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 .
Response to Amendment
The amendment filed on November 3, 2025 has been entered. Claims 4, 10, and 20 have been canceled. Claims 1, 8, 9, 11, 15, 18, 19, and 22 - 26 have been amended and no new claims have been added. Therefore, the pending claims are 1 – 3, 5 – 9, 11 – 19, and 21 – 26.
The amendment to claim1 is sufficient to overcome the objection set forth in section 8 of the previous Office Action.
The double patenting rejection is withdrawn at this time since the 1 and 19 have been amended so that they are currently patentably distinct from claims 29 and 39 of US Application 18/691.663.
The amendment is sufficient to overcome the 35 USC 103 rejection over Frazier et al. (2021/0030108) since the reference fails to address the structure of the inside of the shoe upper. However, anew rejection based on Frazier et al. is set forth below.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3, 5, 6, 11-13, 16-19, and 21-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fraizer et al. (US 2021/0030108) as evidenced by “Shore Hardness and Soft TPEs” by Teknor Apex (Shore Hardness and Soft TPEs | Teknor Apex) in view of CN 108135328 A and Hoying (US 2019/0231021).
Frazier discloses textiles comprising thermoplastic elastomeric compositions for making apparel, footwear, and sporting equipment, wherein upon thermoforming thereof, the thermoplastic elastomeric compositions impart abrasion resistance, traction, and other advantageous properties to articles made therefrom (abstract and sections [0019] and [0021]).
The textiles may be knit fabrics comprising interconnected knitted loops of first yarns comprising a core and having a thermoplastic elastomer coating thereon and one or more second, coated or uncoated yarns (sections [0021], [0022], and [0025]). The second yarn is different from the first yarn, wherein the second yarn either comprises a different thermoplastic elastomer than that of the first yarn or the second yarn is substantially free of a thermoplastic elastomer (section [0078]). The second yarn has a melting temperature greater than the thermoplastic elastomer coating of the first yarn (section [0082]). The first and second yarns can be employed to form separate zones of the knit textile, wherein zones may comprise an increased amount of either yarn (section [0080]). The knit fabric may comprise a yarn of one composition in one area and another yarn of another composition in another area, wherein the location of the first yarn can be employed to control properties over the entire textile or just within a specific region of the textile (sections [0022] and [0086]). This structure is considered to be equivalent to the applicant’s knitted component with a first and second yarn, wherein the fabric includes first areas comprising a first yarn and second areas comprising a second yarn.
The coating is melted during thermoforming and then resolidified to create a thermoformed network comprising the core yarn and the solidified coating consolidating the core yarn and spaces between the yarns (sections [0019] - [0021] and [0027]). The core yarn may be a polyester or polyamide mono- or multifilament yarn, while the coating comprises the thermoplastic elastomeric composition (section [0021]). The thermoplastic elastomer is preferably a polyurethane of a specific composition and having specific properties (sections [0313]-[0340]). In particular, the thermoplastic polyurethane elastomer has a Shore A hardness of about 50-90, preferably 55-85, 60-80, 60-70, or 67-77 (section [0264]). Suitable thermoplastic polyurethane elastomers comprise commercially available ones (section [0340]).
The melting and solidification of the thermoplastic elastomeric composition serves one or more functions within the thermoformed textiles, such as controlling the level of stretch, abrasion resistance and/or traction within the entire textile or a region thereof and bonding of the core yarn to the one or more second yarns (section [0022]. It is noted that controlling traction is considered to be equivalent to controlling friction levels. Figure 5A shows a knit textile, prior to thermoforming, comprising a course of the first coated thermoplastic yarn alternating with courses of second yarns (sections [0012] and [0143]). Figure 5B shows said knit textile after thermoforming, wherein the thermoplastic elastomer has been melted and resolidified to form a thermoformed network of the thermoplastic elastomer composition and second yarns, wherein a portion of the second yarns are exposed adjacent to the resolidified coating (sections [0013] and [0144]-[0146]). Figures 7A-7D show different configurations of coated yarns within a textile, prior to and post thermoforming, wherein the surfaces of the textile are different prior to and post thermoforming (sections [0015] and [0148]-[0150]). Thus, this is equivalent to the first areas comprising a first yarn which is treated to form a thermoformed network.
The textile is suitable for use as an upper article of footwear (e.g., various types of athletic shoes, casual shoes, boots, etc.), wherein an externally-facing surface comprises the thermoformed network (sections [0023], [0028], [0029], and [0101]). Frazier also discloses a method of making the knit textile and upper article of footwear comprising the steps of knitting the textile and thermoforming said knit textile (sections [0031]-[0034]). The external-facing surface of the footwear upper may comprise different areas of thermoformed zones 104, 106, 108 comprising medial, lateral, and/or toe regions to provide different specific functional areas (section [0113]-[0122] and Figures 1A-1C). In particular, the thermoformed zones may comprise a lateral region and/or medial region (i.e., encompasses an embodiment wherein the thermoformed areas are not located on the medial region), wherein certain zones may comprise a higher concentration of the thermoformed elastomer (section [0116]).
Further, it is asserted that due to the grippy, rubbery nature of thermoplastic elastomers having a Shore A hardness of 50-90, preferably 60-70, the areas of the knit fabric comprising the thermoplastic elastomer will necessarily have a higher coefficient of friction. See the Teknor Apex reference, which teaches hardness and coefficient of friction are inversely related properties in thermoplastic elastomers (TPEs) (page 2, paragraph after diagram of hardness scales). In particular, the reference teaches softer TPEs have a higher surface tack (i.e., higher grip or coefficient of friction) than harder semi-rigid TPEs. Thus, the areas of Frazier’s knit fabric comprising the thermoplastic polyurethane elastomer will necessarily have a higher coefficient of friction than areas not comprising said elastomer (i.e., second yarn) due to the inherent difference in the nature of the materials.
The thermoforming process may result in a shaped article and/or one with surface texture (sections [0088] and [0225]). Said textured surface may be provided by thermoforming with a textured embossing pad to create a molded pattern (i.e., an embossed raised pattern alternating with a non-raised areas) on the knit textile (section [0571]). The embossing pad may be heated and said pad and knit textile are pressed in a vacuum to produce the molded thermoformed knit textile (section [0571]). Working examples include Knit A having 75-100% of the total surface area thermoformed, Knit B having 40-70% of the total surface thermoformed, and Knit C having 15-35% of the total surface area thermoformed (section [0549]). In an embodiment wherein the first yarns and second yarns are alternated within the knit fabric, the raised pattern will necessarily extend across at least portions of both the first area comprising a first yarn and the second areas comprising a second yarn. The thermoformed textile has a measurable dynamic coefficient of friction (sections [0250]-[0252]), which can be used to determine traction properties and boot-to-ball interaction of an upper footwear article (sections [0106], [0250], [0289], and [0577]). Thus, Frazier suggests creating patterns in the upper with different areas having different levels of traction or friction, in different regions of the shoe upper.
To summarize, Frazier teaches the coated yarns are alternated within the knit fabric or alternated in different areas of the knit fabric, wherein said fabric may be thermoformed by embossing a textured pattern thereon, such that, in one embodiment, first areas of thermoformed embossments cover 40-70% of the total surface area. Frazier also teaches the preferred coating materials are commercially available thermoplastic polyurethane elastomers having a Shore hardness and other properties identical to those disclosed in the present specification (see sections [0160] and [0161] of the Pre-Grant Publication US 2024/0277103). Note during the thermoform process, the thermoplastic elastomer coating of the first yarn is melted and resolidified, which will necessarily result in a different coefficient of friction between the first area of thermoformed regions comprising thermoformed networks and the non-embossed, non-thermoformed regions of the second areas.
However, Frazier fails to teach adding recessions or protrusions across the different frictional regions of the shoe upper. CN 108135328 is drawn to footwear having an upper region with protrusions and recesses (Abstract). CN 108135328 discloses that the smooth areas and textured regions. The textured areas may include protrusions, waves, wrinkles, bellows, etc. (English Translation, page 7). The protrusions can be different sizes (English Translation, page 7). Additionally, CN 108135328 teaches that the textured areas can help have better ball control (English Translation, page 8). Thus, it would have been obvious to add the protrusion and recessions to the shoe of Frazier, as taught by CN 108135328 to optimize the surface friction properties for ball control.
Further, Frazier discloses that the shoe upper can be made from a textile layer having different zones in different regions of the shoe upper (for example three zones are used, but more are possible) and each zone is made up of different materials, wherein each zone is designed to have different levels of a desired property, such as rigidity or traction (paragraphs 107 – 125). Further, Frazier even teaches that the shoe can have high traction zones and the optionally a transition between that zone and other zones (Paragraph 116). And the shoe upper can have portions in the toe box with increased traction and other regions with different properties. Frazier also includes testing of samples showing how different properties impact the ball spin rate and which products are preferred (paragraphs 575 – 582) In other words, the reference teaches the coefficient of friction properties of the thermoformed regions are a result effective variable that can be modified to achieve an optimum value for a particular application. Further, the treated regions are taught to be placed on portions of the shoe which contact the ball to impact ball control such as the toe box or insole.
Also, Frazier fails to teach the raised elements are across multiple sections of the pattern. CN 108135328 is drawn to footwear having an upper region with protrusions and recesses (Abstract). CN 108135328 discloses having higher areas of friction in regions designed to contact the ball in the forefront of the shoe (Figure 9, English Translation, Page 12). The pattern is shown to be in the high contact region as well as the adjacent regions creating a transition between the high contact and the smooth portions of the shoe (English translation page 12). The protrusions can be different sizes (English Translation, page 7). Additionally, CN 108135328 teaches that the textured areas can help have better ball control (English Translation, page 8). Further, both references show the traction areas being located in the toe box or forefront of the shoe. Thus, it would be obvious to have the patterned region in different zones of the fabric with a first zone being the high traction region, and the second zone being the transition region of the shoe upper and to place those patterned regions in zones that contact the ball such as the front toe region of the shoe and the insole of the shoe. Thus, it would have been obvious to add the protrusion and recessions, in patterns of various sizes or combination of sizes of the raised elements to the shoe of Frazier, as taught by CN 108135328 to optimize the surface for ball control.
Further, CN 108135328 discloses having higher areas of friction in regions designed to contact the ball (Figure 9, English Translation, Page 12). The pattern is shown to be in the high contact region as well as the adjacent regions creating a transition between the high contact and the smooth portions of the shoe (English translation page 12). Thus, it would be obvious to have the protrusions embossed into different zones of the fabric with a first zone being the high traction region, and the second zone being the transition region of the shoe upper.
Additionally, Frazier et al. discloses that the shoe upper can include an internally facing portion and an externally facing portion (paragraph 95). Further, Frazier et al. suggests that the external layer or the internal layer can at least a portion that is formed from the thermoplastic elastomeric composition (paragraph 95). Hoying et al. is drawn to shoe uppers. Hoying et al. discloses that the shoe upper can include a knit fabric with a separate inner layer and outer layer (paragraph 424). Since the layers are produced as separate layers, the outer face can be formed so that the third yarn is not present in the outer layer at all. The inner layer can include separate yarns made from elastic fibers such as spandex, elastance or Lycra, in areas requiring stretch and/or recovery properties (paragraph 482) or a combination of polyester and elastic yarns (paragraph 501). Hoying et al. discloses that polyurethane fibers include elastance and spandex fibers (paragraph 218). And Lycra is an elastic polyurethane fiber (paragraph 437). Finally, Hoying discloses that the inner layer may be knit from materials suitable for an inner layer of a shoe, for example, yarns that affect fit or comfort of the shoe, in particular elastic and/or functional yarns (paragraph 536). Therefore, it would have been obvious to one having ordinary skill in the art to create the upper with an inner layer separate from the outer layer as taught by Hoying et al. wherein the inner layer is made from materials desirable for a shoe upper such as an elastomeric fiber like polyurethane or a mixture of elastomeric fibers and other non-elastic fibers to impact the fit and comfort of the shoe by giving the shoe stretch and recovery properties. Thus, claims 1-3, 5, 6, 11-13, 16-19, and 21-26 are rejected by Frazier in view of CN 108135328 and Hoying et al.
Claims 7-9, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Fraizer et al. (US 2021/0030108), “Shore Hardness and Soft TPEs” by Teknor Apex (Shore Hardness and Soft TPEs | Teknor Apex), CN 108135328 A, and Hoying et al. as applied to claims 1 and 11 above, and in further view of Morgan et al. (US 2019/0350284).
Regarding claims 7-9, 14, and 15, Frazier teaches the knit textile may be thermoformed by embossing a textured pattern therein. However, the reference fails to teach specific patterns, including concentric, curvilinear, and linear patterns. As such, one can assume the shape of the patterns are not critical to the invention and that one could look to the prior art for guidance on selecting a pattern.
For example, Morgan teaches a textile comprising at least one compressed portion alternating with at least one uncompressed portion (abstract and Figures 1-5). The compressed and uncompressed portions may be formed by embossing, a method of forming a surface having a portion that stands out in relief from adjacent surfaces (sections [0024] and [0040]). The embossed, compressed/uncompressed surface of the textile may occur in a variety of patterns, including linear patterns or curvilinear patterns, to achieve a desired density of compressed regions (section [0043] and Figure 6). Exemplary patterns include expanding square, expanding circle, parallel lines, non-parallel lines, concentric circles/ovals, concentric diamonds/squares/rectangles, parallel or non-parallel waves, and radiating lines (section [0043] and Figure 6). The textiles may be knit or woven and are suitable for use as footwear (section [0025] and [0045]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select embossing patterns comprising linear or curvilinear patterns, including concentric circle/oval patterns, as taught by Morgan, for the embossed texture pattern of Frazier in order to achieve a desired density of embossed texture in a particular region for a specific application. Such a modification would have yielded predictable results to the skilled artisan. Therefore, claims 7-9, 14, and 15 are held to be obvious over the cited prior art.
Response to Arguments
Applicant’s arguments with respect to claim(s) rejection over Frazier et al. have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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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jlj
January 9, 2026
/JENNA L JOHNSON/Primary Examiner, Art Unit 1789