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 .
DETAILED ACTION
Response to Amendment
Applicant’s amendment filed January 20, 2026 has been received, Claims 1-17 and 21-23 are currently pending.
Claim Rejections - 35 USC § 112
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.
1. Claims 1-17 and 21-23 are 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.
Claims 1, 10 and 21 recite “wherein a majority of the knit tongue tab is positioned on the medial side across the longitudinal midline reference plane”; and Claims 1 and 10 recite “wherein a majority of the knit heel tab is positioned on the lateral side across the longitudinal midline reference plane”. The claim limitations are indefinite as it is unclear what the term “across” is meant to impart structurally to the orientation of the tongue and heel tabs. Claims 1, 10, and 21 are rejected as best understood by examiner.
Claim 4 recites “wherein a reference line that bisects the distal-most extent of the knit tongue tab and the knit heel tab”. The claim limitation is indefinite as it is unclear how a single reference line bisects two tabs that are on opposite sides of the shoe collar. Claim 4 is rejected as best understood by examiner.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
2. Claim(s) 1-5, 8-14, 17, and 21-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dealey (US 2016/0058100).
Regarding Claim 1, Dealey discloses an upper for an article of footwear, the upper (120) comprising: a medial side (18) and a lateral side (16) separated by a longitudinal midline reference plane extending from a toe area to a heel area of the upper (see annotated Fig. 4 below; para.30); and a first knit component (130) comprising: a knit collar (region of 130 around 140) defining an opening (140) for receiving a wearer’s foot (para.33); a knit tongue tab, a distal-most extent of the knit tongue tab extending toward the medial side of the upper; and a knit heel tab, a distal-most extent of the knit heel tab extending toward the lateral side of the upper (see annotated Fig. 2 & 5 below), wherein the knit tongue tab and the knit heel tab are each disposed on opposite sides of the longitudinal midline reference plane (see annotated Figures below), wherein a majority of the knit tongue tab is positioned on the medial side across the longitudinal midline reference plane, and wherein a majority of the knit heel tab is positioned on the lateral side across the longitudinal midline reference plane (see annotated Figures below).
PNG
media_image1.png
378
532
media_image1.png
Greyscale
PNG
media_image2.png
439
588
media_image2.png
Greyscale
PNG
media_image3.png
637
896
media_image3.png
Greyscale
Regarding Claim 2, Dealey discloses an upper of claim 1, wherein the knit tongue tab is integrally knit with the knit collar (para.35 & 42-43).
Regarding Claim 3, Dealey discloses an upper of claim 1, wherein the knit heel tab is integrally knit with the knit collar (para.35 & 42-43).
Regarding Claim 4, Dealey discloses an upper of claim 1, further comprising a knit tongue (152; para.34); wherein a reference line that bisects the distal-most extent of the knit tongue tab and the knit heel tab form an angle greater than 0 degrees and less than 90 degrees with respect to the longitudinal midline reference plane (see annotated Figure below).
PNG
media_image4.png
592
896
media_image4.png
Greyscale
Regarding Claim 5, Dealey discloses an upper of claim 4, wherein at least the knit tongue tab is integrally knit with the knit tongue (para.35 & 42-43).
Regarding Claim 8, Dealey discloses an upper of claim 1, wherein the knit tongue tab is at least partially positioned on the medial side of the upper (see annotated Figures above).
Regarding Claim 9, Dealey discloses an upper of claim 1, wherein the knit heel tab is at least partially positioned on the lateral side of the upper (see annotated Figures above).
Regarding Claim 10, Dealey discloses an article of footwear comprising: a knit upper (120; para.35) having lateral side (16) and a medial side (18) separated by a longitudinal midline reference plane extending from a toe area to a heel area of the knit upper (see annotated Fig. 4 above; para.30), the knit upper formed from at least a first knit component (130), the knit upper comprising: a knit collar (region of 130 around 140) defining an opening (140) for receiving a wearer’s foot; a knit tongue tab extending away from the longitudinal midline reference plane toward the medial side of the knit upper; and a knit heel tab extending away from the longitudinal midline reference plane toward the lateral side (see annotated Figures above), wherein the knit collar is integrally knit with the knit tongue tab and the knit heel tab (para.35), and wherein the knit tongue tab and the knit heel tab are each disposed on opposite sides of the longitudinal midline reference plane, wherein a majority of the knit tongue tab is positioned on the medial side across the longitudinal midline reference plane, and wherein a majority of the knit heel tab is positioned on the lateral side across the longitudinal midline reference plane (see annotated Figures with Claim 1).
Regarding Claim 11, Dealey discloses an article of footwear of claim 10, further comprising a knit tongue (152; para.34).
Regarding Claim 12, Dealey discloses an article of footwear of claim 11, wherein the knit tongue shares at least one knit course in common with the knit tongue tab (para.35 & 42-43).
Regarding Claim 13, Dealey discloses an article of footwear of claim 12, wherein the knit tongue is integrally knit with lateral and medial sides of a throat area of the knit upper such that the knit tongue is inseparable from a remainder of the throat area (para.35 & 42-43).
Regarding Claim 14, Dealey discloses an article of footwear of claim 10, further comprising a sole structure (110) secured to the knit upper (para.32).
Regarding Claim 17, Dealey discloses an article of footwear of claim 10, wherein the knit upper comprises a heel seam (para.38; see annotated Figure below), and at least a majority of the knit heel tab is positioned lateral to the heel seam (see annotated Figures above).
PNG
media_image5.png
540
578
media_image5.png
Greyscale
Regarding Claim 21, Dealey discloses an article of footwear, comprising: an upper (120), comprising: a knitted component (130; para.35), wherein the upper comprises a lateral side (16) and a medial side (18) separated by a longitudinal midline reference plane extending from a toe area to a heel area of the upper (see annotated Fig. 4 above; para.30); the upper comprising: a collar (region of 130 around 140) comprising a top edge (i.e. edge of 130 around 140) and defining an opening (140) for receiving a wearer’s foot; a tongue tab extending away from the longitudinal midline reference plane toward the medial side of the upper, wherein a majority of the tongue tab is positioned on the medial side across the longitudinal midline reference plane (see annotated Figures with Claim 1); and a heel tab (see annotated Figures with Claim 1); and wherein the collar is integrally knit with the tongue tab and the heel tab (para.35).
Regarding Claim 22, Dealey discloses an article of footwear of claim 21, wherein the collar, the tongue tab, and the heel tab comprise part of the knitted component (para.35).
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.
The factual inquiries 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.
3. Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dealey (US 2016/0058100).
Regarding Claim 15, Dealey discloses the invention substantially as claimed above. While Dealey does not explicitly disclose wherein the sole structure comprises cleats. However, Dealey further teaches the shoe may be athletic footwear types, including baseball shoes, soccer shoes, [and] football shoes (para.29).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have placed cleats on the sole of Dealey, in order to provide the desired traction to a user involved in a sporting event, and as it is well known in the footwear art that baseball shoes, soccer shoes, [and] football shoes typically have cleats on the sole.
4. Claim(s) 6-7, 16, and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dealey (US 2016/0058100) in view of Podhajny (US 8,997,529).
Regarding Claims 6 and 23, Dealey discloses the invention substantially as claimed above. Dealey does not disclose wherein the knit tongue tab and the knit heel tab each have a lower elasticity than the knit collar. However, Podhajny teaches a knit shoe upper (120) having a first knit component (130/133,134) with may incorporate various types of yarn that impart different properties to separate areas; one area of the knitted component may be formed from a first type of yarn that imparts a first set of properties, and another area of the knitted component may be formed from a second type of yarn that imparts a second set of properties, such as stretch and recovery (Col.7, lines 46-67).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the knit tongue tab and the knit heel tab of Dealey to have a lower elasticity than the knit collar, as taught by Podhajny, in order to provide the optimum amount of stretch and support to the knit tabs and the collar for easy, durable entry of a user’s foot in and out of the shoe opening.
Regarding Claim 7, Dealey discloses the invention substantially as claimed above. Dealey does not disclose wherein the upper further comprises a knit tongue that has a greater elasticity than the knit tongue tab and the knit heel tab. However, Podhajny teaches a knit shoe upper (120) having a first knit component (130/133,134) with may incorporate various types of yarn that impart different properties to separate areas; one area of the knitted component may be formed from a first type of yarn that imparts a first set of properties, and another area of the knitted component may be formed from a second type of yarn that imparts a second set of properties, such as stretch and recovery (Col.7, lines 46-67).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the knit tongue of Dealey to have a greater elasticity than the knit tongue tab and the knit heel tab, as taught by Podhajny, in order to provide the optimum amount of stretch and support to the knit tabs and the tongue for easy, durable entry of a user’s foot in and out of the shoe opening.
Regarding Claim 16, Dealey discloses the invention substantially as claimed above. Dealey does not disclose wherein one or more of the toe area, at least a portion of the medial side, and at least a portion of the lateral side comprises a second knit component. However, Podhajny teaches a knit shoe upper (120) having a first knit component (133,134) and one or more of a toe area (10), at least a portion of a medial side (16), and at least a portion of a lateral side (18) comprises a second knit component (131)(as seen in Fig.1 & 6; Col.7, lines 21-60).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the knit upper of Dealey to have first and second knit components, as taught by Podhajny, in order to provide an upper that imparts different properties to various areas of upper, delivering the optimum stretch and durability for enhanced fit and support to a wearer during use of the shoe.
Response to Arguments
In view of Applicant's amendment, the search has been updated, and newly modified grounds of rejection have been identified and applied. Applicant's arguments, which are drawn solely to the newly amended limitations, have been considered but are moot in view of the newly modified ground(s) of rejection.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGAN E LYNCH whose telephone number is (571)272-3267. The examiner can normally be reached Monday to Friday, 8:00am-4:00pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MEGAN E LYNCH/Primary Examiner, Art Unit 3732