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 amendments filed with the written response received on November 28, 2025 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 As directed by the amendment, claims 1 and 4 have been amended; claim 3 is canceled; and claims 6-11 are withdrawn from further consideration.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 § 112(b)
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 (and claims 2, 4 and 5 at least due to dependency from claim 1) is 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.
Regarding claim 1, Applicant recites “a strength portion consisting of the base layer, a breathable layer having breathability, 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” (lines 4-6; emphasis added). Subsequently in claim 1, Applicant recites “the strength portion comprises: a toe strength portion disposed in the toe region; and a heel strength portion disposed in the heel region” (lines 12-14; emphasis added). Further subsequently in claim 1, Applicant recites “the strength portion further comprises a plurality of strip-like strength portions arranged at a side of the slit; and 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” (lines 27-30; emphasis added). Applicant’s Remarks support their intention that the strength portion “consists” of the base layer, the breathable layer and the strength layer (Page 8, last two paragraphs of Remarks). The metes and bounds of the claim are unclear, in particular with respect to the strength portion, because first the strength portion is recited with closed language (i.e. “consisting of”), and next the strength portion is subsequently recited to “comprise” (i.e. open-ended) and “further comprise” (i.e. again, open-ended) other elements. Correction is required. If Applicant intends for the strength portion to be clearly closed to additional elements, then Examiner suggests identifying all elements within the same clause that defines that the strength portion “consists” of all of those elements, and further suggests not using the open-ended term “comprises” when describing the strength portion. For purposes of examination, the claim is being interpreted as best as can be understood when applying any prior art thereagainst. Examiner reminds Applicant that the term “portion” itself 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). In other words, any “portion” of structure in the prior art can reasonably be identified as “consisting” of certain elements in a closed manner, while other elements could be stated as not being part of that particular closed portion.
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, 2, 4 and 5, as best as can be understood, 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) and Nishiwaki et al. (hereinafter “Nishiwaki”) (US 2017/0215523).
Regarding independent claim 1, Unnewehr discloses an article of footwear (three-dimensional shoe (Title)) comprising a sole (#52) and an upper (#11b), wherein the upper comprises a single fabric portion including a base layer having breathability (¶ 0125 describes knitted upper as a single piece; 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); 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 portion comprises: 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) consisting of 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 has a shape extending 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); the upper includes: 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 a 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 silent to there being a slit located in the intermediate region and extending frontward from the topline in the longitudinal direction. Unnewehr also 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, 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 having a shape extending, in a height direction of the article of footwear, from the slit to reach the sole.
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.
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) from the eyestay area down to the sole (Fig. 2 of Nishiwaki).
Unnewehr, Bruce and Nishiwaki all 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. 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 arranged some of the regions R2 of Unnewehr (i.e. part of overall strength portion) in the pattern of the panels #11 taught by Nishiwaki 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 portions #10 as depicted in Fig. 2 of Nishiwaki, when Nishiwaki’s pattern is incorporated into Unnewehr upon the modification). As a result of the modifications, 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), and the strength portion would further comprise a plurality of strip-like strength portions arranged at a side of the slit, each of the plurality of strip-like strength portions having a shape extending, in a height direction of the article of footwear, from the slit to reach the sole (via panel #11 shapes of Nishiwaki incorporated in for the shape of some of regions R2 in Unnewehr).
Regarding claim 2, the modified footwear article of Unnewehr (i.e. Unnewehr in view of Bruce and Nishiwaki, 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).
Regarding claim 4, the modified footwear article of Unnewehr (i.e. Unnewehr in view of Bruce and Nishiwaki, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that 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 (via portion #10 shapes of Nishiwaki incorporated in for the shape of some of regions R1 in Unnewehr, as explained in the 35 U.S.C. 103 rejection of claim 1 above), and the strip-like strength portions and the strip-like breathable portions are arranged alternately in the longitudinal direction (as shown in Fig. 2 of Nishiwaki, the panels #11 and portions #10 alternate in the longitudinal direction, which would be the case for the modified R2 and R1 regions in modified Unnewehr).
Regarding claim 5, the modified footwear article of Unnewehr (i.e. Unnewehr in view of Bruce and Nishiwaki, as applied to claims 1 and 4 above) renders obvious all the limitations of claims 1 and 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 (see Fig. 2 of Nishiwaki, wherein the length in the shoe’s longitudinal direction of the panels #11 (analogous to strip-like strength portions) is longer than the length of the portions #10 (analogous to strip-like breathable portions)).
Response to Arguments
Applicant's arguments filed November 28, 2025 have been fully considered but they are not persuasive. Examiner notes that the applicability of the previously-applied art to Mokos et al. (hereinafter “Mokos”) (US 2017/0208896) has been rendered moot by the amendment to claim 1 that deleted the language requiring that the breathable portion comprised through holes having a plurality of different sizes.
Applicant’s amendment to independent claim 1 essentially incorporated the subject matter of previous claim 3 (claim 3 has since been canceled) and a portion of previous claim 4.
Applicant first argues that the prior art does not disclose or suggest an upper having an arrangement for the strength portion that consists only of components of the single fabric portion, as in amended claim 1. Examiner notes that the “strength portion” identified in the prior art is constituted by elements that are only part of the listed elements following the “consisting of” language, as best as the claim language can be understood, given that the claim subsequently indicates that the strength portion “comprises” and “further comprises” additional features (see the 35 U.S.C. 112(b) rejection of claim 1 above, which addresses the indefinite language to further detail).
Applicant next argues against the Nishiwaki reference, stating that a “skilled artisan looking at Nishiwaki would simply have added a reinforcing layer like panel members 2 having panels 11 to the fabric of Unnewehr’s upper”. This argument appears to be based on speculation as to what a skilled artisan could have alternatively done when looking at Nishiwaki. Since Unnewehr already has sections (regions with a melted fused yarn and/or spacer knit structure) that are intended for increased support (i.e. strength), then there would not be a need to simply add layers from Nishiwaki when such a functional equivalent is already present in Unnewehr. The shape of the arrangement of an alternating pattern in Nishiwaki is being relied upon when modifying Unnewehr, in order to provide support for the shoe in the transverse direction while maintaining breathability in the areas between the regions R2.
Accordingly, the applicability of combining the Unnewehr, Bruce and Nishiwaki references to obtain the claimed subject matter is deemed proper and maintained, as best as the current claims can be understood.
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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/JAMESON D COLLIER/ Primary Examiner, Art Unit 3732