DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 20, 2026 has been entered.
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 April 20, 2026 are entered into the file. Currently claims 1, 11, and 21 are amended and claim 22 is new, resulting in claims 1-22 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, 11, and 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kormann (US 2016/0302508)2 in view of Song (KR 2019-0004492)1,2 and Wantanabe (US4434518)2.
With respect to claims 1 and 11, 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 (second polyolefin resin composition), 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 (synthetic leather polymeric coating on an outside of the synthetic leather material; first polyolefin resin composition) 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]). Since resin of the leather material of the upper is defined as the first polyolefin material and the resin of the sole is defined as the second polyolefin resin, thermal bonding between the upper and the sole would necessarily result in a melted and re-solidified polyolefin resin composition comprising the first polyolefin resin composition of the upper and the second polyolefin resin composition of the sole.
Claim(s) 12-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kormann (US 2016/0302508)2 in view of Song (KR 2019-0004492)3,4 and Wantanabe (US4434518)2 as applied to claim 1 above. Supporting evidence provided by Tau (US 2004/0087751).
With respect to claim 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)2 in view of Song (KR 2019-0004492)5,6 and Wantanabe (US4434518)2 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 1 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.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arnese (US 2016/0295971) in view of Song (KR 2019-0004492)7,8.
With respect to claim 22, Arnese teaches a sole for a shoe which comprises a first sole element and a second sole element, wherein at least a portion of the second sole element is configured to contact an adjacent surface when the sole is attached to an upper (paragraph [0011]). The second sole element may be made from polyethylene or polyolefin yarns (second polyolefin resin) (paragraph [0013]).
Arnese further teaches the upper may be artificial leather (paragraph [0110]), but is silent as to the specifics of the artificial leather.
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 (first polyolefin resin composition) 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]) and may comprise polyester fibers (paragraph [0041]). 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]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the artificial leather of Song as the upper of Arnese because it provides a leather-like feel while ensuring heat resistance, is environmentally friendly, and is light in weight.
Arnese further teaches the sole can be welded (thermal bond) to the upper (paragraph [0110]). Since the polyolefin material of the second sole (second polyolefin resin composition) and the polyolefin skin layer (first polyolefin resin composition) of the leather upper are in contact, the thermal bond would necessarily include the first and second polyolefin resin compositions.
Response to Arguments
Response – Claim Rejections 35 USC §103
Applicant’s argument in the response filed April 20, 2026 have been fully considered and are not persuasive.
On pages 10-11 of the response Applicant submits that claim 1 as amended recites the synthetic leather polymeric coating layer comprises an outer surface of the synthetic leather material, whereas Song includes a top coating layer (100) on top of the artificial leather to selectively protect the skin layer (110).
These arguments are not persuasive. Song discloses the artificial leather as being a three-layer structure including a fabric layer, a functional layer laminated on an upper part of the fabric layer, and a skin layer laminated on the upper part of the functional layer (Song; paragraph [0005]). Therefore the skin layer, which is equivalent to the synthetic leather polymeric coating layer, comprises an outer surface of the synthetic leather material. The top coating layer is applied on the uppermost part of the artificial leather (Song; paragraph [0043]). Therefore the top coating layer is defined by Song as structure separate from the artificial leather. The claim does not exclude the presence of the upper comprising additional coatings or treatments on the artificial leather. Additionally, the top coating layer of Song is optional (Song; paragraph [0043]), therefore it is within the ambit of the ordinary artisan to exclude the top coating layer.
On pages 12-14 of the response Applicant submits that the recycling process of Kormann is different than that disclosed by Song, therefore modification of Kormann with Song would render Kormann unsuitable for its intended purpose.
The Examiner respectfully disagrees. Applicant submits that paragraph [0056] of Song does not teach material recovery or recycling of thermoplastic components into a new article, but rather is reprocessing with the intent to reduce toxic emissions. Applicant finds support in paragraph [0002], however paragraph [0002] is with respect to waste treatment, not reprocessing as in paragraph [0056] of Song. Regardless, even if the reasons for reprocessing are different, there is no evidence in either Song or Kormann that a sole and an upper comprising the same polyolefin thermoplastic material cannot be recycled as desired by Kormann.
On pages 13-14 of the response Applicant submits that Song’s artificial leather is not a single-material structure but instead comprises multiple additives. Applicant concludes use of artificial leather with additives would render Kormann unsuitable for its intended purpose.
The Examiner respectfully disagrees. Kormann requires and upper and a sole where the majority is made from a thermoplastic base material (Kormann; paragraph [0014]). The use of additives as in Song would result in an artificial leather where the majority is made from a thermoplastic material, fulfilling the recycling requirements of Kormann. Song explicitly states that the additives are used within a content range that does not affect the properties of the artificial leather (Song; paragraph [0037]). It is within the ambit of the ordinary artisan to provide the appropriate level of additives.
On page 14 of the response Applicant submits that Wantanabe renders Kormann unsuitable for its intended purpose because Wantanabe includes a bonding insert between the sole and the upper, where the bonding insert includes a different material from the sole.
These arguments are not persuasive. It is respectfully submitted that Wantanabe was not relied on to teach the bonding method, rather was relied on to show (1) it is known in the art to use artificial leather as a shoe upper and (2) polyolefins are suitable materials for soles. As described in the rejection of claim 21 above, Kormann teaches thermally bonding an upper and a sole which comprise the same thermoplastic material (Kormann; paragraphs [0035]-[0036]). Since the artificial leather upper and the sole of Kormann in view of Song and Wantanabe comprise the same thermoplastic material, thermal bonding as in Kormann is possible and a bonding insert is not necessary, therefore the purpose of Kormann is maintained.
Response – Double Patenting
The terminal disclaimer filed on February 6, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11,678,721 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Larissa Rowe Emrich whose telephone number is (571)272-2506. The examiner can normally be reached Monday - Friday, 7:30am - 4:00pm EST.
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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 Machine translation used as reference
8 Previously presented
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