Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/7/2026 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
Claim Objections
Applicant is advised that should claim 14 be found allowable, claim 20 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. Both claims require the additional presence of heel counter in the upper. While claim 20 indicates the heel counter comprises the initial thermoplastic base material, claim 1 already indicates the upper consists of initial thermoplastic base material. Thus, any difference in scope between claims 14 and 20 is not apparent. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
Claim 21 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 21 recites “the sole consists of expanded thermoplastic polyurethane”. Written support for the entirety of soles consisting of expanded thermoplastic polyurethane is not found within the specification as originally filed. While written support is found for the midsole to be expanded TPU (see for instance ¶ 76), there is no indication that other sole components (e.g. outsole) may also consist of expanded TPU. Accordingly, claim 21 fails to comply with the written description requirement.
Claim 21 recites “recycling the sports shoe in a joint recycling process for the upper and the sole to recover the thermoplastic polyurethane and the expanded thermoplastic polyurethane”. Written support for a joint-recycling process whereby expanded thermoplastic polyurethane is obtained/recovered is not found within the specification. Rather, the specification only speaks of recovering thermoplastic “base material” generically. As written support for recovering thermoplastic polyurethane in expanded form is not present, claim 21 fails to comply with the written description requirement.
Claim 21 also requires a process step of forming a new shoe, wherein the new sports show comprises the expanded thermoplastic polyurethane. As discussed above, written support is not found for the recovered thermoplastic to be in the form of expanded thermoplastic. Likewise, written support is not found for a process step pertaining to forming a new sports shoe created from recovered thermoplastic polyurethane foam. Accordingly, claim 21 fails to comply with the written description requirement.
Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 recites “therein the film is formed thermoplastic polyurethane foil”. It is unclear what is meant by formed thermoplastic polyurethane foil. In the interest of compact prosecution, claim 10 is construed as if it stated “wherein the film is thermoplastic polyurethane foil”.
Claim Rejections - 35 USC § 103
Claim(s) 1, 4, 6, 9-11, 14, 19, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dua (US 2013/0255103 A1) in view of Reinhardt (US 2014/0366404 A1), Malz (DE102013012625 A1), Tamm (US 2014/0310986 A1), and Fuerst (US 2003/0172548 A1). As the cited DE publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 1, 4, 6, 14, and 20, Dua teaches woven textiles/knitted textiles formed from thermoplastic polymer material (Abstract) useful as components within soles/uppers of shoes (¶ 69; Figures 49-54). Dua teaches the textiles comprise yarn formed from thermoplastic polymer material (¶ 166). Dua teaches preferably at least 60 wt% of sole and upper are formed from thermoplastic polymer material, whereby the majority or even all of the footwear is formed from one or more thermoplastic polymer material (¶ 169, 182), suggestive of uppers and soles consisting of the same base material. Dua teaches individually fabricated soles and uppers, which are joined to each other (¶ 163). Dua teaches thermoplastic polymer material may be extracted, recycled, and then incorporated into another product (¶ 182-183) whereby a whole article such as a shirt is recycled (¶ 183; Figure 57). Dua teaches the footwear can be recycled following their useful lives, whereby the obtained recycled thermoplastic polymer material can be incorporated into another footwear product (¶ 182-183). As there is no perceivable difference in structure between the shoes of Dua and those claimed, such shoes are seen to be capable of performing the intended use of sports shoe. Dua teaches various thermoplastic polymer materials such as polyurethane (¶ 75, 164).
Dua teaches reinforcing members and heel counters within the upper (¶ 165, 175). As discussed above, Dua teaches all of the footwear can be formed from one or more thermoplastic polymer material (¶ 169, 182), suggestive of reinforcing members / heel counters also being made of the thermoplastic polymer material.
Dua differs from the subject matter claimed in that expanded foamed pellets is not described for the creation of sole. Reinhardt teaches soles/insoles for shoes with region derived from expanded thermoplastic polyurethane particles (Abstract; ¶ 9), deemed to be pellets. Reinhardt teaches incorporating regions of expanded thermoplastic polyurethane is advantageous insofar as the properties of foamed TPU material, such as cushioning and elasticity, can be precisely located where such features are desired (¶ 10-11). It would have been obvious to one of ordinary skill in the art to utilize regions of expanded thermoplastic polyurethane pellets within the soles of Dua because doing so would facilitate locational control of features such as cushioning/elasticity as taught by Reinhardt.
Dua also differs from the subject matter claimed in that a particular percentage of recycled material and new thermoplastic material within the new footwear created is not described. Malz teaches it is known in the art that recycled TPU is suitable for shoes (¶ 1-9). Malz indicates due to deterioration of mechanical properties, recycled TPU is typically used in relatively small amounts with virgin TPU, although in the case of shoes, higher quantities can be used since mechanical properties play less of a role (¶ 7-9). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize new thermoplastic base material in combination with recycled thermoplastic material because doing so would avoid deterioration of mechanical properties in accordance with the teachings of Malz.
Dua also differs with respect to the subject matter claimed in that a preferred Shore D hardness of the fabric component within the upper is not described. Tamm is also directed toward shoes with uppers having fabric components of polyurethane (Abstract; ¶ 11-13). Tamm teaches the fabric in the upper can be coated with a polymer layer so as to reduce flexibility/stretchability and achieve stability (¶ 183-184) whereby the polymer imparts a hardness of 40-60 Shore D (¶ 193). It would have been obvious to one of ordinary skill in the art to coat the fabrics of Dua’s upper with the polymer material of Tamm because doing so would reduce flexibility/stretchability and achieve stability as taught by Tamm. The disclosed Shore D overlaps the range claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Tamm suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Tamm. See MPEP 2123. Tamm teaches embodiments where the polymer layer is thermoplastic polyurethane (¶ 191). Therefore, Tamm is suggestive of embodiments where fabric and coating are of the same base material.
Dua teaches the soles comprise midsole and outsole (¶ 164). Dua also differs with respect to the disclosure of particular Shore A hardness of the outsole. In this regard, Fuerst teaches it was known in the art the hardness of outsoles is selected so as to achieve a certain degree of softness/flexibility, whereby softer outsoles is preferred for running shoes or slippers and harder outsoles is preferred for work boots or safety shoes (¶ 50). Accordingly, the hardness of the outsole is a known result effective variable subject to routine optimization by one of ordinary skill in the art. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to workable or optimal outsole hardness characteristics within the scope of the present claims so as to produce a desired degree of softness/flexibility depending on the intended application.
Regarding Claim 9, Dua teaches foam component 830 embedded with shoe to enhance comfort made with thermoplastic polymer material (¶ 173-174; Figure 52), construed as inner sock. As discussed above, Dua teaches all of the footwear can be formed from one or more thermoplastic polymer material, such as polyurethane (¶ 164, 169, 182).
Regarding Claim 10, Dua describes ankle opening 822 with fused textile element 828 around ankle opening (¶ 174-175; Figure 51), construed as “film”. As discussed above, Dua teaches all of the footwear can be formed from one or more thermoplastic polymer material, such as polyurethane (¶ 164, 169, 182).
Regarding Claim 11, Dua teaches various thermoplastic polymer materials such as polyurethane (¶ 75, 164). Dua differs from the subject matter claimed in that particular quantities of recycled material within thermoplastic polyurethane is not described. Malz teaches it is known in the art that recycled TPU is suitable for shoes (¶ 1-9). It would have been obvious to one of ordinary skill in the art to utilize recycled material within the thermoplastic polyurethanes of Dua because doing so would provide eco-friendly shoes and would constitute an efficient use of resources insofar as it otherwise avoids virgin materials and discarding of otherwise useful TPU.
Regarding Claim 19, Dua teaches all of the footwear can be formed from one or more thermoplastic polymer material (¶ 169, 182). A footwear formed from one thermoplastic polymer material is seen to be a whole shoe made from a single thermoplastic base material.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dua (US 2013/0255103 A1) in view of Reinhardt (US 2014/0366404 A1), Malz (DE102013012625 A1), Tamm (US 2014/0310986 A1), Fuerst (US 2003/0172548 A1), and Okorokov (Shoe Reports). As the cited DE publication is in a non-English language, a machine-translated version of the publication will be cited to.
The discussion regarding Dua, Reinhardt, Malz, Tamm, and Fuerst within ¶ 13-22 is incorporated herein by reference.
Regarding Claim 5, Dua teaches outsoles are “thermally bonded” to midsole to avoid adhesives and improve recyclability (¶ 170). Dua differs from the subject matter claimed in that injection molding is not explicitly stated. Okorokov teaches injection molding is commonly used for outsole molding / attaching soles as an alternative to glues, particularly with thermoplastic polyurethanes (Page 2). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize injection molded TPU outsoles within the shoes of Dua because injection molding of TPU outsoles is conventionally known and used and would facilitate recyclability in comparison with that of adhesives.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dua (US 2013/0255103 A1) in view of Reinhardt (US 2014/0366404 A1), Malz (DE102013012625 A1), Tamm (US 2014/0310986 A1), Fuerst (US 2003/0172548 A1), and Amos (US 2016/0081418 A1). As the cited DE publication is in a non-English language, a machine-translated version of the publication will be cited to.
The discussion regarding Dua, Reinhardt, Malz, Tamm, and Fuerst within ¶ 13-22 is incorporated herein by reference.
Regarding Claim 16, Dua differs from the subject matter claimed in that marker is not described. Amos describes footwear comprising electronic markers, whereby the markers are capable of storing information such as data related to shoe use (Abstract; ¶ 65, 140). It would have been obvious to one of ordinary skill in the art to utilize the sensors of Amos within the shoes of Dua because doing so would facilitate data storage/collection within the shoes. The recitation “to indicate the number of times the thermoplastic base material has been incorporated into previous pairs of shoes” is seen to refer to data stored within the marker that is retrievable by the user as opposed to programming performing some function to the sports shoe at issue. Since a functional relationship between the sports shoe at issue and the data stored within the marker is not apparent, the information present within the markers, in this case the number of times the thermoplastic base material has been incorporated into previous pairs of shoes, is deemed to be nonfunctional descriptive material owed no patentable weight. See MPEP 2111.05.
Response to Arguments
Applicant's arguments filed 1/7/2026 have been fully considered but they are not persuasive.
Applicant generally argues Dua fails to describe all parts of the shoe being formed from the same material. This is not found persuasive. Dua teaches all of the footwear can be formed from one or more thermoplastic polymer material (¶ 169, 182). A footwear formed from one thermoplastic polymer material is a whole shoe made from a single thermoplastic base material.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duane Smith can be reached at (571)272-1166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEPHEN E RIETH/Primary Examiner, Art Unit 1759