DETAILED ACTION
Claims 1-12, 14-15, 17, and 21-24 were rejected in the Office Action mailed 10/31/2025.
Applicant filed a response, amended claims 1 and 6, and added new claim 25.
Claims 1-12, 14-15, 17, and 21-24 are pending.
Claims 1-12, 14-15, 17, and 21-24 are rejected. Claim 25 is objected.
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 .
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 6-10, 14, 17, 21, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over O’Hare (US 2002/0004345) in view of Taghavi (US 2004/0166752), taken in view of evidence provided by Simon et al. (US 2008/0248226) (Simon).
Regarding claim 1
O’Hare teaches a footwear upper made from a polyvinyl chloride coated fabric. PVC coated fabric is a known material for a footwear upper. See, e.g., abstract and paragraphs [0001-0006]. O’Hare does not explicitly teach an elastomeric coating comprising a mixture of polyolefin and thermoplastic vulcanizate.
With respect to the difference, Taghavi teaches a composite textile comprising a polyolefin woven fabric coated with a composition comprising a mixture comprising an ethylenic elastomer in an amount from 30 to 50% by weight and a thermoplastic vulcanizate in an amount from 30 to 50% by weight on both sides of the woven fabric. Thermoplastic vulcanizates contain a crosslinked rubber phase dispersed within thermoplastic polymer. The coating is directly bonded to the polyolefin woven fabric. The composite textile provides superior tactile, abrasion resistance, flexibility, adhesion, and strength characteristics. The composite textile is cost efficient. See, e.g., abstract and paragraphs [0008], [0012-0015], [0018], [0022-0026], [0031], [0033], [0036-0037], [0039], Table 5, and FIG. 1-2.
It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
The coating layer and the woven fabric each inherently possesses a first side and a second side opposite the first side. Given the coating layer exists on both surfaces of the woven fabric, it follows the first coating possesses a surface facing the outer-facing surface of the upper and corresponds to the first side of the first coating layer. The second side of the first coating layer is directly bonded to the first side of the textile layer.
Taghavi teaches numerous end uses for the coated woven fabric, including uses currently employing PVC coated fabrics. Paragraph [0039].
Taghavi and O’Hare are analogous art as they are both drawn to coated fabrics.
In light of the motivation as provided by Taghavi, it therefore would have been obvious to one of ordinary skill in the art to use the composite textile of Taghavi in place of the PVC coated fabric forming the shoe upper in O’Hare, in order to provide a shoe upper possessing superior tactile, abrasion resistance, flexibility, and adhesion characteristics, and thereby arrive at the claimed invention.
Regarding claims 6-8
O’Hare in view of Taghavi teaches all of the limitations of claim 1 above, including the thermoplastic vulcanizate is present in an amount from 30 to 50% by weight. Paragraph [0014]. It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Taghavi further teaches suitable grades of thermoplastic vulcanizate includes Santoprene 8291-70. Paragraph [0024]. Santoprene 8291 is an EPDM polyolefin blend, as shown in paragraph [0029] of Simon. Therefore, the thermoplastic vulcanizate includes cured polyolefin resin and a thermoplastic polyolefin resin. Further, the thermoplastic vulcanizate is free of fillers and pigments.
Regarding claim 9
Taghavi teaches the coating may comprise other additives including fillers and pigments. Paragraph [0027]. Given Taghavi teaches the coating may comprise fillers and pigments, it follows fillers and pigments are not required in the coating. Therefore, the coating is free of fillers and pigments.
Regarding claim 10
Taghavi further teaches the coating layer possesses a thickness in the range of 1 to 10.0 mils (i.e., about 25 microns to about 250 microns). Paragraph [0035]. It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding claim 14
Taghavi further teaches the coating layer possesses a thickness in the range of 1 to 10.0 mils. The fabric layer possesses a thickness from 5 to 20 mils. Paragraphs [0019], [0031], and [0035]. The thickness of the composite textile ranges from about 6 to 40 mils (i.e., about 0.15 to about 1 millimeters). It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding claims 17, 21, and 24
O’Hare in view of Taghavi teaches all of the limitations of claim 15 above. Taghavi further teaches coating an additional layer, in other words a second coating layer, of a composition comprising a mixture comprising an ethylenic elastomer and a thermoplastic vulcanizate on the first coating layer. The second coating layer allows for economical variations in the additives for each coating layer. The second coating layer allows for higher additive concentration levels without reducing the soft tactile characteristic of the coating layer. Paragraph [0036] and FIG. 2.
Further, given both coating layers are coated on the woven fabric, it follows the second coating is affixed to the first coating layer. Therefore, the side of the second coating layer directly bonded to the first coating layer corresponds to the first side of the second coating layer. The second side of the second coating layer is indirectly bonded to the textile layer via the first coating layer.
Taghavi and O’Hare are analogous art as they are both drawn to coated fabrics.
In light of the motivation as provided by Taghavi, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to apply a second coating of a composition comprising a mixture comprising an ethylenic elastomer and a thermoplastic vulcanizate on the first coating layer of O’Hare in view of Taghavi, in order to provide economical variations in the additives and allow for higher additive concentration without reducing the soft tactile characteristics of the coating layer, and thereby arrive at the claimed invention.
Claims 2-5, 15, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over O’Hare (US 2002/0004345) in view of Taghavi (US 2004/0166752), as applied in claim 1 above, and further in view of Li et al. (CN112898668A) (Li).
Regarding claims 2-5
O’Hare in view of Taghavi teaches all of the limitations of claim 1 above, including the use of a polyolefin elastomer. The combination of thermoplastic vulcanizate with polyolefin elastomer creates coatings with superior soft tactile characteristics. Paragraph [0026]. O’Hare in view of Taghavi does not explicitly teach the polyolefin elastomer is an alpha-olefin polymer.
With respect to the difference, Li teaches a thermoplastic polyolefin elastomer (TPO) artificial leather comprising a base fabric layer and a TPO skin layer comprising 5 to 20 parts by weight of polypropylene, 10 to 40 parts by weight of thermoplastic vulcanizate, a cured rubber dispersed in a thermoplastic resin, and 20 to 50 parts by weight of a polyolefin resin comprising an ethylene-alpha olefin copolymer elastomer. The TPO skin layer and the base fabric layer are directly bonded together by heat pressing or gluing. The thermoplastic vulcanizate and ethylene-alpha-olefin copolymer elastomer improve the softness of the thermoplastic polyolefin elastomer in addition to toughness, wrinkle resistance, and bending resistance. See, e.g., abstract and paragraphs [0001], [0012-0017], [0026-0028], [0059], and claim 1.
Li further teaches if the content of alpha-olefin monomer in the ethylene alpha-olefin
copolymer increases, crystallinity increases. Paragraph [0019]. Therefore, it follows the
polyolefin resin includes crystalline regions dispersed in an amorphous matrix.
Given the TPO skin layer comprises polypropylene and the polyolefin resin, as discussed above, it follows the polyolefin resin is miscible with polypropylene.
Li and O’Hare in view of Taghavi are analogous art as they are both drawn coated fabrics.
In light of the motivation as provided by Li, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use the ethylene alpha-olefin copolymer of Li as the polyolefin elastomer of Tagahvi, in order to provide the coating softness in addition to toughness, wrinkle resistance, and bending resistance, and thereby arrive at the claimed invention.
Regarding claims 15 and 22
O’Hare in view of Taghavi teaches all of the limitations of claim 1 above, however does not explicitly teach the presence of a hot melt adhesive.
Li further teaches a TPO skin layer comprising an elastomer and thermoplastic vulcanizate and a base fabric layer are bonded together by a hot melt adhesive. The hot melt adhesive effectively improves the adhesion between the TPO surface layer and the base fabric layer. Paragraphs [0016-0017] and [0028].
Li and O’Hare in view of Taghavi are analogous art as they are both drawn to coated fabrics.
In light of the motivation as provided by Li, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use a hot melt adhesive to bond the coating layer to the polyolefin woven fabric of O’Hare in view of Taghavi, in order to effectively improve adhesion between the coating layer and the polyolefin woven fabric, and thereby arrive at the claimed invention.
The surface of the hot melt adhesive bonded directly to the coating layer is the first side of the hot melt adhesive layer. The surface of the hot melt adhesive layer bonded directly to the surface of the polyolefin woven fabric is the second side of the hot melt adhesive layer. Therefore, the second side of the coating layer is bonded directly to the first side of the hot melt adhesive layer and the second side of the hot melt adhesive layer is bonded directly to the first side of the polyolefin woven fabric. In addition, the second side of the first coating layer is thermally bonded to the first side of the textile layer via the hot melt adhesive layer.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over O’Hare (US 2002/0004345) in view of Taghavi (US 2004/0166752) and Li et al. (CN112898668A) (Li), as applied in claim 15 above, and further in view of Harano et al. (US 2010/0040889) (Harano).
Regarding claim 23
O’Hare in view of Taghavi and Li teaches all of the limitations of claim 15 above, however does not explicitly teach the melting temperature of the hot melt adhesive layer.
With respect to the difference, Harano teaches using a hot melt adhesive to manufacture a shoe. The melting temperature of the hot melt adhesive should be low enough that the material of constituent members of the shoes, such as elastomer and the like, is not deteriorated. See, e.g., abstract and paragraphs [0058-0060] and [0064].
Harano and O’Hare in view of Taghavi and Li are analogous art a they are both drawn to footwear.
In light of the motivation as provided by Harano, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to ensure the melting temperature of the hot melt adhesive of O’Hare in view of Taghavi and Li is lower than vicat softening temperature of the coating mixture, in order to ensure the coating mixture, including the elastomer, is not deteriorated, and thereby arrive at the claimed invention.
While Harano does not teach a specific degree the melting temperature should be less than the vicat softening temperature, it is the Examiner’s opinion one of ordinary skill in the art before the effective filing date of the invention would be capable of determining the degree the melting temperature should be below the vicat softening temperature in through routine experiment in order prevent the coating mixture from deteriorating, and thereby arrive at the claimed invention.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over O’Hare (US 2002/0004345) in view of Taghavi (US 2004/0166752), as applied in claim 1 above, and further in view of Imai (US 2009/0042473) (Imai).
Regarding claims 11-12
O’Hare in view of Taghavi teaches all of the limitations of claim 1 above, however does not explicitly teach the elongation of the coating layer or the textile layer.
With respect to the difference, Imai teaches an elastic composite fabric comprising an elastic cloth laminated onto one or both sides of a composite film. The composite fabric, including the elastic cloth and composite film, possesses an elongation percentage in the longitudinal and/or transverse direction of 30% or more. The composite film and composite fabric are treated at an elongation treatment temperature and treatment rate within specification ranges to attain a superior elongation. See, e.g., abstract and paragraphs [0001], [0011-0013], [0026-0032], [0053-0055], and [0063-0067].
Imai and O’Hare in view of Taghavi are analogous art as they are both drawn to composite textiles for clothing.
In light of the motivation as provided by Imai, it therefore would have been obvious to one of ordinary skill in the art to modify the coating layer and the woven fabric of O’Hare in view of Taghavi, such that they possess an elongation of 30% or more in the machine direction and the transverse direction, in order to provide superior elongation and elastic properties to the composite textile, and thereby arrive at the claimed invention.
It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Allowable Subject Matter
Claim 25 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art includes Taghavi (US 2004/0166752). Taghavi teaches a composite textile comprising a coating composition comprising a mixture of an ethylenic elastomer in an amount form 30% to 50% by weight and a thermoplastic vulcanizate in an amount from 30% to 50% by weight on a woven fabric. See, e.g., abstract and paragraphs [0014-0015].
None of the prior art, alone or in combination, teaches a coating mixture comprising about 75 weight percent to about 65 weight percent of the polyolefin resin and about 25 weight percent to about 35 weight percent of thermoplastic vulcanizate as recited in claim 25.
Response to Arguments
The previous rejection of claims 1-12, 14-15, 17, and 21-24 are substantially maintained. Any modification of the rejection is in response to the amendment of claims 1 and 6.
Applicant's arguments filed 01/30/2026 have been fully considered but they are not persuasive, as set forth below.
Applicant primarily argues the amended composition of 80 weight percent to about 50 weight percent of the polyolefin resin and about 15 weight percent to about 35 weight percent of TPV does not overlap with the taught range in Taghavi. The composition of both the polyolefin resin and TPV as a coating mixture on an upper for an article of footwear is not described in any of the cited references. Remarks, page 10.
The Examiner respectfully disagrees, as follows:
Firstly, Taghavi teaches a mixture comprising an ethylenic elastomer in an amount from 30 to 50% by weight and a thermoplastic vulcanizate in an amount from 30 to 50% by weight. Paragraphs [0014] and [0022]. Therefore, the claimed range does overlap with the taught range in Taghavi (emphasis added). The claimed range includes about 80 $ by weight to about 50% by weight of the polyolefin resin, which overlaps Taghavi’s teaching of 50% by weight of an ethylenic elastomer. The claimed range includes about 15 weight percent to about 35 weight percent of TPV, which overlaps Taghavi’s teaching of 30 to 50% by weight of TPV>
Secondly, O’Hare in view of Taghavi teaches the composition of both the polyolefin resin and TPV as a coating mixture on an upper for an article of footwear as discussed on pages 3-5 and 7-8 of the Office Action mailed 10/31/2025 and repeated above.
Applicant further argues the combination of a polyolefin resin and a TPV at the claimed range compositions, has been found to provide a coating layer with improved bonding while resisting or preventing creasing and bagging. Remarks, page 10.
The Examiner respectfully disagrees, as follows:
Firstly, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). MPEP 2144 IV. Therefore, it is not necessary for Taghavi to teach improved bonding while resisting or preventing creasing and bagging. The fact remains Taghavi provides proper motivation for modification, including superior tactile, abrasion resistance, flexibility, and adhesion characteristics.
Secondly, overcoming a rejection based on unexpected results requires the combination of three different elements: (i) the results must fairly compare with the closest prior art in an affidavit or declaration under 37 CFR 1.132, (ii) the claims must be commensurate in scope, and (iii) the results must truly be unexpected. MPEP 716.02. It is Applicants’ burden to explain why their proffered results are considered to be unexpected, are considered to be commensurate in scope with the claimed subject matter, and are considered to be the consequence of a comparison to the closest prior art. See, e.g., In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Conclusion
Applicant's amendment necessitated any new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/C.X.N./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789
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