NIKE, Inc.

Patent Trials and Appeals BoardAug 16, 2021

2020002576 (P.T.A.B. Aug. 16, 2021)

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. 15/209,323 07/13/2016 Patrick Conall Regan 255663/11-0692US01CO 4992 78342 7590 08/16/2021 Shook Hardy & Bacon LLP (NIKE, Inc.) 2555 Grand Boulevard Kansas City, MO 64108 EXAMINER LOPEZ ALVAREZ, OLVIN ART UNIT PAPER NUMBER 2117 NOTIFICATION DATE DELIVERY MODE 08/16/2021 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 nike_docketing@cardinal-ip.com shbdocketing@shb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PATRICK CONALL REGAN, CHANG-CHU LIAO, and CHIH-CHI CHANG ____________ Appeal 2020-002576 Application 15/209,323 Technology Center 2100 ____________ Before MARC S. HOFF, JOHN A. EVANS, and CATHERINE SHIANG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–20, which are all the claims pending and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use “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 2020-002576 Application 15/209,323 2 STATEMENT OF THE CASE Introduction The present invention relates to “[m]anufacturing of a shoe or a portion of a shoe . . . enhanced by automated placement of shoe parts.” Abstr. “For example, a part-recognition system analyzes an image of a shoe part to identify the part and determine a location of the part. Once the part is identified and located, the part can be manipulated in an automated manner.” Id. Claim 1 is exemplary: 1. A method for positioning and aligning shoe parts in an automated manner during a shoe-manufacturing process, the method comprising: recording a first image of an attachment shoe part using at least one camera, the first image depicting a two- dimensional representation of the attachment shoe part; recording a second image of a base shoe part using the at least one camera, the second image depicting a two-dimensional representation of the base shoe part; identifying at least one reference feature of the attachment shoe part in the first image depicting the two- dimensional representation of the attachment shoe part; determining an identity of the attachment shoe part by comparing the at least one reference feature identified in the first image to at least one predetermined reference feature of a shoe-part reference image; determining, from the first image, a first geometric coordinate of the attachment shoe part in a geometric coordinate system; determining, from the second image, a second geometric coordinate of the base shoe part in the geometric coordinate system; communicating the first and the second geometric coordinates to a part-transfer apparatus which operates in the geometric coordinate system; and transferring, by the part-transfer apparatus, the attachment shoe part from the first geometric coordinate to the second geometric coordinate to align the Appeal 2020-002576 Application 15/209,323 3 attachment shoe part with the base shoe part for attachment in the shoe-manufacturing process. References and Rejections2 Claim(s) Rejected 35 U.S.C. § References 1–7, 9–12, 14–20 103(a)3 Heiml (WO 2010/034044 A2, pub. Apr. 1, 2010) (as translated), Cremaschi (US 2006/0155417 A1, pub. July 13, 2006), Nishida (US 4,803,735, iss. Feb. 7, 1989) 8 103(a) Heiml, Cremaschi, Nishida, Falk (US 5,255,352, iss. Oct. 19, 1993) 134 103(a) Heiml, Cremaschi, Nishida, Harvill (US 2010/0036753 A1, pub. Feb. 11, 2010) ANALYSIS Obviousness5 We have reviewed the Examiner’s rejection in light of Appellant’s contentions and the evidence of record. We concur with Appellant’s contentions that the Examiner erred in determining that the cited portions of Heiml, Cremaschi, and Nishida collectively teach recording a first image of an attachment shoe part using at least one camera, the first image depicting a two- dimensional representation of the attachment shoe part; 2 Throughout this opinion, we refer to the (1) Final Office Action dated April 4, 2019 (“Final Act.”); (2) Appeal Brief dated October 3, 2019 (“Appeal Br.”); and (3) Examiner’s Answer dated December 12, 2019 (“Ans.”). 3 The Examiner has withdrawn the double patenting rejection of claims 1– 20. Ans. 3. 4 The heading of the rejection for claim 13 is on page 34 of the Non-Final Action dated July 5, 2018. 5 Appellant raises additional arguments. Because the identified issue is dispositive of the appeal, we do not address the additional arguments. Appeal 2020-002576 Application 15/209,323 4 recording a second image of a base shoe part using the at least one camera, the second image depicting a two-dimensional representation of the base shoe part; . . . determining, from the first image, a first geometric coordinate of the attachment shoe part in a geometric coordinate system; determining, from the second image, a second geometric coordinate of the base shoe part in the geometric coordinate system; . . . transferring, by the part-transfer apparatus, the attachment shoe part from the first geometric coordinate to the second geometric coordinate to align the attachment shoe part with the base shoe part for attachment in the shoe-manufacturing process, as recited in independent claim 1 (emphases added). See Appeal Br. 16–20. The Examiner cites Heiml’s Figure 1 and pages 2 and 15; Cremaschi’s Figure 10 and paragraphs 127 and 128; and Nishida’s Figure 1 and column 2 for teaching the italicized limitation. See Final Act. 11–14. We have reviewed the cited prior art portions, and do not agree with the Examiner’s findings. In particular, the Examiner cites Heiml for teaching the claimed “first geometric coordinate.” Final Act. 10. The Examiner finds “the combination of Heiml and Cremaschi . . . does not explicitly teach . . . determining from the second image a second geometric coordinate,” but finds Nishida teaches that limitation. Final Act. 13 (emphasis omitted). The Examiner concludes “it would have been obvious . . . to . . . have modified Heiml-Cremaschi to include” Nishida’s feature of “a second geometric coordinate.” Final Act. 14 (emphasis omitted). As a result, the proposed combination includes Heiml’s “first geometric coordinate” and Nishida’s feature of “a second geometric coordinate.” We Appeal 2020-002576 Application 15/209,323 5 find that the Examiner does not adequately explain why the resulting combination teaches or suggests “transferring . . . the attachment shoe part from the first geometric coordinate to the second geometric coordinate to align the attachment shoe part with the base shoe part for attachment,” as required by claim 1. Because the Examiner fails to provide sufficient evidence or explanation to support the rejection, we are constrained by the record to reverse the Examiner’s rejection of independent claim 1, and independent claims 10 and 14 for similar reasons. We also reverse the Examiner’s rejections of corresponding dependent claims 2–9, 11–13, and 15–20. Although the Examiner cites additional references for rejecting some dependent claims, the Examiner has not shown the additional references overcome the deficiency discussed above in the rejection of claim 1. CONCLUSION We reverse the Examiner’s decision rejecting claims 1–20 under 35 U.S.C. § 103. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–7, 9–12, 14–20 103 Heiml, Cremaschi, Nishida 1–7, 9–12, 14–20 8 103 Heiml, Cremaschi, Nishida, Falk 8 13 103 Heiml, Cremaschi, Nishida, Harvill 13 Overall Outcome 1–20 REVERSED