DETAILED ACTION
Summary
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s arguments and claim amendments submitted on September 12, 2025 are entered into the file. Currently claims 1-20 are amended and claim 21 is new, resulting in claims 1-21 pending for examination.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-9 and 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kormann (US 2016/0302508) in view of Song (KR 2019-0004492)1,2 and Wantanabe (US4434518).
With respect to claim 1, Kormann teaches sports shoes comprising: an upper wherein a majority by weight of the upper is made from a thermoplastic base material and a sole, wherein a majority by weight of the sole is made from the same thermoplastic base material, wherein the sole and the upper are individually fabricated and joined to each other (paragraph [0014]). By providing shoes with a sole and an upper which by majority or entirely consist of the same base material, the base material may be easily recovered from the shoe for recycling (paragraph [0033]).
Kormann is silent as to the upper comprising the synthetic leather as described in claim 1.
Song teaches artificial leather comprising a fabric layer, a functional layer made of a polyolefin-based resin material laminated on top of the fabric layer, and a skin layer made of a polyolefin-based resin material laminated on top of the functional layer (paragraph [0007]). The fabric layer may include a flexible polymer material such as woven fabric, nonwoven fabric, or knitted fabric (paragraph [0040]). The artificial leather provides a leather-like feel while ensuring heat resistance (paragraph [0053]), is environmentally friendly as it can be reprocessed after use (paragraph [0056]), and is light in weight (paragraph [0057]).
Wantanabe teaches that it is known in the art to bond a sole composed of a synthetic resin to a shoe upper composed of artificial leather (col. 1, lines 9-15). Wantanabe further teaches it is known in the art that shoe soles may be made of polyethylene and polypropylene (col. 2, lines 38-42).
Since both Kormann and Song teach thermoplastic materials intended for reuse, and Wantanabe teaches artificial leathers are known to be used as shoe uppers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the upper of Kormann to be the leather of Song in order to provide a shoe upper that is leather-like in appearance, environmentally friendly, and light in weight.
Kormann desires the sole and the upper be made from the same thermoplastic base material, therefore it would have further been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the material of the sole to be the same material as the artificial leather (a polyolefin). As evidenced by paragraph [0056] of Song the material of the artificial leather is able to be recovered as desired by paragraph [0033] of Kormann. Additionally as evidenced by col. 2, lines 38-42 of Wantanabe, both polypropylene and polyethylene are suitable materials to form a sole for a sports shoe. Therefore the suggested combination maintains the purpose of Kormann of providing a sports shoe that is recyclable (see paragraph [0002] of Kormann).
With respect to claims 2-6 and 20, Kormann in view of Song and Wantanabe teaches all the limitations of claim 1 above. Song further teaches the polyolefin resin material skin layer and functional layer can be formed of a polyolefin mixed resin composed of an olefin elastomer and an olefin resin (paragraph [0021]). It is preferable to use a propylene-based elastomer randomly copolymerized with ethylene (paragraph [0023]). For the olefin resin it is also preferable to use a propylene-ethylene random copolymer with an ethylene content of 1 to 20 wt% (paragraphs [0026]-[0027]).
As explained in the rejection of claim 1 above, the second polyolefin of the sole would be the same material as the first polyolefin of the artificial leather.
With respect to claim 7, Kormann in view of Song and Wantanabe teaches all the limitations of claim 6 above. Song further teaches the olefin resin may have an ethylene content of 1 to 20 wt% (paragraph [0028]).
The ethylene content range of Song substantially overlaps the claimed range in the instant claim 7. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Song, because overlapping ranges have been held to establish prima facie obviousness.
With respect to claim 8, Kormann in view of Song and Wantanabe teaches all the limitations of claim 1 above. Song further teaches it is preferable to use a propylene-based elastomer (polymeric resin modifier) having an ethylene content of 5-25 wt%, preferably 10-20 wt%, in which ethylene is randomly copolymerized into an isotactic propylene (paragraph [0023]).
It is noted that paragraph [0269] of the instant specification identifies a possible polymeric resin modifier as a copolymer containing isotactic propylene repeat units and ethylene repeat units. Therefore, Song is interpreted as teaching the claimed polymeric resin modifier.
With respect to claim 9, Kormann in view of Song and Wantanabe teaches all the limitations of claim 8 above. Song further teaches that too little olefin elastomer (polymeric resin modifier) results in the resin composition becoming hard, and the structural stability decreases (paragraph [0025]). However too much olefin elastomer (polymeric resin modifier) reduces the amount of olefin resin used, so physical properties such as heat resistance deteriorate (paragraph [0025]). When too little olefin resin is used, physical properties such as strength deteriorate, and when too much is used the resin composition becomes hard and structural stability deteriorates (paragraph [0030]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of olefin elastomer (polymeric resin modifier) to include the claimed range. One would have been motivated to provide enough olefin elastomer (polymeric resin modifier) to provide the desired hand and structural stability while maintaining the desired physical properties such as strength. It has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II).
With respect to claim 21, Kormann in view of Song and Wantanabe teaches all the limitations of claim 1 above. Kormann further teaches the by using the same material for the upper and the sole they can be bonded by applying heat (paragraphs [0035]-[0036]).
Claim(s) 11-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kormann (US 2016/0302508) in view of Song (KR 2019-0004492)3,4 and Wantanabe (US4434518) as applied to claim 1 above. Supporting evidence provided by Tau (US 2004/0087751).
With respect to claims 11-12, Kormann in view of Song and Wantanabe teaches all the limitations of claim 1 above. Particularly, Song teaches artificial leather comprising a fabric layer, a functional layer made of a polyolefin-based resin material laminated on top of the fabric layer, and a skin layer made of a polyolefin-based resin material laminated on top of the functional layer (paragraph [0007]). The polyolefin resin material skin layer and functional layer can be formed of a polyolefin mixed resin composed of an olefin elastomer and an olefin resin (paragraph [0021]). It is preferable to use a propylene-based elastomer randomly copolymerized with ethylene (paragraph [0023]).
While Song does not explicitly teach that the polyolefin-based resin material is thermoplastic, it is known in the art that flexible thermoplastic olefin blends are typically a blend of polypropylene with an elastomer, such as elastomeric propylene-alpha olefin copolymers (Tau; paragraph [0003]). It is therefore reasonable to presume that the polyolefin-based resin material of Song is thermoplastic.
With respect to claims 13-17, Kormann in view of Song and Wantanabe teaches all the limitations of claim 12 above. Song further teaches the polyolefin resin material skin layer and functional layer can be formed of a polyolefin mixed resin composed of an olefin elastomer and an olefin resin (paragraph [0021]). It is preferable to use a propylene-based elastomer randomly copolymerized with ethylene (paragraph [0023]). For the olefin resin it is also preferable to use a propylene-ethylene random copolymer with an ethylene content of 1 to 20 wt% (paragraphs [0026]-[0027]).
With respect to claim 18, Kormann in view of Song and Wantanabe teaches all the limitations of claim 17 above. Song further teaches the olefin resin may have an ethylene content of 1 to 20 wt% (paragraph [0028]).
The ethylene content range of Song substantially overlaps the claimed range in the instant claim 18. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Song, because overlapping ranges have been held to establish prima facie obviousness.
With respect to claim 19, Kormann in view of Song and Wantanabe teaches all the limitations of claim 12 above. Song further teaches it is preferable to use a propylene-based elastomer (polymeric resin modifier) having an ethylene content of 5-25 wt%, preferably 10-20 wt%, in which ethylene is randomly copolymerized into an isotactic propylene (paragraph [0023]).
It is noted that paragraph [0269] of the instant specification identifies a possible polymeric resin modifier as a copolymer containing isotactic propylene repeat units and ethylene repeat units. Therefore, Song is interpreted as teaching the claimed polymeric resin modifier.
Claim(s) 8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kormann (US 2016/0302508) in view of Song (KR 2019-0004492)5,6 and Wantanabe (US4434518) as applied to claim 1 above, and further in view of Krabbenborg (US 2013/0072623)2.
With respect to claims 8 and 10, Kormann in view of Song and Wantanabe teaches all the limitations of claim 8 above.
Kormann in view of Song and Wantanabe is silent as to the polyolefin-based resin comprising from about 0.1-5 weight percent of a clarifying agent.
Krabbenborg teaches thermoplastic polyolefin elastomer compositions for use in artificial leather compositions (paragraph [0002]). The thermoplastic polyolefin compositions may contain one or more additives that are commonly used in thermoplastic polyolefin compositions such as clarifying agents (paragraph [0107]). Such additives may be present in an amount from at least about 0.1 parts by weight based on the total composition and less than or equal to 10 parts by weight based on the total weight of the composition (paragraph [0108]).
The amount of clarifying agent range of Krabbenborg substantially overlaps the claimed range in the instant claim 10. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Krabbenborg, because overlapping ranges have been held to establish prima facie obviousness.
Since both Kormann in view of Song and Wantanabe and Krabbenborg teach polyolefin elastomers for use in artificial leather, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the polyolefin-based resin of Song to include 0.1-10 wt% of a clarifying agent because clarifying agents are known in the art as commonly used additives for thermoplastic polyolefin compositions and would provide the predictable result of a polyolefin-based resin composition suitable for use in an artificial leather. See MPEP 2143.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-19 and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, and 6-12 of U.S. Patent No. 11,678,7217. Although the claims at issue are not identical, they are not patentably distinct from each other because:
With respect to the instant claims 1 and 11-12, claim 1 of Dua claims an article of footwear comprising: a sole structure comprising a thermoplastic composition; and an upper operatively connected with the sole component, the upper comprising a synthetic leather material, the synthetic leather material comprising a synthetic leather polymeric coating layer affixed to a synthetic leather textile layer, the synthetic leather coating layer comprising a synthetic leather coating composition, the synthetic leather comprising a synthetic leather textile composition, wherein the synthetic leather coating composition is a synthetic leather coating thermoplastic polyolefin resin composition (Dua; claim 1). Claim 4 of Dua further explains the synthetic leather textile layer comprises a first fiber or a fibers yarn comprising the synthetic leather coating thermoplastic polyolefin resin composition (Dua; claim 4).
With respect to the instant claims 2 and 13, claim 6 of Dua further claims wherein the synthetic leather coating thermoplastic polyolefin resin composition comprises at least one polyolefin chosen from a polyethylene homopolymer, a polyethylene copolymer, a polypropylene homopolymer, a polypropylene copolymer, or a mixture thereof (Dua; claim 6).
With respect to the instant claims 3 and 14, claim 7 of Dua further claims wherein the synthetic leather coating thermoplastic polyolefin resin composition comprises the polypropylene copolymer (Dua; claim 7).
With respect to the instant claims 4 and 15, claim 8 of Dua further claims wherein a polyolefin component of the synthetic leather coating thermoplastic polyolefin resin composition consisting of all polyolefin polymers present in the synthetic leather coating consists of a polypropylene homopolymer, a polypropylene copolymer, or a mixture thereof (Dua; claim 8).
With respect to the instant claims 5 and 16, claim 9 of Dua further claims wherein the polyolefin component comprises the polypropylene copolymer, and the polypropylene copolymer comprises about 80 percent to about 99 percent polypropylene repeat units by weight based upon a total weight of the polypropylene copolymer (Dua; claim 9).
With respect to the instant claims 6 and 17, claim 10 of Dua further claims wherein the polypropylene copolymer includes a polypropylene/polyethylene copolymer (Dua; claim 10).
With respect to the instant claims 7 and 18, claim 11 of Dua further claims wherein the polypropylene copolymer comprises about 1 percent to about 5 percent ethylene repeat units by weight based upon a total weight of the polypropylene copolymer (Dua; claim 11).
With respect to the instant claims 8 and 19, claim 12 of Dua further claims wherein the synthetic leather coating thermoplastic polyolefin resin composition further comprises a polymeric resin modifier, a clarifying agent, or both (Dua; claim 12).
With respect to the instant claim 21, claim 2 of Dua further claims wherein the second side of the sole component is thermally bonded to the upper at least in part by the polyolefin resin composition and synthetic leather coating thermoplastic (Dua; claim 2).
With respect to the instant claim 9, claim 13 of Dua further claims wherein the synthetic leather coating thermoplastic polyolefin resin composition comprises from about 1 weight percent to about 30 weight percent of the polymeric resin modifier based upon a total weight of the synthetic leather coating thermoplastic polyolefin resin composition (Dua; claim 13).
With respect to the instant claim 10, claim 14 of Dua further claims wherein the synthetic leather coating thermoplastic polyurethane resin composition comprises from about 0.1 weight percent to about 5 weight percent of the clarifying agent based upon a total weight of the synthetic leather coating thermoplastic polyolefin resin composition (Dua; claim 14).
Response to Arguments
Response – Claim Rejections 35 USC §102 and 103
The rejections of:
claim(s) 1-6 and 8 under 35 U.S.C. 102(a)(1) as being anticipated by Song (KR 2019-0004492);
claim(s) 11-17 and 19 under 35 U.S.C. 102(a)(1) as being anticipated by Song (KR 2019-0004492);
claim(s) 7, 9 and 18 under 35 U.S.C. 103 as being unpatentable over Song (KR 2019-0004492);
claim(s) 8 and 10 under 35 U.S.C. 103 as being unpatentable over Song (KR 2019-0004492) in view of Krabbenborg (US 2013/0072623); and
claim(s) 20 under 35 U.S.C. 103 as being unpatentable over Song (KR 2019-0004492) in view of Wevers (US 2007/0141933)
have been withdrawn in light of the amendments to the claims filed September 12, 2025.
Applicant’s arguments filed September 12, 2025 have been considered but are moot because the arguments do not apply to the combination of references being used in the current 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.
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LARISSA ROWE EMRICH
Examiner
Art Unit 1789
/LARISSA ROWE EMRICH/Examiner, Art Unit 1789
1 Machine translation used as reference
2 Previously presented
3 Machine translation used as reference
4 Previously presented
5 Machine translation used as reference
6 Previously presented
7 hereinafter referred to as Dua
Prosecution Insights