbins that the percentage of the hardness of the
projections 14 with respect to the hardness of the foamed based material 16
achieves a recognized result.” Appeal Br. 6. As discussed above, the
Examiner determines this range is no more than the result of routine
optimization. As the Examiner determines, “Appellant has not provided
criticality for how this specific percent difference in hardness between
materials was arrived at.” Ans. 4. The Specification says no more than the
range “may be” that recited in limitation 4. FF 01. The Specification
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provides no reason to infer that the range is the result of any particular
innovation. “Granting patent protection to advances that would occur in the
ordinary course without real innovation retards progress and may, in the case
of patents combining previously known elements, deprive prior inventions
of their value or utility.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007).
Appellant argues that the Specification goes on to describe that “as a
result, when the wearer’s actual COP A moves from the predetermined,
ideal COP location C during a golf swing, the wearer can tactilely sense
protrusions 46 on his foot, thereby indicating that his COP A has shifted
from the predetermined, ideal location C” after describing what the range
may be. Appeal Br. 17 (citing Specification paragraph 22). But this is taken
out of context. The ranges so described are only examples of possibility.
The predicate to the described result is
[t]he tactile sensory feedback system 45 includes at least one
protrusion 46 extending from the second insole layer 44
through the first insole layer 42. In the depicted embodiment,
multiple protrusions 46 extend from the second insole layer 44
and at least partially through the first insole layer 42. The
protrusions 46 have a greater hardness than the first insole layer
42.
Spec. para. 22. The result Appellant has the Specification so describe arises
from the qualitative experience created by extending of the protrusions of
greater hardness in general. The Specification does not describe or suggest
the specific range in the proffered example as being critical to this particular
result, or even why such a range would produce such a result, while
percentages outside this range would not. Indeed, the result is the perceived
sensation, common experience by all including those of ordinary skill in that
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once some de minimis threshold is passed, sensation would be perceived
from any percentage difference. As a result, the recited and disclosed range
appears to be no more than an arbitrary suggestion.
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
KSR, 550 U.S. at 421.
Appellant then argues “there is no evidence on the record that the
percentage of the hardness of Robbins’ projections 14 with respect to the
hardness of the layer of foamed plastic material 16 is a result-effective
variable.” Appeal Br. 7–8. But the percentage is what would be obtained
by routine optimization. Perhaps more to the point, nothing in the record
discloses why this percentage is particularly important to the result. Absent
this, it would have been obvious to optimize for individual comfort, which
would likely produce the recited range among its results, because of the
known breadth of range of human susceptibility to sense perception and
taste. “In many fields it may be that there is little discussion of obvious
techniques or combinations, and it often may be the case that market
demand, rather than scientific literature, will drive design trends.” KSR, 550
U.S. at 419.
Appellant’s argument that “[A]pplicant does not need to show
criticality for a claimed range as the examiner has not established a prima
facie case of obviousness” (Appeal Brief 12) is therefore unpersuasive
because the Examiner did establish a prima facie case of obviousness.
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Appellant’s argument that “[R]obbins, either by itself or in
combination with Youngs, fails to disclose or suggest that the second
hardness is greater than the first hardness” (Appeal Brief 18) is addressed
above and is equally unpersuasive here.
Claims 12–15 and 19–23 rejected under 35 U.S.C. § 103(a) as unpatentable
over Robbins and Youngs
This rejection is not separately argued.
CONCLUSIONS OF LAW
The rejection of claims 1–4 and 8–11 under 35 U.S.C. § 103(a) as
unpatentable over Robbins is proper.
The rejection of claims 12–15 and 19–23 under 35 U.S.C. § 103(a) as
unpatentable over Robbins and Youngs is proper.
CONCLUSION
The rejection of claims 1–4, 8–15, and 19–23 is affirmed.
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 8–11 103 Robbins 1–4, 8–11
12–15, 19–23 103 Robbins, Youngs 12–15, 19–23
Overall Outcome 1–4, 8–15, 19–23

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
See 37 C.F.R. § 1.136(a)(1)(iv) (2011).
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AFFIRMED