DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
This Office Action is in response to the amendment filed 7/29/25. As directed by the amendment, claims 1, 11 and 14 have been amended; claim 16-20 has been cancelled. Claims 1-15 are pending in this application.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke § 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke § 112(f) except as otherwise indicated in an Office action.
In the instant case there does not appear to be any means for language in the claims and/or language to be considered under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 103 AIA
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-5 and 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over DUA US 20100154256 A1 (herein after Dua) in view of Kerns US 20050284000 A1 (herein after Kerns) and
Bryars US 4125001 A (herein after Bryars).
Regarding claim 1, Dua discloses an upper for an article of footwear (Abstract, as seen in annotated Figure 6), the upper comprising: a knitted component (40, as seen in annotated Figure 6) comprising a knit element (as seen in annotated Figure 6) and an inlaid strand (43), wherein the element (as seen in annotated Figure 6) defines a portion of at least one of an exterior surface of the upper (as seen in annotated Figure 6) and an interior surface of the upper (paragraphs 0001, 0002 and 0020), wherein a first portion of the inlaid strand extends from a perimeter edge of the knit element (as seen in annotated Figure 6), and a lace aperture (41) being structured to receivae a lace (32), as the inlaid strand extends around the lace aperture (as seen in annotated Figure 6), the inlaid strand continuously around the lace aperture (41), and back to the perimeter edge of the knit element (as seen in annotated Figure 6).
[AltContent: arrow][AltContent: textbox (The inlaid strand continuously around the lace aperture and back to the perimeter edge of the knit element.)][AltContent: textbox (A knitted component comprising a knit element.)]
[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (An upper for an article of footwear.)]
[AltContent: arrow][AltContent: textbox (A lace aperture being structured to receive a lace.)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (The inlaid strand extends around the lace aperture. )][AltContent: textbox (A portion of at least one of an exterior surface of the upper.)][AltContent: textbox (A first portion of the inlaid strand extends from a perimeter edge of the knit element.)][AltContent: textbox (An interior surface of the upper.)]
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Dua is silent to the inlaid strand remaining between the exterior and interior surface of the upper.
Kerns discloses the inlaid strand (2, 4, 6, 8) remaining between the exterior (30) and interior (22) surface of the upper (12, paragraph 0005 and 0015, as seen in annotated Figures 1 and 2).
[AltContent: textbox (The inlaid strand remaining between the exterior and interior surface of the upper.)]
[AltContent: arrow][AltContent: arrow][AltContent: arrow]
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[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Inlaid strand.)][AltContent: arrow][AltContent: textbox (Interior surface.)][AltContent: arrow][AltContent: textbox (Exterior surface.)]
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Dua and Kerns are analogous art to the claimed invention in that it relates to reinforced uppers for footwear.
It would have been obvious to one having ordinary skill in the art before the effective filing date
of the invention to have modified the configuration of the inlaid strands of Dua by constructing the inlaid strand remaining between the exterior and interior surface of the upper as taught by Kerns in order to provide stability to the material around the laces when the laces are tightened. The modification would be a simple modification to ensure the material does not tear during use.
Dua and Kerns are silent to wherein the inlaid strand is inlaid within, and extends through, at least one course of the knit element.
Bryars discloses wherein the inlaid strand (Y) is inlaid within (Col 3, lines 60-68), and extends through (as seen in annotated Figure 7), at least one course of the knit element (Col 3, lines 60-68).
[AltContent: arrow][AltContent: textbox (Inlaid strand)]
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Figure 7
Bryars is analogous art to the claimed invention in that it relates to knitted components having inlaid strands.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the upper for an article of footwear of Dua and Kerns by constructing wherein the inlaid strand is inlaid within, and extends through, at least one course of the knit element as taught by Bryars in order to impart a single fabric with different properties. The modification of the upper would be a simple modification to obtain predictable results, creating areas in the upper that have stretch and other areas that have stretch resistance without having to add additional layers of material to the upper.
Regarding claim 2, the modified upper for an article of footwear of the combined references discloses wherein the inlaid strand has a greater stretch-resistance (paragraph 0003 and 0043 of Dua) than the knit element (40 of Dua), and wherein the inlaid strand (Y of Bryars) has a greater thickness than yarns forming the knit element (as seen in annotated Figure 7 of Bryars).
Regarding claim 3, the modified upper for an article of footwear of the combined references discloses wherein the upper (30, as seen in annotated Figure 6 of Dua) comprises part of an article of footwear (Abstract of Dua).
Regarding claim 4, the modified upper for an article of footwear of the combined references discloses wherein the knit element (paragraph 0020 of Dua) extends from a throat area of the upper (as seen in annotated Figure 6 of Dua) to a lower area of the upper (as seen in annotated Figure 6 of Dua).
Regarding claim 5, the modified upper for an article of footwear of the combined references discloses wherein the perimeter edge of the knit element (40, paragraph 0020 of Dua) lies against a surface of a sole structure (20 of Dua) of the article of footwear (paragraph 0015 of Dua) when the upper is secured to the sole structure (Abstract, paragraph 0001 and 0018 of Dua).
Regarding claim 8, the modified upper for an article of footwear of the combined references discloses wherein the first portion of the inlaid strand (43, as seen in annotated Figures 6 and 7F of Dua) is configured to be adjusted using the loop formed by the second portion of the inlaid strand (43, as seen in annotated Figures 6 and 7F of Dua).
[AltContent: arrow][AltContent: arrow][AltContent: textbox (The loop made from the first and second inlaid portions. Where lace (32) extends through the loop to tighten the laces and tighten the medial and lateral sides of the upper.)][AltContent: arrow][AltContent: arrow][AltContent: textbox (The second portion of the inlaid strand.)][AltContent: arrow][AltContent: arrow][AltContent: textbox (The first portion of the inlaid strand.)]
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Regarding claim 9, the modified upper for an article of footwear of the combined references discloses wherein the first portion of the inlaid strand (as seen in annotated Figures 6 and 7F of Dua) remains between the exterior surface (paragraph 0024, as seen in annotated Figures 6 and 7F of Dua) and the opposite interior surface of the upper (paragraph 0020, as seen in annotated Figures 6 and 7F of Dua) as it extends from the perimeter edge to the lace aperture (as seen in annotated Figures 6 and 7F of Dua).
Regarding claim 10, the modified upper for an article of footwear of the combined references discloses wherein the lace aperture (41 of Dua) is located in a throat area of the upper (as seen in annotated Figures 6 and 7Fof Dua).
Regarding claim 11, Dua discloses a knitted component (40, Abstract, as seen in annotated Figure 6) comprising a knit element (as seen in annotated Figure 6) and an inlaid strand (43), an upper for an article of footwear (30, as seen in annotated Figure 6), the upper comprising: wherein the element (as seen in annotated Figure 6) defines a portion of at least one of an exterior surface of the upper (paragraphs 0001, 0002 and 0020) and an interior surface of the upper (as seen in annotated Figure 6, paragraphs 0001, 0002 and 0020), wherein a first portion of the inlaid strand extends from a perimeter edge of the upper (as seen in annotated Figure 6 and 7F), and back to the perimeter edge of the upper (as seen in annotated Figure 6 and 7F), a first lace aperture (41) being structured to receive a lace (32), the inlaid strand (43) around the first lace aperture (as seen in annotated Figure 6 and 7F), as the inlaid strand extends around the first lace aperture (43, as seen in annotated Figure 6 and 7F), and wherein a second portion of the inlaid strand (43, as seen in annotated Figure 6 and 7F), continuous with the first portion (43, as seen in annotated Figure 6 and 7F), extends from the perimeter edge of the upper and turns in an area adjacent (43, as seen in annotated Figure 6 and 7F), and between, the first lace aperture (41) and a second lace aperture (41, as seen in annotated Figure 6 and 7F), and extends back to the perimeter edge of the upper (as seen in annotated Figure 6 and 7F), without extending around the lace aperture (as seen in annotated Figure 7F- the first and second portion of the inlaid strand of Dua does not go completely around/surround the entirety of the lace aperture but goes above it and only partially encircles the aperture).
[AltContent: arrow][AltContent: connector][AltContent: connector][AltContent: textbox (Third portion of the inlaid strand (44).)][AltContent: ][AltContent: ][AltContent: textbox (Second portion of the inlaid strand.)][AltContent: textbox (First portion of the inlaid strand (43).)].
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[AltContent: textbox (The inlaid strand extends around the first lace aperture, and wherein a second portion of the inlaid strand, continuous with the first portion.)]
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Dua is silent to the inlaid strand remaining between the exterior and interior surface of the upper.
Kerns discloses the inlaid strand (2, 4, 6, 8) remaining between the exterior (30) and interior (22) surface of the upper (12, paragraph 0005 and 0015, claims 1 and 12, as seen in annotated Figures 1 and 2).
Dua and Kerns are analogous art to the claimed invention in that it relates to reinforced uppers for footwear.
It would have been obvious to one having ordinary skill in the art before the effective filing date
of the invention to have modified the configuration of the inlaid strands of Dua by constructing the inlaid strand remaining between the exterior and interior surface of the upper as taught by Kerns in order to provide stability to the material around the laces when the laces are tightened. The modification would be a simple modification to ensure the material does not tear during use.
However, Dua and Kerns do not specifically disclose knitted component comprising a knit element and an inlaid strand, wherein the inlaid strand is inlaid within, and extends through, at least one course of the knit element.
Bryars teaches wherein the inlaid strand is inlaid within (Y), and extends through at least one course of the knit element (Col 3, lines 60-68, as seen in annotated Figure 7).
Bryars is analogous art to the claimed invention in that it relates to knitted components having inlaid strands.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the upper for an article of footwear of Dua and Kerns by constructing wherein the inlaid strand is inlaid within, and extends through, at least one course of the knit element as taught by Bryars in order to impart a single fabric with different properties. The modification of the upper would be a simple modification to obtain predictable results, creating areas in the upper that have stretch and other areas that have stretch resistance without having to add additional layers of material to the upper.
Regarding claim 12, the modified upper for an article of footwear of the combined references discloses wherein the inlaid strand (43 of Dua) has a greater stretch resistance than the knit element (paragraph 0003 and 0043 of Dua).
Regarding claim 13, the modified upper for an article of footwear of the combined references discloses wherein the inlaid strand (Y of Bryars) has a greater thickness (as seen in annotated Figure 7 of Bryars) than yarns forming the knit element (as seen in annotated Figure 7 of Bryars).
[AltContent: arrow][AltContent: arrow][AltContent: textbox (A first section of the first portion of the inlaid strand extends along a first course of the knit element.)][AltContent: textbox (A second section of the first portion of the inlaid strand extends along a second course of the knit element.)]
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Figure 7
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable DUA US 20100154256 A1 (herein after Dua) in view of Kerns US 20050284000 A1 (herein after Kerns) and Bryars US 4125001 A (herein after Bryars) as applied to claims 1 and 11, in further view of Meschter US 20070271822 A1 (herein after Meschter).
Regarding claim 6, the modified upper for an article of footwear of the combined references discloses all the limitations of claim 6, but does not disclose wherein a second portion of the inlaid strand exits the knit element at the perimeter edge of the knit element and re- enters the knit element at a different location along the perimeter edge.
Meschter discloses wherein a second portion of the inlaid strand exits the knit element at the perimeter edge of the knit element (as seen in annotated Figure 8Lof Meschter) and re-enters the knit element at a different location along the perimeter edge (as seen in annotated Figure 8Lof Meschter).
[AltContent: textbox (The inlaid strand exits the knit element at the perimeter edge of the knit element and re-enters the knit element at a different location along the perimeter edge.)][AltContent: arrow][AltContent: arrow]
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Meschter is analogous art to the claimed invention in that it relates to footwear having reinforcing strands in the upper.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the upper for an article of footwear of Dua, Kerns, and Bryars by constructing a second portion of the inlaid strand exits the knit element at the perimeter edge of the knit element and re- enters the knit element at a different location along the perimeter edge, as taught by Meschter in order to provide an upper with a continuous strand and a manner for tightening the upper on the foot without slippage. The modification of the upper would be a simple modification to obtain predictable results, creating a lightweight upper that is reinforced around the laces in order to support the laces when pulled tight.
Regarding claim 7, the modified upper for an article of footwear of the combined references discloses wherein the second portion of the inlaid strand forms a loop (44) adjacent to the perimeter edge (as seen in annotated Figure 8L of Meschter) between the location where the second portion of the inlaid strand exits the knit element (as seen in annotated Figure 8L of Meschter) and the location where the second portion of the inlaid strand re-enters the knit element (as seen in annotated Figure 8L of Meschter).
Allowable Subject Matter
Claims 14 and 15 are 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 an examiner’s statement of reasons for allowance:
Applicant’s amendments have included the below limitations that have not been found in the prior art searches. As a result of the included limitations claims 14 and 15 are deemed allowable.
The closest pieces of prior art are DUA US 20100154256 A1, Kerns US 20050284000 Bryars US 4125001 A and Meschter US 20070271822 A1. The current claims are distinguished from Dua, Bryars and Meschter at least because - Dua, Bryars and Meschter does not teach, suggest, or disclose: “…wherein a third portion of the inlaid strand extends outward from a first location of the perimeter edge of the upper and forms a loop, re-entering the perimeter edge of the upper at a second location, the first location being different than the second location, where at the first location the third portion of inlaid strand is continuous with the first portion of inlaid strand as the first portion extends back from the throat area to the perimeter edge, and at the second location the third portion of inlaid strand is continuous with the second portion of inlaid strand as the second portion extends from the perimeter edge to the throat area of the upper. (claim 14)…”.
Consequently, claim 15 is also allowable at least by virtue of its dependency on allowable claim 14.
ARGUMENTS
Applicant’s arguments have been fully considered but are not convincing. Applicant’s arguments are directed towards structural elements included in the amended claims and thus do not apply to the combinations of references used to teach the limitations of the amended claims in the current rejection and/or the manner in which prior art has been applied in the current rejection. In view of Applicant's amendments, the search has been updated, and a rejection on the amended claims is applied above.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE M FERREIRA whose telephone number is (571)270-5916, fax number (571) 270-6916. The examiner can normally be reached on Monday - Thursday 9:00 am- 5:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, ALISSA J. TOMPKINS, at (571) 272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Catherine M. Ferreira/
Examiner, Art Unit 3732
/ALISSA J TOMPKINS/Supervisory Patent Examiner, Art Unit 3732