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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/02/2026 has been entered.
Claims 1, 10, and 18 have been amended, and claims 1-20 remain pending in this application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 4 fails to further limit the subject matter of the claim upon which is depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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, 3-6, 8-12, and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hesterberg et al. (US 9,743,709), herein Hesterberg, in view of Podhajny et al. (US 2014/0237856), herein Podhajny.
Regarding claim 1, Hesterberg discloses an article of footwear (200), comprising: an upper (102) forming at least a medial side of the upper; a containment piece (122) overlapping a portion of the medial side of the upper, the containment piece having a first edge and a second edge opposite to the first edge; wherein the containment piece includes an inlaid tensile strand forming at least one containment piece lacing loop (124), wherein the first edge of the containment piece is secured to a throat area of the article of footwear by the at least one containment piece lacing loop (Fig. 7, 8); and a sole structure (202) comprising a top surface, a bottom surface, and a side surface extending between the top surface and the bottom surface, wherein the upper is secured to at least a portion of the top surface of the sole structure; and a slit (222), wherein the slit is located on the side surface of the sole structure at a location that is spaced from the top surface and spaced from the bottom surface (Fig. 8), wherein a portion of the containment piece proximate to the second edge is inserted through the slit such that the containment piece is secured to the sole structure (column 6, lines 2-7). (column 3, line 49-column 5, line 2; column 7, line 8-column 8, line 60; Fig. 7, 8)
Hesterberg does not disclose that the upper includes a knitted component forming at least a medial side of the upper. Podhajny teaches that the upper of a shoe may be formed as a knitted component (paragraph 0029). Forming the upper of a knitted component allows the various features and structures of the upper to be formed through the knitting process without the need for significant additional manufacturing steps and processes (paragraph 0031). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the upper as a knitted component, as taught by Podhajny, in order to simplify the manufacturing process, reducing costs and waste.
Regarding claim 3, Hesterberg teaches that the upper comprises a plurality of lacing loops (121’) proximate the first edge of the containment piece, but does not specifically disclose that the lacing loops are formed from a continuous inlaid tensile strand. Podhajny teaches forming a plurality of lacing loops (141) with a continuous inlaid tensile strand (140) within a knitted upper component (Fig. 8, 11). The inlaid strand resists stretch in the upper, securing the upper around the foot to enhance fit of the footwear (paragraph 0044). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide lacing loops formed of a continuous tensile strand, as taught by Podhajny, to the upper of Hesterberg in order to provide lacing loops which resist stretch in the upper and enhance the fit of the footwear.
Regarding claim 4, Hesterberg discloses that the containment piece includes an inlaid tensile strand forming at least one containment piece lacing loop, wherein the first edge of the containment piece is secured to a throat area of the article of footwear by the at least one containment piece lacing loop.
Regarding claim 5, Hesterberg discloses that the containment piece provides enhanced support and stability to the shoe (column 6, lines 9-20), but does not disclose different yarns. Podhajny teaches that different yarns may be utilized within the upper to impart different elasticities to different portions of the upper (paragraph 0032, 0035). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the knitted component and containment piece of two yarns of different materials in order to help impart greater stiffness to the containment piece, providing improved support and stability.
Regarding claim 6, Hesterberg discloses a plurality of lacing loops (121’) in the upper, but does not disclose a continuous inlaid strand forming the lacing elements. Podhajny teaches that lacing loops in a knitted upper may be formed with a continuous inlaid strand (140). The inlaid strand has a high tensile strength with a greater stretch-resistance than the knitted upper (paragraph 0051). The inlaid strand resists stretch in the upper when the lace is tightened, and assists to secure the upper around the foot and enhance the fit (paragraphs 0042-0044; Fig. 7). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the lacing loops of Hesterberg from an inlaid strand with a greater tensile strength, as taught by Podhajny, in order to resist stretch in the upper when the lace is tightened, and assist to secure the upper around the foot and enhance the fit.
Regarding claim 8, Hesterberg discloses that the containment piece is configured to align with an arch of a foot of a wearer when the article of footwear is worn by the wearer (Fig. 8).
Regarding claim 9, Hesterberg discloses that the containment piece is unsecured to the upper between the first edge and the second edge of the containment piece.
Regarding claim 10, Hesterberg discloses an article of footwear (200), comprising: an upper (102) forming a medial side and/or a lateral side of the upper; a sole structure (202) comprising a top surface, a bottom surface, and a side surface, the side surface defining a thickness of the sole structure between the top surface and the bottom surface, wherein the upper is secured to at least a portion of the top surface of the sole structure; a slit (222), wherein the slit is located on the side surface of the sole structure at a location that is spaced from the top surface and from the bottom surface; and at least one containment piece (122) secured to the sole structure and wrapping over at least a portion of the sole structure and at least a portion of the upper, wherein the at least one containment piece comprises a tensile strand that is inlaid through the at least one knitted containment piece and exits the at least one knitted containment piece to form a knitted containment piece lacing loop (124). (column 3, line 49-column 5, line 2; column 7, line 8-column 8, line 60; Fig. 7, 8)
Hesterberg does not disclose that the upper and containment piece are knitted. Podhajny teaches that the upper of a shoe may be formed as a knitted component (paragraph 0029). Forming the upper of a knitted component allows the various features and structures of the upper to be formed through the knitting process without the need for significant additional manufacturing steps and processes (paragraph 0031). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the upper and containment piece as knitted components, as taught by Podhajny, in order to simplify the manufacturing process, reducing costs and waste.
Regarding claims 11 and 12, Hesterberg discloses that the at least one knitted containment piece overlaps at least a portion of the medial side and the lateral side of the upper.
Regarding claim 16, Hesterberg discloses that the at least one containment piece is secured to a throat area of the article of footwear by the knitted containment piece lacing loop (Fig. 7, 8).
Regarding claim 17, Hesterberg discloses that the at least one knitted containment piece includes a first edge and a second edge that is positioned superior to the first edge, and wherein the at least one knitted containment piece is unsecured to the upper between the first edge and the second edge of the at least one knitted containment piece.
Regarding claim 18, Hesterberg discloses a method for manufacturing an article of footwear (200), comprising: forming an upper (102) having a medial side; forming a containment piece (122), the containment piece having a first edge and a second edge opposite the first edge; inlaying a tensile strand through the containment piece, the tensile strand forming at least one containment piece lacing loop (124) proximate to the first edge of the containment piece; inserting the second edge of the containment piece through a slit (222) of a sole structure and securing the containment piece to the sole structure (column 6, lines 2-6), wherein the slit is formed in a medial side surface of the sole structure extending between a top surface and a bottom surface of the sole structure, wherein the slit is spaced from the top surface and from the bottom surface (Fig. 8); and securing the upper to at least a portion of the top surface of the sole structure (column 3, line 49-column 5, line 2; column 7, line 8-column 8, line 60; Fig. 7, 8).
Hesterberg does not disclose that the upper and containment piece are knitted. Podhajny teaches that the upper of a shoe may be formed as a knitted component (paragraph 0029). Forming the upper of a knitted component allows the various features and structures of the upper to be formed through the knitting process without the need for significant additional manufacturing steps and processes (paragraph 0031). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the upper and containment piece as knitted components, as taught by Podhajny, in order to simplify the manufacturing process, reducing costs and waste.
Allowable Subject Matter
Claims 2, 7, 13-15, and 19-20 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.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached at (571) 272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732
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