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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 18 August 2025 has been entered. Claims 1-4 is/are amended. Claims 7 and 16-20 remain withdrawn. Claims 1-6 and 8-15 are presented for examination on the merits.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cheney et al. (US 2009/0107012 A1).
Regarding claim 1, Cheney teaches an upper (64) of a shoe (60; Figs. 3 & 3A), the upper comprising:
a fiber sheet (70, 72, 80; para. 5 disclose each layer is made of fibers) comprising: a surface layer (70) configuring an outer surface of the shoe (Fig. 3A shows 70 faces the exterior side);
an inner layer (80) disposed on an inner side of the surface layer (Fig. 3A, where 80 is on the interior side, opposite the exterior side);
an intermediate layer (72) between portions of the surface layer and the inner layer (Fig. 3A; para. 37), such that the fiber sheet has: a connected part (Fig. 3A, “a connected part” is/are where portions of 72 are connected to 70 and 80) in which the surface layer and the inner layer are connected to each other by the intermediate layer (Fig. 3A);
and a plurality of non-connected parts (a plurality of 76; para. 37 & Fig. 3A disclose a plurality of 76 are slits, and therefore, “a plurality of non-connected parts) in which the surface layer and the inner layer are not connected to each other with the intermediate layer being absent therebetween (Fig. 3A), wherein the plurality of non-connected parts are surrounded by the connected part (Fig. 3A), each of the surface layer, the inner layer, and the intermediate layer comprises fibers (para. 5, where 70 is made of cotton and Lycra, 72 is made of polyester and spandex, and 80 is made of polyurethane film or an inelastic woven fabric), and a total area of the intermediate layer is less than a total area of the surface layer (Fig. 3A, where the total area of 72 is less than a total area of 70 because of the plurality of 76 existing; para. 38).
Regarding claim 8, Cheney teaches a shoe (60; Figs. 3 & 3a) comprising the upper according to claim 1 (Figs. 3 & 3a shows 64 as part of 60).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cheney et al. (US 2009/0107012 A1).
Regarding claim 2, Cheney discloses the upper according to claim 1, wherein the shoe comprises: a forefoot portion (see annotated Fig. 3 below); a midfoot portion (see annotated Fig. 3 below); and a rearfoot portion (see annotated Fig. 3 below) arranged in order from a front toward a back of the shoe (see annotated Fig. 3 below, where a front of the shoe is toward 61 and the tip of the front of the shoe, and the back of the shoe is toward the heel of the shoe).
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Cheney does not directly disclose an area ratio of the connected part to the plurality of non-connected parts in the rearfoot portion is higher than that in the forefoot portion.
However, it would have been “obvious to try” such an arrangement of having an area ratio of the connected part to the plurality of non-connected parts in the rearfoot portion is higher than that in the forefoot portion, as one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. In the instant case, it would have been obvious to try to modify the area ratio of the connected part to the plurality of non-connected parts so that the rearfoot portion is higher than that of the forefoot portion, in order to adjust the strength, tensile property, breathability, and other performance of the upper to provide better comfort, fit, and breathability for the wearer. Further, a finite number of identified, predictable solutions would exist: where the area ratio of the connected part to the plurality of non-connected part is higher in the rearfoot or midfoot portion than that of the forefoot portion. “[A] person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product was not of innovation but of ordinary skill and common sense. KSR Int' l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). See MPEP 2143.
Regarding claim 3, Cheney discloses the upper according to claim 1, wherein the shoe comprises: a forefoot portion (see annotated Fig. 3 of claim 2 rejection above); a midfoot portion (see annotated Fig. 3 of claim 2 rejection above); and a rearfoot portion arranged in order from a front-back direction (see annotated Fig. 3 of claim 2 rejection above), which is a direction from a front toward a back of the shoe (see annotated Fig. 3 of claim 2 rejection above, where a front of the shoe is toward 61 and the tip of the front of the shoe, and the back of the shoe is toward the heel of the shoe).
Cheney does not directly disclose in the midfoot portion, an area of the connected part which has a larger dimension in a vertical direction of the shoe than a dimension in a front-back direction of the shoe is larger than an area of the plurality of non-connected parts which has a larger dimension in the front- back direction than a dimension in the vertical direction.
However, it would have been “obvious to try” such an arrangement of having an area of the connected part which has a larger dimension in a vertical direction of the shoe than a dimension in a front-back direction of the shoe is larger than an area of the plurality of non-connected parts which has a larger dimension in the front- back direction than a dimension in the vertical direction, as one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. In the instant case, it would have been obvious to try to modify an area of the connected part which has a larger dimension in a vertical direction of the shoe than a dimension in a front-back direction of the shoe is larger than an area of the plurality of non-connected parts which has a larger dimension in the front- back direction than a dimension in the vertical direction, in order to adjust the strength, tensile property, breathability, and other performance of the upper to provide better comfort, fit, and breathability for the wearer. Further, a finite number of identified, predictable solutions would exist: where an area of the connected part has a larger or smaller dimension in the vertical direction than a dimension in a front-back direction of the shoe, is larger or smaller than an area of the plurality of non-connected parts which has a larger or smaller dimension in the front-back direction than a dimension in the vertical direction. “[A] person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product was not of innovation but of ordinary skill and common sense. KSR Int' l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). See MPEP 2143.
Regarding claim 4, Cheney discloses the upper according to claim 1, wherein the shoe comprises: a forefoot portion (see annotated Fig. 3 of claim 2 rejection above); a midfoot portion (see annotated Fig. 3 of claim 2 rejection above); and a rearfoot portion arranged in order from a front toward a back of the shoe (see annotated Fig. 3 of claim 2 rejection above, where a front of the shoe is toward 61 and the tip of the front of the shoe, and the back of the shoe is toward the heel of the shoe).
Cheney does not directly disclose an area ratio of the plurality of non-connected parts to the connected part in the forefoot portion is higher than that in each of the midfoot portion and the rearfoot portion.
However, it would have been “obvious to try” such an arrangement of having an area ratio of the plurality of non-connected parts to the connected part in the forefoot portion is higher than that in each of the midfoot portion and the rearfoot portion, as one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. In the instant case, it would have been obvious to try to modify an area ratio of the plurality of non-connected parts to the connected part in the forefoot portion is higher than that in each of the midfoot portion and the rearfoot portion, in order to adjust the strength, tensile property, breathability, and other performance of the upper to provide better comfort, fit, and breathability for the wearer. Further, a finite number of identified, predictable solutions would exist: where the area ratio of the plurality of the non-connected parts to the connected part in the forefoot portion is higher or lower than that in each of the midfoot portion and the rearfoot portion. “[A] person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product was not of innovation but of ordinary skill and common sense. KSR Int' l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). See MPEP 2143.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cheney et al. (US 2009/0107012 A1), in view of Shiomura (US 4,785,558 A).
Regarding claim 5, Cheney discloses the upper according to claim 1. While Cheney discloses materials of the fiber sheet that are common in warp knitted fabrics (para. 5, where 70 is made of cotton and Lycra, 72 is made of polyester and spandex, and 80 is made of polyurethane film or an inelastic woven fabric), Cheney does not directly disclose wherein the fiber sheet comprises a warp knitted fabric, and the surface layer comprises a front yarn, the inner layer comprises a lining yarn, and the intermediate layer comprises an intermediate yarn that is knitted on both the front yarn and the lining yarn.
However, Shiomura teaches wherein the fiber sheet (Fig. 3; col. 2 lines 45-46 and 55-58, where layers 4, 5, and 7 make up a knitted fabric, and therefore, “a fiber sheet”) comprises a warp knitted fabric (col. 3 lines 4-6, Raschel knitting, which is a warp knitted fabric), and the surface layer comprises a front yarn (col. 2 lines 32-33), the inner layer comprises a lining yarn (col. 2 lines 58-62, where the yarn is a multifilament, and therefore, comprises a lining yarn), and the intermediate layer comprises an intermediate yarn (col. 2 lines 58-62, where the yarn is a multifilament, and therefore, comprises an intermediate yarn) that is knitted on both the front yarn and the lining yarn (col. 4, lines 9-11).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the fiber sheet comprising the surface, inner, and intermediate layers of Cheney to comprise of a warp knitted fabric, and the surface layer comprises a front yarn, the inner layer comprises a lining yarn, and the intermediate layer comprises an intermediate yarn, as taught by Shiomura, in order to provide an aesthetically pleasing design. Additionally, a change in aesthetic (ornamental) design generally will not support patentability. See MPEP 2144.04. Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Regarding claim 6, Cheney discloses the upper according to claim 1,except for wherein at least a part of the surface layer comprises a monofilament yarn.
However, Shiomura teaches wherein at least a part of the surface layer comprises a monofilament yarn (col. 2 lines 58-61).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surface layer of Cheney to comprise of a monofilament yarn, as taught by Shiomura, in order to provide an aesthetically pleasing design. Additionally, a change in aesthetic (ornamental) design generally will not support patentability. See MPEP 2144.04. Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Regarding claim 9, Cheney discloses the upper according to claim 2. While Cheney discloses materials of the fiber sheet that are common in warp knitted fabrics (para. 5, where 70 is made of cotton and Lycra, 72 is made of polyester and spandex, and 80 is made of polyurethane film or an inelastic woven fabric), Cheney does not directly disclose wherein the fiber sheet comprises a warp knitted fabric, and the surface layer comprises a front yarn, the inner layer comprises a lining yarn, and the intermediate layer comprises an intermediate yarn that is knitted on both the front yarn and the lining yarn.
However, Shiomura teaches wherein the fiber sheet (Fig. 3; col. 2 lines 45-46 and 55-58, where layers 4, 5, and 7 make up a knitted fabric, and therefore, “a fiber sheet”) comprises a warp knitted fabric (col. 3 lines 4-6, Raschel knitting, which is a warp knitted fabric), and the surface layer comprises a front yarn (col. 2 lines 32-33), the inner layer comprises a lining yarn (col. 2 lines 58-62, where the yarn is a multifilament, and therefore, comprises a lining yarn), and the intermediate layer comprises an intermediate yarn (col. 2 lines 58-62, where the yarn is a multifilament, and therefore, comprises an intermediate yarn) that is knitted on both the front yarn and the lining yarn (col. 4, lines 9-11).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the fiber sheet comprising the surface, inner, and intermediate layers of Cheney to comprise of a warp knitted fabric, and the surface layer comprises a front yarn, the inner layer comprises a lining yarn, and the intermediate layer comprises an intermediate yarn, as taught by Shiomura, in order to provide an aesthetically pleasing design. Additionally, a change in aesthetic (ornamental) design generally will not support patentability. See MPEP 2144.04. Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Regarding claim 10, Cheney discloses the upper according to claim 3. While Cheney discloses materials of the fiber sheet that are common in warp knitted fabrics (para. 5, where 70 is made of cotton and Lycra, 72 is made of polyester and spandex, and 80 is made of polyurethane film or an inelastic woven fabric), Cheney does not directly disclose wherein the fiber sheet comprises a warp knitted fabric, and the surface layer comprises a front yarn, the inner layer comprises a lining yarn, and the intermediate layer comprises an intermediate yarn that is knitted on both the front yarn and the lining yarn.
However, Shiomura teaches wherein the fiber sheet (Fig. 3; col. 2 lines 45-46 and 55-58, where layers 4, 5, and 7 make up a knitted fabric, and therefore, “a fiber sheet”) comprises a warp knitted fabric (col. 3 lines 4-6, Raschel knitting, which is a warp knitted fabric), and the surface layer comprises a front yarn (col. 2 lines 32-33), the inner layer comprises a lining yarn (col. 2 lines 58-62, where the yarn is a multifilament, and therefore, comprises a lining yarn), and the intermediate layer comprises an intermediate yarn (col. 2 lines 58-62, where the yarn is a multifilament, and therefore, comprises an intermediate yarn) that is knitted on both the front yarn and the lining yarn (col. 4, lines 9-11).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the fiber sheet comprising the surface, inner, and intermediate layers of Cheney to comprise of a warp knitted fabric, and the surface layer comprises a front yarn, the inner layer comprises a lining yarn, and the intermediate layer comprises an intermediate yarn, as taught by Shiomura, in order to provide an aesthetically pleasing design. Additionally, a change in aesthetic (ornamental) design generally will not support patentability. See MPEP 2144.04. Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Regarding claim 11, Cheney discloses the upper according to claim 4. While Cheney discloses materials of the fiber sheet that are common in warp knitted fabrics (para. 5, where 70 is made of cotton and Lycra, 72 is made of polyester and spandex, and 80 is made of polyurethane film or an inelastic woven fabric), Cheney does not directly disclose wherein the fiber sheet comprises a warp knitted fabric, and the surface layer comprises a front yarn, the inner layer comprises a lining yarn, and the intermediate layer comprises an intermediate yarn that is knitted on both the front yarn and the lining yarn.
However, Shiomura teaches wherein the fiber sheet (Fig. 3; col. 2 lines 45-46 and 55-58, where layers 4, 5, and 7 make up a knitted fabric, and therefore, “a fiber sheet”) comprises a warp knitted fabric (col. 3 lines 4-6, Raschel knitting, which is a warp knitted fabric), and the surface layer comprises a front yarn (col. 2 lines 32-33), the inner layer comprises a lining yarn (col. 2 lines 58-62, where the yarn is a multifilament, and therefore, comprises a lining yarn), and the intermediate layer comprises an intermediate yarn (col. 2 lines 58-62, where the yarn is a multifilament, and therefore, comprises an intermediate yarn) that is knitted on both the front yarn and the lining yarn (col. 4, lines 9-11).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the fiber sheet comprising the surface, inner, and intermediate layers of Cheney to comprise of a warp knitted fabric, and the surface layer comprises a front yarn, the inner layer comprises a lining yarn, and the intermediate layer comprises an intermediate yarn, as taught by Shiomura, in order to provide an aesthetically pleasing design. Additionally, a change in aesthetic (ornamental) design generally will not support patentability. See MPEP 2144.04. Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Regarding claim 12, Cheney discloses the upper according to claim 2, except for wherein at least a part of the surface layer comprises a monofilament yarn.
However, Shiomura teaches wherein at least a part of the surface layer comprises a monofilament yarn (col. 2 lines 58-61).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surface layer of Cheney to comprise of a monofilament yarn, as taught by Shiomura, in order to provide an aesthetically pleasing design. Additionally, a change in aesthetic (ornamental) design generally will not support patentability. See MPEP 2144.04. Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Regarding claim 13, Cheney discloses the upper according to claim 3, except for wherein at least a part of the surface layer comprises a monofilament yarn.
However, Shiomura teaches wherein at least a part of the surface layer comprises a monofilament yarn (col. 2 lines 58-61).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surface layer of Cheney to comprise of a monofilament yarn, as taught by Shiomura, in order to provide an aesthetically pleasing design. Additionally, a change in aesthetic (ornamental) design generally will not support patentability. See MPEP 2144.04. Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Regarding claim 14, Cheney discloses the upper according to claim 4, except for wherein at least a part of the surface layer comprises a monofilament yarn.
However, Shiomura teaches wherein at least a part of the surface layer comprises a monofilament yarn (col. 2 lines 58-61).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surface layer of Cheney to comprise of a monofilament yarn, as taught by Shiomura, in order to provide an aesthetically pleasing design. Additionally, a change in aesthetic (ornamental) design generally will not support patentability. See MPEP 2144.04. Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Regarding claim 15, Cheney discloses the upper according to claim 5, except for wherein at least a part of the surface layer comprises a monofilament yarn.
However, Shiomura teaches wherein at least a part of the surface layer comprises a monofilament yarn (col. 2 lines 58-61).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surface layer of Cheney to comprise of a monofilament yarn, as taught by Shiomura, in order to provide an aesthetically pleasing design. Additionally, a change in aesthetic (ornamental) design generally will not support patentability. See MPEP 2144.04. Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Response to Arguments
Applicant’s arguments filed on 18 August 2025 have been fully considered. In view of Applicant's amendments, the search has been updated, and newly modified grounds of rejection have been identified and applied. Applicant' s arguments drawn to the newly amended limitations, have been considered but are moot in view of the newly modified ground(s) of rejection.
Conclusion
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/G.Q.H./Examiner, Art Unit 3732
/KHOA D HUYNH/Supervisory Patent Examiner, Art Unit 3732
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