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 .
DETAILED ACTION
Response to Amendment
Applicant’s amendment filed January 26, 2026 has been received, Claims 1, 4-5, and 7-20 are currently pending, with Claim 20 remaining withdrawn from prosecution at this time.
Affidavit/Declaration
The Declaration under 37 CFR 1.132 filed January 26, 2026 is insufficient to overcome the rejection of claims 1-2, 5-6, 8-12, 15-16, and 18-19 based upon Shepherd (US 2004/0099016) in view of McMurray (US 2004/0097151), Shepherd (US 2004/0099016) and McMurray (US 2004/0097151) in view of Zelman (WO 9716587 A1), Shepherd (US 2004/0099016) and McMurray (US 2004/0097151) in view of Farrington (GB 1,067,944 A), and Shepherd (US 2004/0099016) and McMurray (US 2004/0097151) in view of Dombrow (US 2017/0020230) as set forth in the last Office action because: As currently claimed, Shepherd in view of McMurray teaches the structure of the claimed limitations.
The declaration asserts Shepherd does not disclose that its spacer yarn 41 is knitted along consecutive loop stitches to form a first layer, much less does Shepard disclose that its spacer yarn forms an external surface of the first layer. It is well known in the industry that spacer yarns are not knitted along consecutive loop stitches to form layers, much less do these yarns form an external surface of such a layer. Shepherd discloses "that the spacer yarn is hooked about the necks of cooperating stitches in alternate wales of the two layers." (Shepherd, 1 [0031].) Shepherd shows this stitching of alternate wales in both FIGS. 3 and 4. (Id., FIGS. 3 and 4 (FIG. 4 reproduced above). Further, the declaration asserts the Office's interpretation of Shepherd's spacer yarn to be the claimed first yarn is unreasonable because a POSA would not have understood a spacer yarn to form its own layer as claimed, much less form an external surface of a layer within a double layer knitted structure. A POSA would have understood that: (1) a spacer yarn is an internal yarn between two layers, not a yarn forming an external surface of a layer of the knitted structure; and (2) Shepherd's spacer yarn is connected
or attached to an existing, defined layer, and does not form a layer knitted along a row of consecutive loop stitches itself.
Examiner respectfully disagrees. As seen in the rejection previously, and below, Shepard clearly discloses a first yarn knitted along a first knitting row to form a first layer, wherein the first yarn is knitted along consecutive loop stitches of the first layer to form an external surface of the first layer. Applicant’s claim language is broad and if Applicant desires a different interpretation of the claim limitations, then Applicant must explicitly claim such structure. For instance, the yarn being knitted along a course of consecutive loop stitches to form a first/external layer simply requires that the knitted yarn be present “along” the course of consecutive loop stitches and “form” the first/external layer in some manner. As seen in Fig.4 of Shepard, 41 is knitted along a course (i.e. consecutive loop stitches) of 36 and, inasmuch as has been claimed by Applicant, “form(s) an external surface of the first layer” as 41 is one of three yarns which “form” the external surface. It is well known in the industry that spacer yarns are knit simultaneously with the front and back layers. The arguments that a POSA would not have understood a spacer yarn to form its own layer as claimed, is not found persuasive as any yarn forms its own layer by virtue of being a yarn present in a layer. For these reasons, the Declaration’s arguments are not found persuasive.
The declaration also asserts a POSA would have understood that a spacer yarn does not form an external surface of a knitted layer within a double layer knitted structure because spacer yarns are used as an internal linking elements within the knitted structure. For example, Shepherd discloses that "the spacer yarn is less visible and there is less possibility of the spacer yarn emerging through either of the weft knitted layers of the fabric" such that "the visual and tactile aesthetics of the [] fabric [] are preferably not impaired by exposure of the spacer yarn." (Shepherd, 11 [0007], [0010].)
Examiner respectfully disagrees. Simply because the yarn of Shepherd is less visible does not negate the fact that, inasmuch as has been claimed by Applicant, 41 “forms” the external surface of the first knitted layer 36, as 41 is one of three yarns which “form” the external surface. Applicant’s claim language is broad and if Applicant desires a different interpretation of the claim limitations then Applicant must explicitly claim such structure. For these reasons, the Declaration’s argument is not found persuasive.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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, 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 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.
1. Claim(s) 1, 4-5, 7-9, 11-14, and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shepherd (US 2004/0099016) in view of McMurray (US 2004/0097151).
Regarding Claim 1, Shepherd discloses a double layer knitted element (30) comprising: a first yarn (41) knitted along a first knitting row to form a first layer (36)(as seen in Fig.4, 41 is knit along a course/row in 36), wherein the first yarn is knitted along consecutive loop stitches of the first layer to form an external surface of the first layer (as seen in Fig.4, 41 is knitted along a course of loops of 36 and, inasmuch as has been claimed by Applicant, “form[s] an external surface of the first layer” as 41 is one of three yarns which “form” the external surface); a second yarn (33) knitted along a second knitting row to form a second layer (31)(as seen in Fig.4, 33 is knit along a course/row in 31); and a third yarn (34) knitted along a third knitting row and arranged at least in part between the first and second layer (as seen in Fig.4, 34 is knit along a course/row and arranged at least in part between 36 & 31), wherein the third yarn (34) is attached to only one of the first layer or the second layer (31) by a plurality of tuck stitches of the third yarn (para.32; as seen in Fig.3 & 4), and two successive tuck stitches of the third yarn (as seen in Fig.3 & 4; the tuck stitches are successive, inasmuch as has been claimed and defined, as they are presented successively, one after another in a course), wherein the first layer (36) is attached to the second layer (31) by stitches of the first yarn (41) in the second layer that are tuck or loop stitches of the first yarn (para.31; “spacer yarns 41 which are connected in each layer by being tucked into the layer by alternate needles”), and wherein the third yarn (34) comprises a functional yarn, and the functional yarn is at least one of a melting yarn, a thermoplastic polyurethane, or a hybrid yarn (para.33; i.e. polyester, polyamide, and polyurethane yarns are capable of melting). Shepherd does not explicitly disclose wherein there is at least one miss stitch between two successive tuck stitches of the third yarn. However, McMurray discloses a knit spacer fabric (para.20) with a layer (12) having a jacquard surface pattern formed using a combination of knit, miss, or tuck stitches (para.53).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have used the third yarn of Shepherd to also form miss stitches between the two successive tuck stitches, as taught by McMurray, in order to provide the desired decorative pattern on the jacquard layer for aesthetic purposes.
Regarding Claim 4, Shepherd discloses a double layer knitted element of claim 1, wherein the functional yarn is a yarn with at least one of the following properties: heat resistance, UV protection, moisture absorbance, water resistance, heat retention, chemical resistance, flame resistance, or moisture wicking capability (i.e. 34 provides heat retention, inasmuch as has been claimed, as yarn 34 would contribute to the material retaining the heat of a user).
Regarding Claim 5, Shepherd discloses a double layer knitted element o
Regarding Claim 7, When in combination Shepherd and McMurray disclose a double layer knitted element of claim 1, wherein the third yarn (34) is attached to only the second layer (31) by immediately successive tuck stitches in between miss stitches (para.32; as seen in Fig.3 & 4 of Shepherd, the tuck stitches are immediately successive as they are presented successively, one after another in an immediate course, and when combined with McMurray would be present between miss stitches).
Regarding Claim 8, When in combination Shepherd and McMurray disclose a double layer knitted element of claim 1, wherein the third yarn (34) comprises a first portion with a first ratio between the number of tuck stitches (Shepherd: as seen on the left half of ‘3’ Fig.3) and the number of miss stitches (of McMurray between the tuck stitches of Shepherd), and a second portion with a second ratio between tuck stitches (Shepherd: as seen on the right half of ‘3’ Fig.3) and miss stitches (of McMurray between the tuck stitches of Shepherd), and wherein the first portion has a first stiffness and the second portion has a second stiffness (Shepherd: i.e. the first portion has less tuck stitches and would have a first stiffness & the second portion having more tuck stitches would have a second stiffness).
Regarding Claim 9, Shepherd and McMurray disclose the invention substantially as claimed above. Shepherd and McMurray do not explicitly disclose wherein the ratio between the number of tuck stitches and the number of miss stitches of the third yarn is 1:2 or 1:3. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the ratio of the number of tuck stitches and the number of miss stitches of the third yarn of Shepherd and McMurray to be 1:2 or 1:3, in order to provide a knit material with the desired pattern and aesthetic appearance. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
Regarding Claim 11, Shepherd discloses a double layer knitted element of claim 1, wherein the first yarn (41) of the first layer is attached to the second layer (31) by at least one of tuck stitches (para.31) or loop stitches.
Regarding Claim 12, Shepherd discloses a double layer knitted element of claim 1, wherein the third yarn (34) is knitted at least twice with tuck stitches in between the first and second layers (as seen in Fig.3 & 4).
Regarding Claim 13, Shepherd discloses a double layer knitted element (30) comprising: a first yarn (41) knitted along a first knitting row to form a first layer (36)(as seen in Fig.4, 41 is knit along a course/row in 36), wherein the first yarn is knitted along consecutive loop stitches of the first layer to form an external surface of the first layer (as seen in Fig.4, 41 is knitted along a course of loops of 36 and, inasmuch as has been claimed by Applicant, “form[s] an external surface of the first layer” as 41 is one of three yarns which “form” the external surface); a second yarn (33) knitted along a second knitting row to form a second layer (31)(as seen in Fig.4, 33 is knit along a course/row in 31), wherein the first layer (36) is attached to the second layer (31) by stitches of the first yarn (41) in the second layer that are tuck or loop stitches of the first yarn (as seen in Fig.4; para.31, “spacer yarns 41 which are connected in each layer by being tucked into the layer by alternate needles”); a third yarn (34) knitted along a third knitting row and arranged at least in part between the first and second layers (as seen in Fig.4, 34 is knit along a course/row and arranged at least in part between 36 & 31), wherein the third yarn (34) is attached to at least one of the first layer and the second layer (31) by a plurality of tuck stitches (para.32; as seen in Fig.3 & 4), and a first portion (i.e. one course of 30 with 34) and a second portion (i.e. two courses of 30 with 34), wherein the first portion comprises a single course of the third yarn (i.e. one course of 30 with 34 would include one course of 34), and wherein the second portion comprises at least two overlapped courses of the third yarn (i.e. two courses next to each other of 30 with 34 would include two overlapped courses of 34, inasmuch as has been claimed by Applicant, as 34 of one course overlaps 34 of the second course when knit), wherein the third yarn comprises a functional yarn, and the functional yarn is at least one of a melting yarn, a thermoplastic polyurethane, or a hybrid yarn (para.33; i.e. polyester, polyamide, and polyurethane yarns are capable of melting). Shepherd does not explicitly disclose wherein there is at least one miss stitch between two successive tuck stitches of the third yarn. However, McMurray discloses a knit spacer fabric (para.20) with a layer (12) having a jacquard surface pattern formed using a combination of knit, miss, or tuck stitches (para.53).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have used the third yarn of Shepherd to also form miss stitches between the two successive tuck stitches, as taught by McMurray, in order to provide the desired decorative pattern on the jacquard layer for aesthetic purposes.
Regarding Claim 14, Shepherd discloses a double layer knitted element of claim 1, wherein the third yarn (34) is attached to the second layer (31) by a plurality of tuck stitches (para.32), and wherein the third yarn is not visible at the first layer (36)(as seen in Fig.4).
Regarding Claim 16, Shepherd discloses a double layer knitted element of claim 1, wherein the third yarn (34) is provided in repetitive course structures, jacquard structures (para.32), or in spacer-based structures (para.29).
Regarding Claim 17, Shepherd discloses a double layer knitted element of claim 1, wherein the element is manufactured by intarsia, interlock (para.29), plating, inverted plating, or inlay techniques.
2. Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shepherd (US 2004/0099016) and McMurray (US 2004/0097151) in view of Zelman (WO 9716587 A1).
Regarding Claim 10, Shepherd and McMurray disclose the invention substantially as claimed above. Shepherd does not disclose wherein a distance between two successive tuck stitches is less than 2.54 cm. However, Zelman teaches a knit material with tuck stitches and a distance between two successive tuck stitches is less than 2.54 cm (Pg.6, lines 7-8; i.e. knitting between 6 to 14 gauge would produce a distance less than 2.54cm, as evidence by Applicant’s own disclosure in Para.26).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the knit gauge of Shepherd to be such that a distance between two successive tuck stitches is less than 2.54 cm, as taught by Zelman, in order to provide a knit material with the desired hand and aesthetic appearance.
3. Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shepherd (US 2004/0099016) and McMurray (US 2004/0097151) in view of Farrington (GB 1,067,944 A).
Regarding Claim 15, Shepherd and McMurray disclose the invention substantially as claimed above. Shepherd does not disclose wherein the thickness of the third yarn varies within the knitted element. However, Farrington teaches a knit material having a yarn, where the thickness of the third yarn varies within the knitted element (Pg.2, lines 33-38).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the third yarn of Shepherd with the slub yarn of Farrington, as a simple substitution of one well known type of yarn for another, to yield the predictable result of a knitted material with the desired aesthetic appearance.
4. Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shepherd (US 2004/0099016) and McMurray (US 2004/0097151) in view of Dombrow (US 2017/0020230).
Regarding Claims 18-19, Shepherd and McMurray disclose the invention substantially as claimed above. Shepherd does not disclose an upper for a shoe comprising a double layer knitted element of claim 1, and a sole attached to the upper. However, Dombrow teaches a knitted upper (105; para.34-36) with a sole (110) attached to the upper (as seen in Fig.1 & 2; para.27).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have used the knit material of Shepherd to form a shoe upper, as taught by Dombrow, in order to provide the desired aesthetic appearance to a user’s shoe.
Response to Arguments
Applicant's arguments filed January 26, 2026 have been fully considered but they are not persuasive. Applicant’s arguments presented here are the same as presented in the Declaration, see above for responses to the arguments.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGAN E LYNCH whose telephone number is (571)272-3267. The examiner can normally be reached Monday to Friday, 8:00am-4:00pm EST.
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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732