NIKE, Inc.

Patent Trials and Appeals Board

Dec 30, 2021

2021002939 (P.T.A.B. Dec. 30, 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.
15/647,769 07/12/2017 Austin Orand 215127.02289/150391US02CO 7760
11333 7590 12/30/2021
Banner & Witcoff, Ltd.
Attorneys for client 215127 & 315127
71 South Wacker Drive
Suite 3600
Chicago, IL 60606
EXAMINER
MOHANDESI, JILA M
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
12/30/2021 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):
PTO-11333@bannerwitcoff.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 AUSTIN ORAND and CHRISTOPHER L. ANDON
Appeal 2021-002939
Application 15/647,769
Technology Center 3700
Before MICHAEL L. HOELTER, BENJAMIN D. M. WOOD, and
CARL M. DEFRANCO, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–31, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We used the word “Appellant” to refer to the applicant as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Nike, Inc.
Appeal Br. 2.
Appeal 2021-002939
Application 15/647,769

2
CLAIMED SUBJECT MATTER
The claims are directed to an article of footwear comprising a sole
structure with an electrically controllable damping element. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An article of footwear comprising:
an upper; and
a sole structure coupled to the upper and including an
electrically-controllable first damping pad positioned in a
plantar region of the sole structure, wherein the first damping
pad includes
a first chamber,
a first foam element located within the first chamber,
EF-reactive particles located within the first chamber and at
least partially filling cavities in the first foam element, wherein
the EF-reactive particles in the first chamber comprise particles
of a polymer having a dipolar molecule and having sizes of 5
microns or less, and wherein the EF-reactive particles located
within the first chamber are dry, and
a set of first electrodes positioned to create, in response to a
voltage across the first electrodes, an electrical field in at least a
portion of the EF-reactive particles in the first chamber.

REFERENCES
Name Reference Date
Rosenberg US 2006/0248750 A1 Nov. 9, 2006
Green US 2012/0256135 A1 Oct. 11, 2012

REJECTION
Claims Rejected 35 U.S.C. § References
1–31 103 Rosenberg, Green

Appeal 2021-002939
Application 15/647,769

3
OPINION
Independent claim 1 requires the EF-reactive particles located within
the first chamber in the first damping pad to be “dry.” Appeal Br. 9 (Claims
App.). Independent claim 17 contains a similar limitation. Id. at 12–13.
The Examiner relies on Rosenberg to teach the footwear article recited in
claims 1 and 17—including the claimed sole structure, first electrically
controllable damping pad positioned in a plantar region of the sole structure,
a first chamber in the damping pad and EF reactive particles within the first
chamber—but acknowledges that Rosenberg does not teach, inter alia, that
the EF particles located within the first chamber are dry. Final Act. 4. The
Examiner relies on Green to teach the missing limitation, finding that Green
teaches “Electrorheological (ER) fluids” and methods of using ER fluids.
Id. at 4–5. The Examiner finds that “conventional ER fluids” are “composed
of non-conducting, semiconducting, inorganic particles, . . . suspended in a
non-conducting liquid, such as silicone oil, paraffin or mineral oil.” Id. at 5;
see Green ¶ 4. The Examiner relies on a particular ER fluid in which the
particles are dried before they are combined with silicone oil. Final Act. 5;
see Green ¶ 94. The Examiner determines that it would have been obvious
to one of ordinary skill in the art to use an ER fluid “containing dry EF-
polymer particles as taught by Green” in place of Rosenberg’s ER fluid
“since they are known to exhibit ER behavior” and “when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” Id. at 6.
Appellant responds that although Green teaches EF particles that are
dried prior to use, “[t]his drying step removes water from the particles so
Appeal 2021-002939
Application 15/647,769

4
that they may be properly suspended in [a non-conducting] liquid.” Appeal
Br. 5. Appellant points out that “Green clearly requires that the particles be
suspended in a liquid (e.g. silicone oil) in order to create an ER fluid.” Id.
According to Appellant, paragraph 29 of the Specification makes clear that
the requirement that the particles be “dry” excludes particles that are mixed
with any kind of liquid, not just water. Id. (citing Spec. ¶ 29); see id. at 6–7
(providing dictionary definitions of “dry” that indicated that “the term ‘dry’
is not necessarily tied to water”). The Examiner disagrees with Appellant’s
reading of Paragraph 29, asserting that “it does not disclose that no fluid is
or can be present in the chamber.” Ans. 3–4.
The dispute between the Examiner and Appellant is whether particles
that are free from any water but suspended in another liquid such as silicone
oil can still be considered “dry.” We agree with Appellant that such
particles would not be considered dry.
During prosecution, the PTO gives claims their broadest reasonable
interpretation consistent with the specification. In re Bigio, 381 F.3d 1320,
1324 (Fed. Cir. 2004); see In re Case, 215 F.3d 1351 (Fed. Cir. 1999).
Under the broadest reasonable interpretation standard, claim terms are given
their ordinary and customary meaning as would be understood by one of
ordinary skill in the art in the context of the entire disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Paragraph 29
of the Specification reads in relevant part: “The particles . . . may be similar
to . . . those used in ER fluid. In damping pads according to at least some
embodiments, however, those particles may be dry or substantially dry.” In
distinguishing “dry” particles from those used in ER fluid, this excerpt
indicates that the particles in ER fluid are not dry. As noted above,
Appeal 2021-002939
Application 15/647,769

5
conventional ER fluid are comprised of particles suspended in liquids other
than water. Final Act. 5; Green ¶ 4. Therefore, it is reasonably clear from
Appellant’s Specification that particles suspended in any liquid, not just
water, would not be considered dry. This determination is consistent with
the dictionary definitions proffered by Appellant which, as Appellant states,
do not tie the term “dry exclusively to the absence of water.” See, e.g.,
Appeal Br. 6 (quoting Merriam-Webster definition of “dry” as “free or
relatively free from a liquid and especially water”). Because Green’s
particles are suspending in silicone oil, they are not dry. Accordingly, we do
not sustain the Examiner’s rejection of independent claims 1 and 17, as well
as dependent claims 2–16 and 18–31, as unpatentable over Rosenberg and
Green.
DECISION SUMMARY

Claims
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
1–31 103 Rosenberg, Green 1–31

REVERSED