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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1 and 6 are 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 1 recites “the outer upper contains 40% to 70% by weight of wool, 10 to 20% by weight of yarn, and 10 to 40% by weight of nylon or 10 to 40% by weight of polyethylene, wherein the yarn comprises 5% by weight of copper yarn and 95% by weight of acrylic”, the proportions do not require “cotton” while the original filed specification requires the outer upper contains wool, “cotton”, nylon/polyethylene, copper and acrylic, i.e. “the outer upper contains 40% to 70% by weight of wool, 10 to 20% by weight of cotton, and 10 to 40% by weight of nylon or 10 to 40% by weight of polyethylene, wherein the cotton comprises 5% by weight of copper yarn and 95% by weight of acrylic”. Therefore, claim 1 fails to comply with the written description requirement.
Any remaining claims are rejected as depending from a rejected base claim.
In the art rejections below the claims have been treated as best understood by the examiner.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1 and 6 are 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 1 recites “the outer upper contains 40 to 70% by weight of wool, 10 to 20% by weight of yarn, and 10 to 40% by weight of nylon or 10 to 40% by weight of polyethylene”.
It is unclear that if a portion of wool/nylon/polyethylene is yarn, does that portion count toward 10 to 20% by weight of yarn? For the purpose of applying art, 10 to 20% by weight of yarn is interpreted as 10 to 20% by weight of yarn of different material than wool, nylon or polyethylene.
Claim 1 then recites “wherein the outer upper is composed of a surface, a middle surface, and a back surface, wherein the surface of the outer upper is composed of 100% by weight of wool yarn, wherein the middle surface is composed of 100% by weight nylon yarn, wherein the back surface, 100% by weight of wool and the yarn containing copper yarn”. It is unclear if “the yarn containing copper yarn” includes acrylic or not. For the purpose of applying art, the yarn containing copper yarn is interpreted as the yarn containing copper yarn and acrylic.
Any remaining claims are rejected as depending from a rejected base claim.
In the art rejections below the claims have been treated as best understood by the examiner.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 6 recites “the upper of claim 1, wherein the middle surface is mixed weave and knitted by connecting to each other with the back surface”, which fails to further limit the subject matter of the claim 1 upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over McLellan (US 2021/0076775) in view of JPS63249701(hereinafter JPS’701) and Baychar (US 2017/0347730).
Regarding claims 1 and 6, McLellan teaches an upper for shoes (fig. 2A, upper 110a), the upper comprising: an inner upper (fig. 2D, membrane 230b), and an outer upper (fig. 2D, outer layer 240a), wherein the inner upper contains 100% by weight of polyethylene (para. [0053], membrane 230b is formed of polyethylene), wherein the outer upper contains 40 to 70% by weight of wool (para. [0055], 50% and 90% wool), 10 to 40% by weight of nylon (para. [0055], 1% and 50% nylon) or 10 to 40% by weight of polyethylene, and 10 to 20% by weight of other combination of materials (para. [0036], [0055], the outer layer 240a includes a third yarn between 1% and 20%) thereby the upper for shoes composed of natural wool and composite structure fabric.
McLellan does not teach the other combination of materials comprises 5% by weight of copper yarn and 95% by weight of acrylic; and the 5% of the combination comprising of copper yarn contains 2 to 20g of copper. However, McLellan teaches the textile layers may be formed of any suitable material or combination of materials (para. [0036]).
Further, in the same field of endeavor, JPS’701 teaches the yarn comprises 5% by weight of copper yarn and 95% by weight of acrylic (machine translation, page 4, lines 1-4, the knitting yarn containing cellulose fiber containing a copper compound is made by blending, intermingling or twisting the cellulose fiber with at least one or more types of fibers, such as acrylic. The blend ratio of the cellulose fiber containing the copper compound is sufficient if it is 3% or more and preferably 5% by weight. Therefore, the yarn comprises 5% by weight the fiber containing copper and 95% by weight of acrylic based on the description above).
JPS’701 further teaches the copper yarn contains more than 20mg of copper per 1g of the copper yarn (machine translation, page 1, last three lines).
It would have been obvious to one of the ordinary skilled in the art before the effective filing date of the invention to modify 10 to 20% by weight of other combination of materials of McLellan with the yarn comprising 5% by weight of copper yarn and 95% by weight of acrylic and the copper content of more than 20mg as suggested by JPS’701 for the benefit of providing the upper with excellent antibacterial and sweat absorbing properties (JPS’701, machine translation, page 1, lines 2-3).
The modified structure McLellan-JPS’701 teaches the upper portion includes one or more textile layers, the textile that is used to form the textile layers is constructed by any suitable process, including, weaving, knitting; multiple layers are formed together as part of a construction process, the first and second layers are interlaced with one another (McLellan, para. [0035]); and the yarn is plied yarn that includes multiple strands of yarn twisted or braided together (McLellan, para. [0036]).
The modified structure McLellan-JPS’701 does not teach the outer upper is composed of a surface, a middle surface and a back surface as claimed.
However, in the same field of endeavor, Baychar teaches a composite fabric comprising a surface (fig. 1, layer 40), a middle surface (fig. 1, layer 20) and a back surface (fig. 1, layer 10), wherein the surface is composed of 100% by weight of wool yarn (para. [0193], [0207], [0208], [0209]), wherein the middle surface is composed of 100% by weight of nylon yarn (para. [0210]), wherein the back surface, 100% by weight of wool and yarn containing anti-microbial treatments or fibers (para. [0044], [0105]).
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to combine the modified structure McLellan-JPS’701 with the material arrangement in each layers of the multi-layer structure as taught by Baychar for the benefit of enabling moisture transfer and providing comfort to the user (Baychar, para. [0003]).
Then in combination, the modified structure McLellan-JPS’701-Baychar teaches the surface is mixed weaved knitted to connect to each other with the middle surface, wherein the middle surface is mixed weaved and knitted by connecting to each other with the back surface.
Response to Arguments
Applicant's arguments filed 01/26/2026 have been fully considered but they are not persuasive.
The Applicant argues that Yarn of JPS’701 entire yarn is composed of 5% of copper and 95% of acrylic, JPS’71 fails to consider other components except copper and acrylic (remarks, page 6).
In response, applicant's arguments against the references individually, 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 this case, McLellan already teaches the outer upper contains 40 to 70% by weight of wool, 10 to 40% by weight of nylon or 10 to 40 by weight of polyethylene, and 10 to 20% by weight of other combination of materials, thereby the upper for shoes composed of natural wool and composite structure fabric. McLellan does not teach the other combination of materials comprises 5% by weight of copper yarn and 95% by weight of acrylic. However, JPS’701 teaches the yarn comprises 5% by weight of copper yarn and 95% by weight of acrylic (see explanation above). It would have been obvious to one of the ordinary skilled in the art before the effective filing date of the invention to modify 10 to 20% by weight of other combination of materials of McLellan with the yarn comprising 5% by weight of copper yarn and 95% by weight of acrylic as suggested by JPS’701 for the benefit of providing the upper with excellent antibacterial and sweat absorbing properties (JPS’701, machine translation, page 1, lines 2-3).
Conclusion
Applicant's amendment necessitated the new ground(s) 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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/UYEN T NGUYEN/Examiner, Art Unit 3732
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