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
Applicant’s amendment filed on 10/15/2025 has been received; Claims 22-29, 31, 32 are pending. Claims 33-41 have been withdrawn from consideration.
Claim Rejections - 35 USC § 103
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.
Claim(s) 22-24,26-29, and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greene (U.S. 20110078921) in view of Dua (U.S. 20040118018).
Regarding claim 22, Greene teaches an upper (30) for a shoe (10) comprising: an outer layer (31, outer layer of 41; Para. 41) comprising: a textile material (Paras. 41, 49); an inner layer (32, inner layer of 41, and 50; Para. 41) comprising a polyester yarn (para.49); wherein at least one of the outer layer or the inner layer (32, inner layer of 41, and 50) comprises a knitwear (50, Paras. 66) having two or more layers (Para. 66, fig. 5A or Para. 41, “multi-layer structures”); wherein the outer layer covers a majority of the inner layer, and the inner layer covers a top, a medial side, and a lateral side of a foot of a wearer when the shoe is worn by the wearer (figs. 5A-5C) such that each of the outer layer and the inner layer, including each of the two or more layers extend over the top, the medial side, and the lateral side of the foot of the wearer when the shoe is worn by the wearer (Para. 66, fig. 5A or Para. 41, “multi-layer structures”, see annotated Figure 4 below); but doesn’t specifically teach the outer layer comprising a thermoplastic yarn capable of at least partially melting in a range from about 110 to 150°C, and one or more elements formed in the outer layer from melted thermoplastic yarn in the outer layer.
Dua teaches a shoe upper comprising an outer layer (120,130) including a thermoplastic yarn capable of at least partially melting at 108, 130, and 150 degrees Celsius (para. 46, abstract), and one or more elements (132-136) formed in the outer layer from melted thermoplastic yarn in the outer layer (para. 36).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have comprised the outer layer of Greene of a thermoplastic yarn capable of at least partially melting in a range from about 110 to 150°C, and one or more elements formed in the outer layer from melted thermoplastic yarn in the outer layer in view of Dua in order to provide greater durability in certain areas of the upper while maintaining stretch in other areas (para. 38 of Dua). With regard to the temperature range, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (MPEP 2144.05 (II)(A)).
Regarding claim 23, the combined reference further teaches the thermoplastic yarn comprises a monofilament (paras. 12, 47 of Dua).
Regarding claim 24, the combined reference further teaches the one or more elements (132-136 per Dua) include at least one of an eyelet, a heel cap, a toe cap, and a logo (fig. 1 of Dua).
Regarding claim 26, the combined reference further teaches the one or more elements (for example 136 of Dua applied to Greene and outer layer of 41 that underlies 31 at that area per fig. 5A of Greene (i.e. where tongue attaches to rest of upper)) comprises a spacer fabric (outer layer of 41 spaces 31 from 32, fig. 5A, where tongue attaches to rest of upper).
Regarding claim 27, the combined reference further teaches during use the inner layer inhibits a user's foot coming into direct contact with an area of the outer layer that includes a melted thermoplastic yarn (figs. 5A-5C of Greene).
Regarding claim 28, the combined reference further teaches at least one of a monofilament, an elastic yarn, a water-repellent yarn, an abrasion-resistant yarn, a luminescent yarn, a reflecting yarn, a piezo yarn, a functional yarn, an electrically conducting yarn, self-cleaning yarn, thermally regulating yarn, thermally insulating yarn, flame resistant yarn, a UV-absorbing yarn, an antibacterial yarn, a silver yarn, a shrinking yarn, and an intelligent yarn (at least elastane, para. 55 of Greene).
Regarding claim 29, Greene teaches 31 and 32 are bonded together (para. 41) and Dua teaches that the fusible strands (thermoplastic yarn) may be bonded to other strands in footwear (paras. 58) but the combined reference doesn’t specifically address the outer layer and inner layer being connected to each other at least in part by melted thermoplastic yarn.
However, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have connected together the outer layer and inner layer of the combined reference at least in part by the melted thermoplastic yarn further in view of Greene and Dua in order to bond layers 31 and 32 together without the need for additional adhesive.
Regarding claim 32, the combined reference further teaches the outer layer and the inner layer are connected to each other such that a hollow space between the layers is created in which at least one of a cushioning material, a filler thread, a spacer mesh, a membrane, and a reinforcement are located during use (para. 41, foam may be located between 31,32, also 42 is located within 41, para. 46, fig. 5A shows connections of layers).
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Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greene (U.S. 20110078921) in view of Dua (U.S. 20040118018) in view of Tatler et al. (U.S. Patent No. 8448474) in view of Di Girolamo (U.S. Patent No. 6553690) and Harada (U.S. Patent No. 4607439).
Regarding claim 25, the combined reference fails to teach the one or more elements (132-136) further comprises a polymer coating (col. 2, lines 45-57) having a thickness in a range between 0.2 mm and 1 mm.
Tatler teaches footwear (100) including an upper (120) formed of material (130) comprising fusible portions (139) wherein the material (130) includes a water-repellant coating (col. 22, lines 24-33).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have coated the outer layer of the combined reference including the one or more elements with a water-repellant coating in view of Tatler in order limit the ability of the upper to absorb and retain water (col. 22, lines 24-33 of Tatler).
The combined reference fails to teach the coating is a polymer and has a thickness in a range between 0.2 mm and 1 mm.
Di Girolamo teaches a shoe upper (16) including a polymer coating (silicone or Gore-tex) for providing water resistance (col. 2, lines 45-57).
Harada teaches a polymer coating (col. 4, lines 24-30) for shoe uppers (col. 5, lines 3-5) wherein the thickness of the coating is in the range of .05-.5mm (col. 4, lines 24-30).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have made the coating of the combined reference a polymer coating in view of Di Girolamo and to have formed the coating so as to have a thickness within the claimed range in view of Harada since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use (providing a water resistant coating)(MPEP 2144.07) and because it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 (I)).
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greene (U.S. 20110078921) in view of Dua (U.S. 20040118018) and further in view of Shaffer et al. (U.S. 20120297643).
Regarding claim 31. The Greene/Dua combined reference fails to teach a polymer having a hardness in a range between 40 to 60 Shore D.
Shaffer teaches adding a panel of rigid polymer to a shoe upper to provide additional reinforcement, support, and/or stability (paras. 95,96).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have added a panel of rigid polymer to the shoe upper of the combined reference in view of Shaffer in order to provide additional reinforcement, support, and/or stability (paras. 95,96 of Shaffer).
The Greene/Dua /Shaffer combined reference doesn’t specifically teach the hardness of the polymer is in a range between 40 to 60 Shore D however, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have made the panel of rigid polymer in a range between 40 to 60 Shore D since it has been held that where the general conditions of a claim are disclosed in the prior art (rigid polymer), discovering the optimum or workable ranges involves only routine skill in the art. (MPEP 2144.05 (II)(A)).
Response to Arguments
Applicant’s arguments with respect to the amended claims have been fully considered but are moot in view of the new grounds of rejection as discussed supra.
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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