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 .
Response to Amendment
The amendment filed on 11/13/2025 has been entered. Claims 1, 4-10 and 14-18 are currently pending in the application. Claim 7 has been previously withdrawn from consideration. Claims 1, 4-6, 8-10 and 14-18 are being treated on the merits. Any rejection(s) and/or objection(s) made in the previous Office action and not repeated below, are hereby withdrawn due to Applicant's amendments and/or arguments in the response filed on 11/13/2025.
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 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.
Claims 1, 4-6, 8-10, 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over La O' (US 2018/0271216 A1) in view of Elder (US 2014/0223779 A1).
Regarding claim 1, La O', in a first embodiment, discloses a method of manufacturing an article of footwear defining a forefoot region, a midfoot region, and a heel region (a method of forming a shoe 10; figs. 1, 8; paras. 0048, 0068; claim 1), the method comprising:
providing a sole structure (sole 20; figs. 1, 8; paras. 0048, 0068) and an upper (an upper base material 300; figs. 1, 8; paras. 0048, 0068);
coupling the sole structure to the upper at least in part (fig. 8; para. 0068) by:
winding a first continuous thread (fibers 305 comprising a first fiber 305; fig. 8; para. 0068) around the sole structure and the upper in a first direction (a first direction substantially perpendicular to sole 20; see annotated fig. 8; para. 0052) in the midfoot region and the forefoot region (fig. 8; para. 0068); and
winding the first continuous thread around the sole structure and the upper in a second direction (a second direction with an acute angle with sole 20, from a rear portion of the heel region to an instep region of the upper adjacent a shoe opening; see annotated fig. 8) in the heel region (see annotated fig. 8); and
receiving the first continuous thread within a channel of a plurality of channels (a guide channel of a plurality of guide channels 310; fig. 8; para. 0068) that are defined by a sole surface of the sole structure (fig. 8; para. 0068),
wherein winding the first continuous thread around the sole structure and the upper is, at least in part, configured to couple the sole structure to the upper (fig. 8; para. 0068); and
wherein the first direction is different than the second direction (see annotated fig. 8).
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Annotated Fig. 8 from US 2018/0271216 A1
La O' does not explicitly disclose the method comprising providing a reinforcement component along the channel within the plurality of channels; and hardening the reinforcement component to fixedly retain the first continuous thread within the channel of the plurality of channels. However, Elder, in the context of describing an article of footwear, teaches a method of manufacturing the article of footwear (figs. 1, 3; para. 0017) comprising coupling a sole structure (sole structure 20; figs. 1, 3; para. 0017) to an upper (upper 30; figs. 1, 3; para. 0017) at least in part by winding a first continuous thread (strand 60; figs. 1, 3; para. 0040) around the sole structure and the upper (figs. 1, 3; para. 0040), receiving the first continuous thread within a channel of a plurality of channels (tunnels 43; figs. 1, 3; para. 0041) that are defined by a sole surface of the sole structure (figs. 1, 3; para. 0041), providing a reinforcement component (providing an adhesive to bond strand 60 to the sole structure 20; fig. 3; paras. 0023, 0034, 0045) along each channel within the plurality of channels (by bonding midportions 70 of strand 60 to a strand securement member 24 of the sole structure 20 in the tunnels 43; fig. 3; paras. 0023, 0034, 0040-0041, 0045); and hardening the reinforcement component to fixedly retain the first continuous thread within the channel of the plurality of channels (when the adhesive is dried; fig. 3; para. 0045). Therefore, 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 method as disclosed by La O', with the method comprising providing a reinforcement component along each channel within the plurality of channels; and hardening the reinforcement component to fixedly retain the first continuous thread within the channel of the plurality of channels as taught by Elder, in order to use an easy approach to prevent the first continuous thread from moving out of the channels during long term use.
La O', in the first embodiment, does not explicitly disclose wherein winding the first continuous thread in the second direction includes winding the first continuous thread around a distal end of the article of footwear in the heel region. However, La O', does teach that the method may include winding the first continuous thread extending in different regions in any region or regions of the article of footwear (the method can include one or more layers of bands extending in different regions in any region, or regions, of the shoe 10. paras. 0059, 0082). In addition, one of ordinary skill of the art would recognize that, the upper and the sole of the shoe 10 in the first embodiment of in La O' should be fully coupled from a front toe end to a rear heel end so as to avoid separation of the upper and the sole in a toe region and in a heel region in order to function properly when a user wearing the shoe is walking or running or performing other activities. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have configured the winding regions as disclosed by La O' in the first embodiment, by extending the coupled regions by the first continuous thread to two opposite distal ends of the shoe, including both a rear distal end a front distal end, in order to fully couple the upper and the sole from a front toe end to a rear heel end, thereby preventing separation of the upper and the sole as well as providing sufficient traction for the entire shoe sole when the shoe is in use (La O'; para. 0068).
Regarding claim 4, La O' and Elder, in combination, disclose the method of claim 1, and La O' further discloses wherein each channel of the plurality of channels extends laterally along the sole surface of the sole structure from lateral side of the article of footwear to a medial side of the article of footwear (across the sole surface; see fig. 8; para. 0068).
Regarding claim 5, La O' and Elder, in combination, disclose the method of claim 1. La O', in the first embodiment, does not disclose wherein the first direction is substantially perpendicular with respect to the second direction. However, La O' does disclose that the threads used to wind the shoe upper may be in different orientations so as to allow for a broad range of structural and aesthetic options for use in the resulting fabric (para. 0055). Further, La O', in a second embodiment, teaches a method of winding a thread to a shoe upper comprising winding a continuous thread (fiber 205; fig. 5; para. 0061) around the upper in a first direction (in a direction of sole 20 substantially perpendicular to a longitudinal axis 215; fig. 5; para. 0061) in the midfoot region and the forefoot region (region 220 in the forefoot and midfoot portions; fig. 5; para. 0061), and winding the continuous thread around the upper in a second direction (in a direction substantially perpendicular to the longitudinal axis 215; fig. 5; para. 0061) in the heel region (fig. 5; para. 0061), wherein the first direction is different than the second direction (fig. 5; para. 0061). Therefore, 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 method as disclosed by La O' in the first embodiment, with winding the first continuous thread around the sole structure and the upper in a second direction in the heel region, wherein the first direction is substantially perpendicular with the second direction as taught by La O' in the second embodiment, in order to provide a shoe upper with tailored support, stretch, stiffness, stability as well as desired aesthetics (La O'; para. 0055).
Regarding claim 6, La O' and Elder, in combination, disclose the method of claim 1, and La O' further discloses the method further comprising providing a thread supply system (a fiber delivery system; para. 0006; claim 1), wherein the thread supply system is configured to provide the first continuous thread (para. 0006; claim 1).
Regarding claim 8, La O' and Elder, in combination, disclose the method of claim 1. La O', in the first embodiment, does not disclose the method further comprising: winding a second continuous thread around a support structure to define a formed shape; curing the first continuous thread so that the first continuous thread firmly holds the formed shape; and removing the second continuous thread from the support structure in the formed shape to define the upper. However, La O', does disclose that threads are wound over a support structure (a last; para. 0069) to define a formed shape (to form the upper, which is a formed shape; para. 0069); a first layer may be formed by a first wound thread (a first fiber 305; paras. 0051, 0068, 0081-0082), a second layer may be formed by a second wound thread (a second fiber 305; paras. 0051, 0068, 0081-0082), the two layers are laid over each other (paras. 0059, 0081-0082), the first wound thread is cured so that the first continuous thread firmly holds the formed shape (the outer layer 525 of the first fiber 305 is a heat-fusible material, and adjacent wound portions of fiber 305 are thermally bonded together so as to firmly hold the formed shape; fig. 13B; para. 0073), and the second continuous thread is finally removed from the support structure in the formed shape to define the upper (the shoe upper, including the second fiber 305, is removed from the last in the formed shape after the shoe upper is finished; paras. 0061, 0095). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the method as disclosed by La O', with the method further comprising: winding a second continuous thread around a support structure over the first continuous thread to define a two-layer formed shape; curing the first continuous thread so that the first continuous thread firmly holds the formed shape; and removing the second continuous thread from the support structure in the formed shape to define the upper, in order to provide desired structural and aesthetic benefits, such as supporting the stretch and stability of the shoe in multiple directions as well as enhanced aesthetic appeal (La O'; paras. 0055, 0059, 0082).
Regarding claim 9, La O' discloses a method of manufacturing an article of footwear defining a forefoot region, a midfoot region, and a heel region (a method of forming a shoe 10; figs. 1, 8; paras. 0048, 0068; claim 1), the method comprising:
providing a sole structure (sole 20; figs. 1, 8; paras. 0048, 0068) and an upper (an upper base material 300; figs. 1, 8; paras. 0048, 0068);
coupling the sole structure to the upper at least in part (fig. 8; para. 0068) by:
winding a first continuous thread (a first fiber 305; fig. 8; para. 0068) around the sole structure and the upper in a first direction (see annotated fig. 8; para. 0068) in the midfoot region and the forefoot region (see annotated fig. 8; para. 0068), and
winding the first continuous thread around the sole structure and the upper in a second direction (see annotated fig. 8) in the heel region (see annotated fig. 8) that is different than the first direction (see annotated fig. 8); and
receiving the first continuous thread within a first channel of a plurality of channels (a first guide channel of a plurality of guide channels 310; see annotated fig. 8; para. 0068) that are defined by a sole surface of the sole structure (fig. 8; para. 0068),
wherein the first channel is disposed within the heel region (the first channel 310 is within the heel region; see annotated fig. 8; para. 0068) and points in a direction upward (the second direction; see annotated fig. 8).
La O' does not explicitly disclose the method comprising providing a reinforcement component along each channel within the plurality of channels; and hardening the reinforcement component to fixedly retain the first continuous thread within the first channel of the plurality of channels. However, Elder, in the context of describing an article of footwear, teaches a method of manufacturing the article of footwear (figs. 1, 3; para. 0017) comprising coupling a sole structure (sole structure 20; figs. 1, 3; para. 0017) to an upper (upper 30; figs. 1, 3; para. 0017) at least in part by winding a first continuous thread (strand 60; figs. 1, 3; para. 0040) around the sole structure and the upper (figs. 1, 3; para. 0040), receiving the first continuous thread within a channel of a plurality of channels (tunnels 43; figs. 1, 3; para. 0041) that are defined by a sole surface of the sole structure (figs. 1, 3; para. 0041), providing a reinforcement component (providing an adhesive to bond strand 60 to the sole structure 20; fig. 3; paras. 0023, 0034, 0045) along each channel within the plurality of channels (by bonding midportion 70 of strand 60 to a strand securement member 24 of the sole structure 20 in the tunnels 43; fig. 3; paras. 0023, 0034, 0040-0041, 0045); and hardening the reinforcement component to fixedly retain the first continuous thread within the first channel of the plurality of channels (when the adhesive is dried; fig. 3; para. 0045). Therefore, 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 method as disclosed by La O', with the method comprising providing a reinforcement component along each channel within the plurality of channels; and hardening the reinforcement component to fixedly retain the first continuous thread within the first channel of the plurality of channels as taught by Elder, in order to use an easy approach to prevent the first continuous thread from moving out of the channels during long term use.
La O' does not explicitly disclose wherein winding the first continuous thread in the second direction includes winding the first continuous thread around a distal end of the article of footwear in the heel region. However, La O', does teach that the method may include winding the first continuous thread extending in different regions in any region or regions of the article of footwear (the method can include one or more layers of bands extending in different regions in any region, or regions, of the shoe 10. paras. 0059, 0082). In addition, one of ordinary skill of the art would recognize that, the upper and the sole of the shoe 10 in the first embodiment of in La O' should be fully coupled from a front toe end to a rear heel end so as to avoid separation of the upper and the sole in a toe region and in a heel region in order to function properly when a user wearing the shoe is walking or running or performing other activities. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have configured the winding regions as disclosed by La O' in the first embodiment, by extending the coupled regions by the first continuous thread to two opposite distal ends of the shoe, including both a rear distal end a front distal end, in order to fully couple the upper and the sole from a front toe end to a rear heel end, thereby preventing separation of the upper and the sole as well as providing sufficient traction for the entire shoe sole when the shoe is in use (La O'; para. 0068).
Regarding claim 10, La O' and Elder, in combination, disclose the method of claim 9, and La O' further discloses wherein each channel of the plurality of channels extends laterally along the sole surface of the sole structure from a medial side of the article of footwear to a lateral side of the article of footwear (across the sole surface in a transverse direction of the sole structure; see annotated fig. 8).
Regarding claim 14, La O' and Elder, in combination, disclose the method of claim 9, except for wherein the reinforcement component comprises a layer of polymeric resin. However, it has been a common practice to use polymeric resin as adhesive in the footwear art and in daily life. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected the adhesive to be a layer of a polymeric resin, in order to use a commonly-used adhesive to bond the first continuous thread in the channels. Such a configuration would be considered as a mere choice of preferred material that is on the basis of its suitability for the intended use. 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 as a matter of obvious design choice. See MPEP 2144.07.
Regarding claim 15, La O' discloses a method of manufacturing an article of footwear defining a forefoot region, a midfoot region, and a heel region (a method of forming a shoe 10; figs. 1, 8; paras. 0048, 0068; claim 1), the method comprising:
providing a sole structure (sole 20; figs. 1, 8; paras. 0048, 0068) and an upper (an upper base material 300; figs. 1, 8; paras. 0048, 0068); and
coupling the sole structure to the upper at least in part (fig. 8; para. 0068) by:
winding a first continuous thread around the sole structure and the upper in a first direction in the midfoot region and the forefoot region (a first fiber 305; fig. 8; para. 0068) around the sole structure and the upper in a first direction (see annotated fig. 8; para. 0068) in the midfoot region and the forefoot region (see annotated fig. 8; para. 0068); and
receiving the first continuous thread within a plurality of channels (a plurality of guide channels 310; fig. 8; para. 0068) that are defined by a sole surface of the sole structure (fig. 8; para. 0068).
La O' does not disclose winding a second continuous thread around the sole structure and the upper in a second direction in the heel region that is different than the first direction, wherein the second continuous thread overlaps the first continuous thread at least partially along the sole structure on a lateral side of the article of footwear. However, La O' does disclose that two layers of wound threads can be laid over each other to form a wound thread construction having threads running in a plurality of directions (paras. 0059, 0081-0082), the two layers can extend in different regions in any region, or regions of the article of footwear (para. 0059), the two layers can extend at any angle to each other, depending upon the specific structural requirements of the finished material (paras. 0081-0082), and the wound threads may be in different orientations so as to allow for a broad range of structural and aesthetic options for use in the resulting fabric (paras. 0055, 0081-0082). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the method as disclosed by La O', by further winding a second continuous thread around the sole structure and the upper in a second direction in the heel region that is different than the first direction, wherein the second continuous thread overlaps the first continuous thread at least partially along the sole structure on a lateral side of the article of footwear thereby forming two-layer structure, in order to providing additional support to the stretch and stability of the shoe in multiple directions as well as desired aesthetic appeal (La O'; paras. 0055, 0059, 0082).
La O' does not explicitly disclose the method comprising providing a reinforcement component along each channel within the plurality of channels; and hardening the reinforcement component to fixedly retain the first continuous thread within each channel of the plurality of channels. However, Elder, in the context of describing an article of footwear, teaches a method of manufacturing the article of footwear (figs. 1, 3; para. 0017) comprising coupling a sole structure (sole structure 20; figs. 1, 3; para. 0017) to an upper (upper 30; figs. 1, 3; para. 0017) at least in part by winding a first continuous thread (strand 60; figs. 1, 3; para. 0040) around the sole structure and the upper (figs. 1, 3; para. 0040), receiving the first continuous thread within a plurality of channels (tunnels 43; figs. 1, 3; para. 0041) that are defined by a sole surface of the sole structure (figs. 1, 3; para. 0041), providing a reinforcement component (providing an adhesive to bond strand 60 to the sole structure 20; fig. 3; paras. 0023, 0034, 0045) along each channel within the plurality of channels (by bonding midportion 70 of strand 60 to a strand securement member 24 of the sole structure 20 in the tunnels 43; fig. 3; paras. 0023, 0034, 0040-0041, 0045); and hardening the reinforcement component to fixedly retain the first continuous thread within the channel of the plurality of channels (when the adhesive is dried; fig. 3; para. 0045). Therefore, 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 method as disclosed by La O', with the method comprising providing a reinforcement component along each channel within the plurality of channels; and hardening the reinforcement component to fixedly retain the first continuous thread within each channel of the plurality of channels as taught by Elder, in order to use an easy approach to prevent the first continuous thread from moving out of the channels during long term use.
Regarding claim 16, La O' and Elder, in combination, disclose the method of claim 15, except for wherein the first direction is substantially perpendicular to the second direction. However, as discussed for claim 15, La O' discloses that the winding directions of the first and second continuous threads can extend at any angle to each other. Further, La O' discloses that a first layer including a first set of wound fiber portions extending in a first direction, and a second layer including a second set of wound fiber portions extending in a second direction, wherein the second direction is perpendicular to the first direction (fig. 20A; para. 0081). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have configured the winding directions of the first and second continuous threads in the two layers, with wherein the first direction is substantially perpendicular to the second direction, in order to provide desired structural and aesthetic benefits, such as improved durability and enhanced aesthetic appeal (La O'; paras. 0055, 0082).
Regarding claim 17, La O' and Elder, in combination, disclose the method of claim 15, and La O' further discloses wherein the first continuous thread covers at least a portion of each of the forefoot region, the midfoot region, and the heel region (see fig. 8).
Regarding claim 18, La O' and Elder, in combination, disclose the method of claim 15, except for wherein the second continuous thread covers at least a portion of each of the midfoot region and the heel region. However, La O', in a third embodiment (fig. 3F; para. 0059), teaches wherein a second continuous thread (a wound thread forming bands 117 and 130; fig. 3F; para. 0059) overlaps a first continuous thread (over a wound thread forming layer 15; figs. 3F, 25D; para. 0093), and the second continuous thread covers at least a portion of each of the midfoot region and the heel region (fig. 3F; para. 0059). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have configured the second continuous thread, with wherein the second continuous thread covers at least a portion of each of the midfoot region and the heel region as taught by La O', in order to support the stretch and stability of the shoe in multiple directions in those regions as well as enhance the aesthetic appeal (La O'; paras. 0055, 0059, 0082)
Response to Arguments
Applicant's arguments filed 11/13/2025 have been fully considered but they are not persuasive.
Applicant's remarks: Applicant asserts that Elder fails to teach providing a reinforcement component along each channel within a plurality of channels because: Elder teaches that a middle portion 70 of an underfoot strand 60 is received in one or more tunnels 43 defined by a sole structure 20 as illustrated in FIG. 3 of Elder, but Elder does not specify where the adhesives are located on the footwear 10 to bond the middle portion 70 to the strand securement member 24.
Examiner's response: Examiner respectfully disagrees. As the middle portions 70 are received in the tunnels 43 and the strand securement member 24 forming bottom portions of the tunnels 43 (see figs. 3, 5), the adhesives must exist at the bottom portions of the tunnels in order to bond the middle portions 70 to the strand securement member 24. It is noted that Applicant was not able to provide any location other than the tunnels 43 where the adhesives can be located. Therefore, Applicant's arguments are not found persuasive.
Applicant's remarks: Applicant asserts that, even if Elder did teach providing an adhesive along each of the tunnels, Elder is silent toward hardening the adhesive to fixedly retain the middle portion of the underfoot strand within any of the tunnels; instead, Elder teaches a tensioning system having one or more strands 40, 50, 60, 74, 84 that are "interconnected together" to tighten the footwear to the foot.
Examiner's response: Examiner respectfully disagrees. First, the tensioning system of Elder including a shoe lace is configured to tighten the footwear when in use, which does not indicate that the middle portions 70 of the underfoot strand 60 are not fixedly retained within the tunnels 43 in the sole structure 20 by the adhesives because tightening the footwear around a foot does not require the middle portions 70 to be movable under the sole structure. Second, Elder clearly teaches that the adhesives are used to bond the middle portions 70 to the strand securement member 24. Per the Merriam-Webster Dictionary, the term "bond" is defined as "to cause to adhere firmly". Therefore, the adhesives are able to bond, i.e., "fixedly retain", the middle portion of the underfoot strand within the tunnels. As a matter of fact in everyday life, an adhesive is applied in a wet form and then left dry to fixedly attach two objects together. Therefore, Applicant's arguments are not found persuasive.
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 AIYING ZHAO whose telephone number is (571)272-3326. The examiner can normally be reached on 8:30 am - 4:30 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KHOA HUYNH can be reached on (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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/AIYING ZHAO/
Primary Examiner, Art Unit 3732