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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 23, 2026 has been entered.
Response to Amendment
The amendments filed with the written response received on July 23, 2026 have been considered and an action on the merits follows. As directed by the amendment, claims 1 and 4 have been amended; claim 3 is canceled; claims 6-11 are withdrawn from further consideration. Accordingly, claims 1, 2 and 4-11 are pending in this application, with an action on the merits to follow regarding claims 1, 2, 4 and 5.
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.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Unnewehr et al. (hereinafter “Unnewehr”) (US 2020/0029647) in view of Bruce (US 2019/0098955).
Regarding independent claim 1, Unnewehr discloses article of footwear (three-dimensional shoe (Title)) comprising a sole (#52) and an upper (#11b), wherein the upper is a single fabric (¶ 0125 describes knitted upper as a single piece) including a base layer having breathability (knitted uppers are formed from loops, wherein the openings in the loops and between the loops provides breathability, at least to some extent), the single fabric comprising: a strength portion (¶ 0031 of Unnewehr describes a melted fused yarn, which constitutes a strength portion of the fabric; alternatively, Unnewehr teaches that a spacer knit structure can be used (¶ 0057, 0184, 0185 of Unnewehr), wherein a spacer knit structure involves a yarn interposed between a double-layer of knitted fabric to connect the double-layer together while keeping the layers of the double-layer slightly spaced apart from one another; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)) including the base layer (¶ 0033-0034 of Unnewehr describe there may be double layers substantially all over the upper, or some areas with a single layer and other areas with a greater number of layers; one of the layers being a base layer; As noted above, the term “portion” is very broad; all of the elements of Unnewehr assigned to be part of the “strength portion” herein are the elements of which the strength portion “consists”, given the breadth of the term “portion”), a breathable layer having breathability (¶ 0033 of Unnewehr describes there may be double layers substantially all over the upper; another of those layers would be breathable due to its knitted structure, as noted above), and a strength layer made of a single yarn or a plurality of yarns and connecting the base layer and the breathable layer to each other (the melted fused yarn would provide a strength layer part of the strength portion; the fused yarn provides support for the regions where it is located (¶ 0030 of Unnewehr); also, as noted above, Unnewehr teaches that a spacer knit structure can be used (¶ 0057, 0184, 0185 of Unnewehr), wherein a spacer knit structure involves a yarn interposed between a double-layer of knitted fabric to connect the double-layer together while keeping the layers of the double-layer slightly spaced apart from one another (i.e. the two layers of the double-layer are the base layer and the breathable layer; the yarn that interposes between the double-layer constitutes a strength layer that connects the double-layer together, which therefore “[connects] the base layer and the breathable layer to each other”)); and a breathable portion including only the base layer (as described in ¶ 0033-0034 of Unnewehr, wherein the knitted material has breathability due to the nature of knitted construction loops, as explained above; Unnewehr also teaches that there can be regions R1 and R2, with R1 comprising one knitted layer and R2 comprising two knitted layers (¶ 0125 of Unnewehr); ¶ 0133 discloses that either of regions R1 or R2 may be located anywhere on the upper #11b in order to engineer regions of stiffness or flexibility in any part of the upper; region R1, having one layer (i.e. just a base layer) constitutes the breathable portion), wherein the base layer extends from a toe region located at a front end in a longitudinal direction of the article of footwear to reach a heel region located at a rear end in the longitudinal direction of the article of footwear (as shown in the Figures of Unnewehr; Examiner notes that the term "region" is very broad and merely means "any large, indefinite, and continuous part of a surface or space" (Defn. No. 1 of "Collins English Dictionary – Complete and Unabridged, 12th Edition 2014" entry via TheFreeDictionary.com)), the strength portion comprises: a toe strength portion disposed in the toe region (as stated in ¶ 0031 of Unnewehr, melted fuse yarn may be arranged at least in a heel and/or a toe portion of the upper); and a heel strength portion disposed in the heel region (as stated in ¶ 0031 of Unnewehr, melted fuse yarn may be arranged at least in a heel and/or a toe portion of the upper), and the breathable portion comprises: an intermediate breathable portion disposed in an intermediate region located between the toe region and the heel region (any of the regions that are not constituted by the melted fused yarn or regions R2, which are positioned between the arbitrary toe and heel regions, would be an intermediate breathable portion disposed in the intermediate region; see Fig. 1A for example, which shows R1 along a bottom and having an arbitrary intermediate portion of the overall breathable portion of the upper within an arbitrary intermediate region between the arbitrary toe and heel regions), a medial foot covering portion configured to cover at least a part of a medial foot surface of a foot; a lateral foot covering portion configured to cover at least a part of a lateral foot surface of the foot (as shown in the upper figures, there is both a lateral and medial foot covering portion for the upper); a topline that is located between the medial foot covering portion and the lateral foot covering portion in a width direction of the article of footwear, and is configured to allow the foot to be inserted and removed (the opening in the upper for the foot to pass through defines a topline that is located between the aforementioned lateral and medial foot covering portions), but is silent to there being a slit located in the intermediate region and extending frontward from the topline in the longitudinal direction.
Bruce teaches a footwear upper that includes a topline edge and a slit (open throat #315) that extends forwardly from the topline edge (Fig. 8 of Bruce), the slit having eyelets #312 disposed at both edges therealong for using laces to tighten the shoe to the foot, as is common.
Unnewehr and Bruce teach analogous inventions in the field of footwear uppers. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have incorporated the open throat #315 (i.e. slit) and eyelets of Bruce into the footwear upper of Unnewehr in order to provide the shoe with a capability to be adjustably tightened via laces to the foot of the wearer, as is well known in the art, and further since Unnewehr already acknowledges that its upper may contain lace supports as structural elements in the top region of the upper (end of ¶ 0132 of Unnewehr), although just never shows how such lace supports would be implemented via the drawings. As a result of the modification, there would be a slit located in the intermediate region and extending frontward from the topline in the longitudinal direction (via the teachings of Bruce incorporated into Unnewehr’s footwear upper).
Regarding claim 2, the modified footwear article of Unnewehr (i.e. Unnewehr in view of Bruce, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that a ratio of an area of the breathable portion to an area of the strength portion in the intermediate region is higher than a ratio of an area of the breathable portion to an area of the strength portion in each of the toe region and the heel region (Examiner reiterates the breadth of the terms “portion” and “region”, as noted above, and further notes that the term "area" is very broad and merely means "a section, portion, or part". (Defn. No. 3 of "Collins English Dictionary – Complete and Unabridged, 12th Edition 2014" entry via TheFreeDictionary.com); if the heel region and toe region are defined by the presence of the strength layer (i.e. melted fused yarn and/or two-layer R2 region with spacer knitted connecting yarn, then the ratio of an area of the breathable portion to an area of the strength portion in the heel and toe regions would be zero (i.e. 100% strength portion in the toe region and heel region); the intermediate region, which would include at least some of the breathable portion, would have a ratio of an area of the breathable portion to an area of the strength portion greater than zero, as required by the claim, inasmuch as the regions, portions and areas have been defined in the claim).
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Unnewehr in view of Bruce as applied to claim 1 above, and further in view of Tamm (US 2016/0095377) and Nishiwaki et al. (hereinafter “Nishiwaki”) (US 2017/0215523).
Regarding claim 4, the modified footwear article of Unnewehr (i.e. Unnewehr in view of Bruce, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and teaches that either of regions R1 or R2 may be located anywhere on the upper #11b in order to engineer regions of stiffness or flexibility in any part of the upper (¶ 0133 of Unnewehr), but is silent to specifying that these regions include the strength portion further comprising a plurality of strip-like strength portions arranged at a side of the slit, each of the plurality of strip-like strength portions has a shape extending, in a height direction of the article of footwear, from the slit to reach the sole, the intermediate breathable portion comprises a plurality of strip-like breathable portions arranged at the side of the slit, each of the plurality of strip-like breathable portions has a shape extending, in the height direction, from the slit to reach the sole, and the strip-like strength portions and the strip-like breathable portions are arranged alternately in the longitudinal direction.
Tamm teaches a knitted footwear upper that can have regions of reduced stretch (i.e. increased strength) that are formed by the use of a polymer coating, the use of smaller needles to create smaller stitches and/or the use of laying-in of non-stretchable yarn in tunnels along the knitwear, such as nylon (¶ 0128 of Tamm). In the Fig. 10 example of Tamm, the areas #105 are representative of areas without the polymer coating and in the other areas, there is a polymer coating (¶ 0226 of Tamm). Tamm’s Fig. 10 example does not show that the non-coated areas (i.e. analogous to the “strip-like breathable portions” extend all the way to reach the sole, although Tamm does disclose that “the arrangement of the coated and uncoated areas can also differ from the arrangement shown in Fig. 10 on principle” (¶ 0226 of Tamm). Fig. 10 of Tamm does show that the coated (i.e. analogous to strip-like strength portions) and non-coated areas are alternating, with the coated portion reaching the sole from a central slit tongue area.
Nishiwaki teaches a footwear upper that has a plurality of support panel portions #11 (front two instances in Fig. 2; ¶ 0135 of Nishiwaki indicates that the panels #11 provide support (i.e. strength) in the shoe’s transverse direction when the shoelaces are tightened) that are arranged alternatingly with breathable portions (areas in between panels #11, constituted by string portions #10, which are knit fabric (¶ 0044 of Nishiwaki); the two instances immediately rearward of the aforementioned front two panels #11) and extend from the eyestay area down to the sole (Fig. 2 of Nishiwaki).
Modified Unnewehr, Tamm and Nishiwaki teach analogous inventions in the field of footwear uppers. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have arranged some of the regions R2 of Unnewehr (i.e. part of overall strength portion) in the pattern of the coated areas taught by Tamm in order to provide support for the shoe in the transverse direction, while maintaining desired breathability in the areas between the regions R2 (i.e. regions R1 would be located in the vicinity of darker shaded areas in the midfoot area as depicted in Fig. 10 of Tamm, when Tamm’s pattern is incorporated into Unnewehr upon the modification). Since Tamm teaches that its arrangement of the coated area could differ from its depiction in Fig. 10, it would have been further obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have extended the non-coated areas down at least to reach the sole, as taught by Nishiwaki, for a variety of reasons, including (but not limited to) in order to provide additional flexibility where the upper meets the sole in the midfoot area, and further since it has been held that modifying the shape of an element would be obvious absent evidence that the particular shape of the element of the claimed invention was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP 2144.04(IV)(B). As a result of the modifications, the shape of the non-coated areas #105 (i.e. strip-like breathable portions; with exception to the rearmost instance that abuts the heel counter at #94 in Tamm Fig. 10) and the coated area (i.e. strip-like strength portions) would be shaped similarly as shown in Fig. 10 of Tamm, only also extended all the way down so that the bottom curvature of the shapes reaches the sole.
Regarding claim 5, the modified footwear article of Unnewehr (i.e. Unnewehr in view of Bruce, Tamm and Nishiwaki, as applied to claim 4 above) renders obvious all the limitations of claim 4, as set forth above, and further that a length, in the longitudinal direction, of each of the strip-like strength portions is greater than a length, in the longitudinal direction, of each of the strip-like breathable portions (absent further clarification as to where the lengths are measured, the annotated partial view of Fig. 10 of Tamm below shows where the length of each of the strip-like strength portions is greater than the length of each of the strip-like breathable portions in the longitudinal direction of the footwear).
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Response to Arguments
In view of Applicant's amendment, the search has been updated, and new prior art has been identified and applied. Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection. While the Nishiwaki reference (which Applicant argued against being applicable due to its strip-like panels being unattached to its flexible base member) is still being generally relied upon in the updated 35 U.S.C. 103 rejection of claims 4 and 5, Examiner notes that the reference is being relied upon in a different manner than the manner in which it was used in the previous Office Action, as explained in the new grounds of rejection detailed above.
Conclusion
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/JAMESON D COLLIER/Primary Examiner, Art Unit 3732
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