DETAILED ACTION
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 .
Status of Claims
This Office Action is in response to the amendment filed 12/1/25. As directed by the amendment, claims 1, 4, 5, 11 and 17 have been amended. Claims 2, 4-6 and 13-14 have been cancelled. Claims 1, 3, 7-12, 15-20 are pending in this application.
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 examinationunder 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of theprevious Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on12/1/25 has been entered.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke § 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke § 112(f) except as otherwise indicated in an Office action.
In the instant case there does not appear to be any means for language in the claims and/or language to be considered under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 103 AIA
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, 7-12, 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Dealey US 20160058100 A1 (herein after Dealey) in view of Podhajny US 20140245634 A1 (herein after Podhajny).
Regarding claim 1, Dealey discloses an upper for an article of footwear (Abstract), comprising: a first tubular knit structure (paragraph 0006, 0043), wherein the first tubular knit structure includes a first layer and a second layer (paragraphs 0006, 0007 and 0008), the first layer and the second layer being separable (paragraph 0049 and 0065) such that a first passage (as seen in annotated Figures 13 and 14) is located between the first layer and the second layer (paragraph 0049 and 0065 as seen in annotated Figures 13 and 14); and a second tubular knit structure (as seen in annotated Figures 13 and 14), wherein the second tubular knit structure includes a third layer (as seen in annotated Figures 13 and 14) and a fourth layer (as seen in annotated Figures 13 and 14), the third layer and the fourth layer being separable (paragraph 0049 and 0065) such that a second passage (as seen in annotated Figures 13 and 14) is located between the third layer and the fourth layer (as seen in annotated Figures 13 and 14), wherein the first and second tubular knit structures each extends from a biteline of the upper to a throat area of the upper (as seen in annotated Figures 13 and 14), and converge forming a merged tubular area coextensive with the throat area of the upper (paragraph 0087, 0089 and 0090, as seen in annotated Figures 13 and 14), wherein a first portion of a tensile strand (as seen in annotated Figure 14) extends through the first passage (as seen in annotated Figure 14), a second portion of the tensile strand (as seen in annotated Figure 14) extends through the second passage (as seen in annotated Figure 14), and a loop of the tensile strand (as seen in annotated Figure 14) is located between the first portion (as seen in annotated Figure 14) and the second portion (as seen in annotated Figure 14), a multiple layer (paragraph 0004, 0006, 0007, 0008), unitary knit structure (Abstract 0038, 0048), capable of being constructed on a circular knitting machine (paragraph 0043) which is used to knit tubular structures. Dealey also discloses the tubes being capable of having multiple layers (paragraph 0049 and 0065).
[AltContent: textbox (A loop of the tensile strand is located between the first portion and the second portion.)]
[AltContent: arrow][AltContent: textbox (First distance)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Opening)][AltContent: textbox (A second portion of the tensile strand extends through the second passage.)][AltContent: textbox (A first portion of a tensile strand extends through the first passage. )][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Second distance)][AltContent: arrow][AltContent: arrow][AltContent: textbox (Cavity)][AltContent: textbox (The loop extends from an opening providing access to a cavity of a merged tubular area.)]
PNG
media_image1.png
642
644
media_image1.png
Greyscale
Figure 14
[AltContent: textbox (An edge of the upper forming a merged tubular area coextensive with the throat area of the upper.)]
[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Throat area.)][AltContent: arrow]
PNG
media_image2.png
255
413
media_image2.png
Greyscale
However, Dealey is silent to the loop is located inside a cavity of the merged tubular area with an opening located proximate to the throat area of the upper.
Podhajny discloses the loop (paragraph 0043, 0082, 0084, 0087, 0088, as seen in annotated Figures 9 and 12) is located inside a cavity of the merged tubular area with an opening (as seen in annotated Figures 9 and 12, paragraph 0010, paragraph 0089) located proximate to the throat area of the upper (as seen in annotated Figure 12).
[AltContent: arrow][AltContent: arrow][AltContent: textbox (Opening)]
PNG
media_image3.png
160
192
media_image3.png
Greyscale
[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (The loop is located inside a cavity of the merged tubular area located proximate the throat area of the upper.)]
PNG
media_image3.png
160
192
media_image3.png
Greyscale
PNG
media_image4.png
531
471
media_image4.png
Greyscale
Dealey and Podhajny are analogous art to the claimed invention in that it relates to footwear with reinforcing inlaid strands that are part of the lacing system.
It would have been obvious to one having ordinary skill in the art before the effective filing date
of the invention to have modified the configuration of the loop of Dealey by constructing the loop is located inside a cavity of the merged tubular area located proximate the throat area of the upper as taught by Podhajny in order for the strand to be pulled against the knitted component to provide a more significant range of resistance when the laces are tied. The modification would be a simple modification to obtain predictable results, providing a better tightening result to the laces of the upper.
However, the combined references do not specifically disclose the angle between the two tubular knit structures is at least 5 degrees.
It would have been obvious to one having ordinary skill in the art before the effective filing date
of the invention to have modified the angle of the tubular knit structures of Dealey and Podhajny, making the angle of 5 degrees, in order to optimize the strength and coverage of the reinforced region, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only ordinary skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 3, the modified upper for an article of footwear of the combined references discloses wherein the loop is configured for engagement to a tensioning member of a fastening system (paragraph 0034 of Dealey).
Regarding claim 7, the modified the upper for an article of footwear of the combined references discloses, wherein the first tubular knit structure is a first distance from the second tubular knit structure at the biteline of the upper (as seen in annotated Figures13 and 14 of Dealey), wherein the first tubular knit structure is a second distance from the second tubular knit structure proximate the throat area of the upper (as seen in annotated Figures13 and 14 of Dealey), and wherein the first distance is greater than the second distance (as seen in annotated Figures13 and 14 of Dealey).
Regarding claim 8, the modified the upper for an article of footwear of the combined references discloses wherein a knitted base area (Abstract of Dealey) is located between the first tubular knit structure and the second tubular knit structure (as seen in annotated Figures13 and 14 of Dealey).
Regarding claim 9, the modified the upper for an article of footwear of the combined references discloses wherein the knitted base area (Abstract) includes a first number of courses in a first area adjacent to the throat area, (as seen in annotated Figures 13, paragraph 0042, 0053, 0054, 0073 and 0074 of Dealey), wherein the knitted base area includes a second number of courses adjacent to the biteline (as seen in annotated Figures13 of Dealey), and wherein the first number of courses is less than the second number of courses to create an angled orientation of the first tubular knit structure relative to the second tubular knit structure (paragraph 0085, as seen in annotated Figure 13 of Dealey – the v- shaped portion created by the merging tubular channels is narrower in the throat area and wider at the biteline, as such there would be less number of courses in the knitted component between the region where the tubes merge at the throat area, than where the tubular portions connect to the biteline).
[AltContent: connector][AltContent: connector][AltContent: textbox (The second number of courses between the first and second tubular structures.)][AltContent: textbox (The first number of courses between the first and second tubular structures.)][AltContent: textbox (Wherein the first number of courses is less than the second number of courses to create an angled orientation of the first tubular knit structure relative to the second tubular knit structure.)][AltContent: arrow][AltContent: arrow]
PNG
media_image5.png
597
385
media_image5.png
Greyscale
Regarding claim 10, the modified the upper for an article of footwear of the combined references discloses wherein the first layer of the first tubular knit structure includes a first yarn (as seen in annotated Figures13 and 14 of Dealey), that is substantially excluded from the base area (as seen in annotated Figure 13 of Dealey), and the second layer of the first tubular knit structure includes a second yarn that is common with the knitted base area (as seen in annotated Figures13 and 14 of Dealey).
[AltContent: textbox (Knitted base layer region with first and second yarns)][AltContent: ][AltContent: arrow][AltContent: arrow][AltContent: textbox (Second yarn)][AltContent: arrow][AltContent: textbox (Base layer)][AltContent: arrow][AltContent: textbox (The first layer includes a first yarn.)][AltContent: arrow][AltContent: textbox (The first yarn is excluded from the knitted base area)]
PNG
media_image1.png
642
644
media_image1.png
Greyscale
FIGURE 14
Regarding claim 11, Dealey discloses an upper for an article of footwear (Abstract, as seen in annotated Figures 13 and 14), comprising: a first tubular knit structure (paragraph 0006, 0043, as seen in annotated Figures 13 and 14), wherein the first tubular knit structure includes a first layer and a second layer (paragraph 0006, as seen in annotated Figures 13 and 14), the first layer (paragraphs 0006, 0007 and 0008, as seen in annotated Figures 13 and 14) and the second layer (paragraphs 0006, 0007 and 0008, as seen in annotated Figures 13 and 14) being separable (paragraph 0049 and 0065) such that a first passage is located between the first layer and the second layer (paragraph 0008, as seen in annotated Figures 13 and 14); and a second tubular knit structure (paragraph 0008, as seen in annotated Figures 13 and 14), wherein the second tubular knit structure includes a third layer and a fourth layer (as seen in annotated Figures 13 and 14), the third layer and the fourth layer being separable (paragraph 0049 and 0065) such that a second passage is located between the third layer and the fourth layer (as seen in annotated Figures 13 and 14), wherein the first tubular knit structure extends from a biteline of the upper to a throat area of the upper (as seen in annotated Figures 13 and 14), wherein the second tubular knit structure extends from the biteline of the upper to the throat area of the upper (as seen in annotated Figures 13 and 14), wherein a knitted base area is located between the first tubular knit structure and the second tubular knit structure at a location adjacent to the biteline (as seen in annotated Figures 13 and 14), and further wherein the first tubular knit structure (Abstract, paragraphs 0038, 0043, 0048 and 0049) and the second tubular knit structure (paragraph 0004, 0006, 0007, 008 and 0009) extend from the biteline of the upper to an edge of the upper (as seen in annotated Figures 13 and 14 – the region where the two tubular knit structures merge creates an edge where the loop is formed that is in the throat area), where the first tubular knit structure and the second tubular knit structure converge (paragraph 0087, 0089 and 0090, as seen in annotated Figures 13 and 14) to form a merged tubular area coextensive (paragraph 0065 and 0089) with the throat area of the upper (Abstract, paragraph 0038 and 0048, as seen in annotated Figures 13 and 14), wherein a first portion of a tensile strand extends through the first passage (as seen in annotated Figure 14), a second portion of the tensile strand extends through the second passage (as seen in annotated Figure 14), and a loop of the tensile strand is located between the first portion of the tensile strand and the second portion of the tensile strand (as seen in annotated Figure 14).
Dealey discloses a multiple layer (paragraph 0006, 0007, 0008), unitary knit structure (Abstract 0038, 0048), capable of being constructed on a circular knitting machine (paragraph 0043) which is used to knit tubular structures. Dealey also discloses the tubes being capable of having multiple layers (paragraph 0049 and 0065),
[AltContent: textbox (Second passage)][AltContent: arrow][AltContent: arrow][AltContent: textbox (First passage)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (A first tubular knit structure.)][AltContent: connector][AltContent: connector][AltContent: ][AltContent: ][AltContent: textbox (A second tubular knit structure.)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (The first layer and the second layer being separable such that a first passage is located between the first layer and the second layer. )][AltContent: textbox (The third layer and the fourth layer being separable such that a second passage is located between the third layer and the fourth layer. )]
PNG
media_image1.png
642
644
media_image1.png
Greyscale
[AltContent: textbox (A knitted base area is located between the first tubular knit structure and the second tubular knit structure at a location adjacent to the biteline.)]
FIGURE 1
[AltContent: textbox (Wherein the first tubular knit structure and the second tubular knit structure merge at a merged tubular area located in or adjacent to the throat area of the upper.)][AltContent: textbox (Loop)][AltContent: arrow][AltContent: textbox (Opening)][AltContent: arrow]
[AltContent: textbox (Tensile strand)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (The second tubular knit structure extends from the biteline of the upper to the throat area of the upper.)][AltContent: textbox (An upper for an article of footwear.)][AltContent: textbox (The first tubular knit structure extends from a biteline of the upper to a throat area of the upper. )]
PNG
media_image6.png
758
496
media_image6.png
Greyscale
[AltContent: textbox (An edge of the upper forming a merged tubular area coextensive with the throat area of the upper.)][AltContent: arrow][AltContent: arrow][AltContent: textbox (Throat area.)][AltContent: arrow][AltContent: arrow][AltContent: arrow]
PNG
media_image2.png
255
413
media_image2.png
Greyscale
However, Dealey is silent to the loop is located inside a cavity of the merged tubular area with an opening located proximate to the throat area of the upper.
Podhajny discloses the loop (paragraph 0043, 0084, 0087, 0088, as seen in annotated Figures 9 and 12) is located inside a cavity of the merged tubular area with an opening (as seen in annotated Figure 9, paragraph 0010, paragraph 0089) located proximate to the throat area of the upper (as seen in annotated Figure 12).
Dealey and Podhajny are analogous art to the claimed invention in that it relates to footwear with reinforcing inlaid strands that are part of the lacing system.
It would have been obvious to one having ordinary skill in the art before the effective filing date
of the invention to have modified the configuration of the loop of Dealey by constructing the loop is located inside a cavity of the merged tubular area located proximate the throat area of the upper as taught by Podhajny in order for the strand to be pulled against the knitted component to provide a more significant range of resistance when the laces are tied. The modification would be a simple modification to obtain predictable results, providing a better tightening result to the laces of the upper.
Regarding claim 12, the modified upper for an article of footwear of the combined references discloses wherein the loop (as seen in annotated Figures 13 and 14 of Dealey) is configured for engagement to a tensioning member of a fastening system (as seen in annotated Figures 13 and 14 of Dealey).
PNG
media_image7.png
496
758
media_image7.png
Greyscale
[AltContent: textbox (A cavity of the merged tubular area located in the throat area of the upper.)]
[AltContent: arrow][AltContent: arrow][AltContent: textbox (Loop)][AltContent: arrow]
Regarding claim 15, the modified the upper for an article of footwear of the combined references discloses wherein the knitted base area (Abstract of Dealey) includes a first number of courses in a first area adjacent to the upper throat area (as seen in annotated Figures 13, paragraph 0042, 0053, 0054, 0073 and 0074 of Dealey), wherein the knitted base area (paragraph 0006 of Dealey) includes a second number of courses adjacent to the biteline (as seen in annotated Figures 13 of Dealey), and wherein the first number of courses is greater than the second number of courses to create an angled orientation of the first tubular knit structure relative to the second tubular knit structure (paragraph 0085, as seen in annotated Figure 13 of Dealey – the v- shaped portion created by the merging tubular channels is narrower in the throat area and wider at the biteline, as such there would be less number of courses in the knitted component between the region where the tubes merge at the throat area, than where the tubular portions connect to the biteline).
Regarding claim 16, the modified the upper for an article of footwear of the combined references discloses wherein the first layer includes a first yarn (as seen in annotated Figure 14 of Dealey), and wherein the first yarn is excluded from the knitted base area (as seen in annotated Figure 14 of Dealey).
[AltContent: textbox (Knitted base layer region with first and second yarns)][AltContent: ][AltContent: arrow][AltContent: arrow][AltContent: textbox (Second yarn)][AltContent: arrow][AltContent: textbox (Base layer)][AltContent: arrow][AltContent: textbox (The first layer includes a first yarn.)][AltContent: arrow][AltContent: textbox (The first yarn is excluded from the knitted base area)]
PNG
media_image1.png
642
644
media_image1.png
Greyscale
FIGURE 14
[AltContent: textbox (An edge of the upper forming a merged tubular area coextensive with the throat area of the upper.)][AltContent: arrow][AltContent: textbox (Throat area.)][AltContent: arrow][AltContent: arrow][AltContent: arrow]
PNG
media_image2.png
255
413
media_image2.png
Greyscale
Regarding claim 17, Dealey discloses an upper for an article of footwear (Abstract, as seen in annotated Figures13 and 14), comprising: a first tubular knit structure (paragraph 0043, as seen in annotated Figures13 and 14), wherein the first tubular knit structure (as seen in annotated Figures13 and 14) that includes a first layer and a second layer (paragraphs 0006, 0007 and 0008), the first layer and the second layer being separable (paragraph 0049 and 0065) such that a pocket is located between the first layer and the second layer (paragraph 0049 and 0065 as seen in annotated Figures13 and 14); and a knitted base area located adjacent to the first tubular knit structure on at least one side of the first tubular knit structure (as seen in annotated Figures13 and 14), wherein the first layer of the first tubular knit structure includes a first yarn (paragraphs 0006, 0007 and 0037), wherein the second layer of the first tubular knit structure includes a second yarn (Abstract, paragraph 0006, 0007 0047), and wherein the first yarn is substantially excluded from the knitted base area (as seen in annotated Figure 14), and a second tubular knit structure (paragraph 0004, 0006, 0007, 0008 and 0009), wherein the second tubular knit structure (paragraph 0004, 0006, 0007, 0008 and 0009) includes a third layer (paragraph 0004, 0006, 0007, 0008 and 0049) and a fourth layer (paragraph 0004, 0006, 0007, 0008 and 0049), the third layer (paragraph 0004, 0006, 0007, 0008 and 0049) and the fourth layer (paragraph 0004, 0006, 0007, 0008 and 0049) being separable (paragraph 0049 and 0065) such that a pocket is located between the third layer and the fourth layer (paragraph 0004, 0006, 0007, 0008 and 0049), wherein the first tubular knit structure (Abstract, paragraphs 0038, 0043, 0048 and 0049) and the second tubular knit structure (paragraph 0004, 0006, 0007, 008 and 0009) extend from a biteline of the upper to an edge of the upper (as seen in annotated Figures 13 and 14 – the region where the two tubular knit structures merge creates an edge where the loop is formed that is in the throat area) where the first tubular knit structure and the second tubular knit structure converge to form a merged tubular area coextensive with a throat area of the upper (paragraph 0065, 0087, 0089 and 0090, as seen in annotated Figures 13 and 14), wherein a loop of a tensile strand (as seen in annotated Figure 14) is configured for engagement with a tensioning member of a fastening system (as seen in annotated Figure 14). Dealey discloses a multiple layer (paragraph 0006, 0007, 0008), unitary knit structure (Abstract 0038, 0048), capable of being constructed on a circular knitting machine (paragraph 0043) which is used to knit tubular structures. Dealey also discloses the tubes being capable of having multiple layers (paragraph 0049 and 0065).
However, Dealey is silent to the loop extending from an opening of the merged tubular area that is oriented towards a throat area of the upper.
Podhajny discloses the loop (paragraph 0043, 0084, 0087, 0088, as seen in annotated Figures 9 and 12) extending from an opening to a cavity (as seen in annotated Figure 9, paragraph 0010, paragraph 0089) of the merged tubular area that is oriented towards a throat area of the upper (as seen in annotated Figure 12).
Dealey and Podhajny are analogous art to the claimed invention in that it relates to footwear with reinforcing inlaid strands that are part of the lacing system.
It would have been obvious to one having ordinary skill in the art before the effective filing date
of the invention to have modified the configuration of the loop of Dealey by constructing the loop is located inside a cavity of the merged tubular area located proximate the throat area of the upper as taught by Podhajny in order for the strand to be pulled against the knitted component to provide a more significant range of resistance when the laces are tied. The modification would be a simple modification to obtain predictable results, providing a better tightening result to the laces of the upper.
Regarding claim 18, the modified the upper for an article of footwear of the combined references discloses wherein the first yarn and the second yarn are different yarn types (paragraph 0045, 0046 and 0047 of Dealey).
Regarding claim 19, the modified the upper for an article of footwear of the combined references discloses wherein the second yarn is knitted within the knitted base area (as seen in annotated Figures 13 and 14 of Dealey).
[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Second yarn)][AltContent: arrow][AltContent: arrow][AltContent: textbox (First Yarn)]
PNG
media_image1.png
642
644
media_image1.png
Greyscale
Figure 14
Regarding claim 20, the modified the upper for an article of footwear of the combined references discloses wherein the first yarn is a monofilament yarn (Abstract of Dealey), and wherein the second yarn is a polyester yarn (paragraph 0045 of Dealey).
Arguments
Applicant’s arguments have been fully considered but are not convincing. In view of Applicant's amendments, the search has been updated, and a rejection on the amended claims is applied above. The examiner suggests and interview may be helpful to work together to help define the claims and the loop and opening limitation.
In response to the applicant’s arguments that the combined references do not teach "loop located inside a cavity. The applicant’s arguments are directed towards the references individually when in fact the rejection is based on the combination of Dealey and Podhajny. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, Dealey (as seen in annotated Figure 14) teaches the loop being within the cavity.
While the applicant has presented a detailed explanation of the inventive concept in his arguments, the language used to define the invention in the claims is broad and can be interpreted in many ways. The claim limitation is as follows:
“…wherein a first portion of a tensile strand extends through the first passage, a second portion of the tensile strand extends through the second passage, and a loop of the tensile strand is located between the first portion and the second portion, and wherein the loop is located inside a cavity of the merged tubular area with an opening located proximate to the throat area of the upper….”.
The limitations:
“…a first portion of a tensile strand extends through the first passage,…:… a second portion of the tensile strand extends through the second passage…”, the claim language is interpreted as one portion of the tensile strand is located in the space/passage between the top portion of the textile and the bottom portion of the textile. Dealey (1408, 1410) teaches the tensile strands, the first passage and second passage are taught by Dealey (as seen in annotated Figure 14).
“…a loop of the tensile strand is located between the first portion and the second portion…”, the claim language is interpreted as the tensile strands merge together in which through an opening a loop can be created to accommodate the laces which is accessed through the opening in the throat region where the loop would extend when the laces are pulled tight. Dealey (as seen in annotated Figure 13 and 14) teaches the strand portion is within the passage/cavity between the outer and inner surfaces of the textile. Podhajny (as seen in annotated Figures 9 and 12) shows the tensile strand being between the first and second portions.
“…the loop is located inside a cavity of the merged tubular area with an opening located proximate to the throat area of the upper…”, the applicant has included this amended language without clearly explaining where the opening is located. Is the opening in the textile or in the passage/ cavity or tubular area? The limitation is interpreted broadly as the opening is where the tensile strand extends from inside between the top portion of the textile surface and bottom portion of the textile surface to the outside to form a loop for laces. Before being engaged by laces, the tensile strand is indeed shown in Figure 12 of Podhajny as being located inside a cavity of the merged tubular area (paragraph 0078 of Podhajny).
In response to the applicant’s arguments that while Podhajny depicts a tensile strand extending to from an exposed loop, it would not be enclosed within a cavity with an opening proximate to a throat area. It is unclear what the applicant is arguing here. The claim language and the arguments contradict the device in applicants Figure 1, which in fact shows the tensile strand as exposed. Podhajny, teaches many different configurations for the tensile strand as pointed out in Paragraph 0078, as seen in annotated Figure 9, the strand extends from within the passage through an opening in the throat area. This appears to be exactly the same as what is depicted in applicants Figure 1, but also what is required by the claims. The applicant has not positively claimed or provided any defining language/ structural limitations in the claims that would prevent the device of the combined references from reading on the claims as written. The applicant is reminded the prior art is applied with the broadest reasonable interpretation, and the prior art references meet all the structural elements of the claims as written. It is the claims that define the invention, and it is claims, not specifications or arguments that are anticipated or unpatentable. Constant v. Advanced Micro-Devices Inc., 7 USPQ2d 1064. The examiner believes an interview would be helpful to better define the loop and opening limitation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE M FERREIRA whose telephone number is (571)270-5916, fax number (571) 270-6916. The examiner can normally be reached on Monday - Thursday 9:00 am- 5:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, ALISSA J. TOMPKINS, at (571) 272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Catherine M. Ferreira/
Examiner, Art Unit 3732
/ALISSA J TOMPKINS/Supervisory Patent Examiner, Art Unit 3732