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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/20/2026 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-10, 12,14,15, 16, 18-26, 28, 29, 30-33, 35 and 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fallon et al. (U.S. Patent No. 6449879) in view of Dua et al. (U.S. 20050193592) and Wired (Wired Staff, How to: Lace Your Shoes, 11/27/2007).
Regarding claims 1 & 32, Fallon teaches an article of footwear (fig. 2), the article of footwear comprising: an upper (114, not including 140) having a forefoot region, a midfoot region, a heel region (forefoot, midfoot and heel regions of fig. 2), a first side (see annotated fig.), a second side (see annotated fig.) and an instep area extending between the first side and the second side (see annotated fig.), a plurality of outer lace apertures (132) disposed at a first location along the instep area on at least the first side of the upper (see annotated fig.); a plurality of inner lace apertures (134) disposed at a second location along the instep area on at least the first side of the upper (see annotated fig.), wherein the second location is located more inward toward a middle of the upper than the first location (figs. 2,3); wherein the first location and the second location are offset from a longitudinal centerline of the upper (figs. 2 & 3); a lace (130) that extends into an inner lace aperture (A, see annotated fig.) of the plurality of inner lace apertures (134) on the first side of the upper from an exterior surface of the upper (130 extends into A from the exterior of the upper, fig. 2), extends along an interior surface of the upper (indicated by dashed lines), and then exits out of the upper through an outer lace aperture (B, see annotated fig.) of the plurality of outer lace apertures on the first side of the upper (fig. 2), wherein after exiting the upper through the outer lace aperture on the first side of the upper, the lace extends across the instep area, and a sole structure (112,124) secured to the upper (fig. 2).
Fallon does not specifically disclose wherein after exiting the upper through the outer lace aperture on the first side of the upper, the lace extends across the instep area on the outer-most surface of the upper and then extends into a lace aperture on the second side of the upper, wherein, as the lace extends across the instep area and into the lace aperture, the lace remains above the outer-most surface of the upper.
However, Wired teaches lacing a shoe such that after exiting the upper through the outer lace aperture on the first side of the upper, the lace extends across the instep area on the outer-most surface of the upper and then extends into a lace aperture on the second side of the upper, wherein, as the lace extends across the instep area and into the lace aperture, the lace remains above the outer-most surface of the upper (fig. 1 and description of 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have the laced article of Fallon to include lacing as taught by Wired, in order to alleviate pressure points to provide more breathing room.
Fallon does not disclose teach the upper comprising a knitted component extending in the instep area. However, Dua teaches a shoe upper (30,40) formed by knitting (para. 45), wherein the knitted shoe upper includes an instep area (33, para. 36, figs. 1-3).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have made the upper of Fallon by knitting such that a knitted component extends in the instep area in view of Dua in order to incorporate various physical or aesthetic properties into the upper and/or to provide increased airflow and/or to streamline manufacturing (paras. 12, 60 of Dua).
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Regarding claim 2, Fallon further teaches the upper includes a reinforcing element (142) to reinforce at least some outer lace apertures (col. 8, lines 54-58).
Regarding claim 3, the Fallon/Dua combined reference further teaches the reinforcing element (142) is inlaid within the knitted component (142 extends into the knitted component, col. 8, lines 54-58 of Fallon, fig. 2, and is therefore considered to be inlaid within the knitted component in as much as is claimed).
Regarding claim 4, the Fallon/Dua combined reference doesn’t specifically teach the knitted component includes a first area formed from a first type of yarn having a first set of properties and a second area formed from a second type of yarn having a second set of properties different from the first set of properties.
Dua further teaches a knitted upper (40,40’,40”) wherein different areas can be formed of different stitch types and yarns (paras. 53-56).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have formed the knitted component/upper of the Fallon/Dua combined reference so as to include a first area formed from a first type of yarn having a first set of properties and a second area formed from a second type of yarn having a second set of properties different from the first set of properties in view of Dua in order to impart various properties to the knitted component (paras. 53-56,60).
Regarding claim 5, the Fallon/Dua combined reference teaches the instep area shares at least one course in common with the first side and the second side (para. 60 of Dua).
Regarding claim 6, the Fallon/Dua combined reference doesn’t specifically teach the knitted component forms an ankle cuff that extends from the instep area and entirely around an ankle opening of the upper.
Dua further teaches a knitted component (30,40) (paras. 37, 43-45) forms an ankle cuff (see annotated fig.)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have formed the knitted component of the Fallon/Dua combined reference with an ankle cuff in view of Dua in order to form a finished edge around the ankle opening.
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Regarding claim 7, the Fallon/Dua combined reference teaches the instep area extends the ankle opening and the forefoot region (see annotated fig. 3 of Fallon).
Regarding claim 8, the Fallon/Dua combined reference teaches the instep area (see annotated fig.) extends continuously between the inner lace aperture of the plurality of inner lace apertures on the first side of the upper and the lace aperture of the second side (the instep area is between the apertures as claimed and extends continuously, see annotated fig. 3).
Regarding claim 9, the Fallon/Dua combined reference teaches the knitted component in the instep area comprises a stretch knit structure (knit has stretch to at least some degree by way of interloping yarns, see also paras. 51, 55 of Dua) of a unitary knit construction.
Regarding claim 10 & 33, the Fallon/Dua combined reference teaches a surface thought which the plurality of outer lace apertures extends on the first side of the upper is continuous with a surface through which the lace aperture extends on the second side of the upper (fig. 2).
Regarding claim 12, Fallon further teaches the first side (see annotated fig.) is a medial side of the upper and the second side (see annotated fig.) is a lateral side of the upper (Col. 5, lines 53-55).
Regarding claim 14, the Fallon/Dua combined reference teaches the knitted component is flat knitted (para. 56 of Dua).
Regarding claim 15, Fallon further teaches the sole structure (112,124) comprises a plurality of ground-engaging cleat members (124).
Regarding claim 16, the Fallon/Dua combined reference teaches the upper comprises a first knit layer (120) forming at least part of the outer-most surface of the upper (figs. 2-4 of Fallon) and a second knit layer (140) forming at least part of the interior surface of the upper (col. 8, lines 29-43 of Fallon) (layers are knit as modified by Dua per claim 1). Note: The upper is reinterpreted for claim 16 such that upper further includes 140 and therefore the knitted component includes 140.
Regarding claim 18, the Fallon/Dua combined reference teaches the plurality of inner lace apertures extend through the knitted component (knitted component forms the upper per claim 1 and therefore the lace apertures extend through the knitted component, figs. 2,4 of Fallon).
Regarding claim 19, the Fallon/Dua combined reference doesn’t specifically teach the plurality of inner lace apertures are formed into the knitted component by knitting.
Dua further teaches lace apertures formed in a shoe upper by knitting (para. 57).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have formed the lace apertures of the combined reference including the plurality of inner lace apertures into the knitted component by knitting in view of Dua in order to provide ease of manufacturing.
Regarding claim 20, the Fallon/Dua combined reference teaches the plurality of inner lace apertures and at least some of the plurality of outer lace apertures extend through the knitted component (knitted component forms the upper per claim 1 and therefore the lace apertures extend through the knitted component, figs. 2,4 of Fallon).
Regarding claim 21, the Fallon/Dua combined reference teaches the knitted component has a unitary knit construction (para. 60 of Dua)
Regarding claim 22, Fallon further teaches the plurality of outer lace apertures are offset from the plurality of inner lace apertures along the instep area in a longitudinal direction (figs. 2,3).
Regarding claim 23, Fallon further teaches the plurality of outer lace apertures and the plurality of inner lace apertures form pairs (see circled pairs in annotated fig.), each pair comprising one outer lace aperture and one inner lace aperture (see circled pairs in annotated fig.), wherein an inner lace aperture (E, see annotated fig.) is closer to an outer lace aperture (F, see annotated fig.)within the same pair than to an outer lace aperture (G, see annotated fig.) of a different pair.
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Regarding claim 24, the Fallon/Dua combined reference teaches the knitted component forms substantially all of the upper (114, not including 140) (upper is formed by knitting per claim 1 and therefore the knitted component forms substantially all of the upper).
Regarding claim 25, Fallon further teaches the sole structure comprises a midsole (col. 4, lines 64-65), however the combined reference fails to teach the midsole comprises a polymer foam material.
Dua teaches a midsole comprising polymer foam material (para. 34).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have formed the midsole of the combined reference our of polymer foam material in view of Dua in order to attenuate ground reaction forces and absorbs energy (i.e., provides cushioning) (para. 34 of Dua).
Regarding claim 26, Fallon further teaches the upper comprises a heel counter (116) in the heel region (col. 5, lines 52-53).
Regarding claim 28, the Fallon/Dua combined reference teaches upper comprises a visual boundary demarcating at least a portion of the instep area and at least a portion of the ankle cuff from the first side of the upper and from the second side of the upper (fig. 3, para. 56 of Dua).
Regarding claim 29, the Fallon/Dua combined reference fails to teach the knitted component extends through an underfoot region of the upper.
Dua teaches a knitted component (40) that extends through an underfoot region of the upper (via 34, figs. 5,6,8).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have formed the knitting component of the Fallon/Dua combined reference so as to extend through an underfoot region of the upper in view of Dua because doing so provides a surface for secure attachment to the sole and provides increased cushioning under the wearer’s foot.
Regarding claim 30, the Fallon/Dua combined reference fails to teach the knitted component comprises an ankle cuff joined through knitting to the instep area of the upper.
Dua further teaches a knitted component (30,40) (paras. 37, 43-45) forms an ankle cuff (see annotated fig.) joined through knitting to the instep area of the upper (para. 60 of Dua).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have formed the knitted component of the Fallon/Dua combined reference with an ankle cuff joined through knitting to the instep area of the upper in view of Dua in order to form a finished edge around the ankle opening.
Regarding Claim 31, the Fallon/Dua combined references teach the upper comprises a plurality of voids in the outer-most surface of the upper (Dua, paras. 10, 60, 61, knit structures have voids in the surface due to the construction of the fabric creates loops with voids between).
Regarding claim 35, the Fallon/Dua combined references teach the ankle cuff comprises a plurality of voids (Dua, paras. 10, 60, 61, knit structures have voids in the surface due to the construction of the fabric creates loops with voids between). The Fallon/Dua combined reference fails to teach the knitted component comprises an ankle cuff joined through knitting to the instep area of the upper.
Dua further teaches a knitted component (30,40) (paras. 37, 43-45) forms an ankle cuff (see annotated fig.) joined through knitting to the instep area of the upper (para. 60 of Dua).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have formed the knitted component of the Fallon/Dua combined reference with an ankle cuff joined through knitting to the instep area of the upper in view of Dua in order to form a finished edge around the ankle opening.
Regarding claim 36, the Fallon/Dua combined reference teaches upper comprises a visual boundary demarcating at least a portion of the instep area and at least a portion of the ankle cuff from the first side of the upper and from the second side of the upper (fig. 3, para. 56 of Dua).
Claim(s) 11, 27 and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fallon et al. (U.S. Patent No. 6449879) in view of Dua et al. (U.S. 20050193592) and Wired (Wired Staff, How to: Lace Your Shoes, 11/27/2007) and further in view of Dua (U.S. 20100154256).
Regarding claims 11 & 34, the Fallon/Dua combined reference fails to teach the knitted component/upper includes a polymer layer at one or more areas of the knitted component/upper.
Dua ‘256 teaches a knitted component (40) (para. 37) forming a shoe upper (fig. 1) wherein the knitted component includes a polymer layer at one or more areas of the knitted component (para. 43).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have included a polymer layer at one or more areas of the knitted component of the combined reference in view of Dua ‘256 in order to increase stiffness and/or wear resistance at desired locations (para. 43 of Dua ‘256).
Regarding claim 27, the Fallon/Dua combined reference fails to teach the upper comprises a toe guard in the forefoot region.
Dua ‘256 further teaches the upper comprises a toe guard in the forefoot region (47 at toe, para. 43, fig. 7C).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have comprised the upper of the combined reference of a toe guard in the forefoot region in view of Dua in order to provide increased protection to the wearer’s toes.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fallon et al. (U.S. Patent No. 6449879) in view of Dua et al. (U.S. 20050193592) and Wired (Wired Staff, How to: Lace Your Shoes, 11/27/2007) and further in view of Kilgore et al. (U.S. Patent No. 7543397).
Regarding claim 17, the Fallon/Dua combined reference teaches the first knit layer (120) comprises a plurality of voids ( 132 not included in the lace apertures of claim 1), but doesn’t specifically teach that with the shoe laced, the plurality of voids expose portions of the second knit layer.
Kilgore teaches a shoe upper (fig. 1) that when laced, provides voids between the lace and the edge of the lace apertures (109) (col. 4, lines 12-14) so as to expose a layer underneath (fig. 1).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have formed apertures 132,134, and 136 of the combined reference so as to be larger than the lace thereby provides voids between the lace and the edge of the lace apertures in view of Kilgore in order to accommodate laces of various widths. The combined reference would result in the plurality of voids ( 132 not included in the lace apertures of claim 1) exposing portions of the second knit layer (liner 140, fig. 4).
Claims 1 and 13, 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson (U.S. Patent No. 4438574) in view of Greene (U.S. 20120233884) in view of Wired (Wired Staff, How to: Lace Your Shoes, 11/27/2007).
Regarding claims 1, 13 and 37, Johnson teaches an article of footwear (10), the article of footwear comprising: an upper (12) having a forefoot region, a midfoot region, a heel region, a first side, a second side, and an instep area extending between the first side and the second side (figs. 1,2); a plurality of outer lace apertures disposed at a first location along the instep area on at least the first side of the upper (outer lace apertures extending through 36 on first side, see annotated fig.) ; a plurality of inner lace apertures disposed at a second location along the instep area on at least the first side of the upper (inner lace apertures extending through 36 on first side, see annotated fig.), wherein the second location is located more inward toward a middle of the upper than the first location (fig. 4); and a sole structure (14) secured to the upper (fig. 1), a plurality of outer lace apertures disposed at a first location along the instep area on the second side of the upper (outer lace apertures extending through 36 on second side, see annotated fig.); and a plurality of inner lace apertures disposed at a second location along the instep area on the second side of the upper (inner lace apertures extending through 36 on second side, see annotated fig.), wherein the second location is located more inward toward the middle of the upper than the first location (fig. 4); but fails to teach the upper comprising a knitted component extending in the instep area, a lace that extends through an inner lace aperture of the plurality of inner lace apertures on the first side of the upper from an exterior surface of the upper, extends along an interior surface of the upper, and then exits the upper through an outer lace aperture of the plurality of outer lace apertures on the first side of the upper, wherein after exiting the upper through the outer lace aperture on the first side of the upper, the lace extends across the instep area along the exterior surface of the upper and extends through a lace aperture on the second side of the upper; wherein the lace aperture on the second side through which the lace extends after exiting the upper through the outer lace aperture on the first side is an inner lace aperture of the plurality of lace apertures at the second location.
Greene teaches footwear (fig. 1) comprising a knitted footwear tongue (40, para. 54) in the instep area (fig. 1).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have formed the upper of Johnson so as to include a knitted tongue in the instep area in view of Greene in order to decrease waste, increase manufacturing efficiency and recyclability and enhance comfort in comparison to a conventional tongue with multiple joined material elements (para. 54 of Greene).
The Johnson/Greene combined reference fails to teach a lace that extends through an inner lace aperture of the plurality of inner lace apertures on the first side of the upper from an exterior surface of the upper, extends along an interior surface of the upper, and then exits the upper through an outer lace aperture of the plurality of outer lace apertures on the first side of the upper, wherein after exiting the upper through the outer lace aperture on the first side of the upper, the lace extends across the instep area along the exterior surface of the upper and extends through a lace aperture on the second side of the upper; wherein the lace aperture on the second side through which the lace extends after exiting the upper through the outer lace aperture on the first side is an inner lace aperture of the plurality of lace apertures at the second location.
Wired teaches lacing a shoe such that the lace extends into a lace aperture on a first side of the upper from an outer-most surface of the upper, extends along an interior surface of the upper, and then exits out of the upper through a lace aperture on the first side of the upper, wherein after exiting the upper through the outer lace aperture on the first side of the upper, the lace extends across the instep area on the outer-most surface of the upper and then extends through a lace aperture on the second side of the upper, wherein, as the lace extends across the instep area and into the lace aperture, the lace remains about the outer-most surface the upper (fig. 1 and description of 1).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have laced the article of footwear of the Johnson/Greene combined reference as taught by Wired fig. 1 in order to alleviate pressure points to provide more breathing room (description of 1 of Wired).
Lacing the Johnson/Greene combined reference as taught by Wired results in a lace that extends into an inner lace aperture (A1, see annotated fig.) of the plurality of inner lace apertures on the first side of the upper from an outer-most surface of the upper, extends along an interior surface of the upper, and then exits out of the upper through an outer lace aperture (A2, see annotated fig.) of the plurality of outer lace apertures on the first side of the upper, wherein after exiting the upper through the outer lace aperture on the first side of the upper, the lace extends across the instep area on the outer-most surface of the upper and then extends into a lace aperture (A3, see annotated fig.) on the second side of the upper; wherein the lace aperture on the second side through which the lace extends after exiting the upper through the outer lace aperture on the first side is an inner lace aperture of the plurality of lace apertures at the second location (fig. 4). The examiner notes that dashed lines indicating the lace in the annotated fig. are under the surface of the upper and solid lines indicating the lace are over the top surface of the upper.
Claims 38 & 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson (U.S. Patent No. 4438574) in view of Dua (USPN 6,910,288) in view of Wired (Wired Staff, How to: Lace Your Shoes, 11/27/2007).
Regarding claims 38, Johnson teaches an article of footwear (10), the article of footwear comprising: an upper (12) having a forefoot region, a midfoot region, a heel region, a first side, a second side, and an instep area extending between the first side and the second side (figs. 1,2); a plurality of outer lace apertures disposed at a first location along the instep area on at least the first side of the upper (outer lace apertures extending through 36 on first side, see annotated fig.) ; a plurality of inner lace apertures disposed at a second location along the instep area on at least the first side of the upper (inner lace apertures extending through 36 on first side, see annotated fig.), wherein the plurality of outer lace apertures and plurality of inner lace apertures are offset from each other in a lateral direction (fig. 2), such that the plurality of outer lace apertures are spaced farther from a longitudinally-extending midline of the upper than the plurality of inner lace apertures (fig. 2); and a sole structure (14) secured to the upper (fig. 1), a plurality of outer lace apertures disposed at a first location along the instep area on the second side of the upper (outer lace apertures extending through 36 on second side, see annotated fig.); and a plurality of inner lace apertures disposed at a second location along the instep area on the second side of the upper (inner lace apertures extending through 36 on second side, see annotated fig.), wherein the second location is located more inward toward the middle of the upper than the first location (fig. 2); but fails to teach the upper comprising a knitted component integrally extends across the instep area, a lace that extends through an inner lace aperture of the plurality of outer lace apertures on the first side of the upper, extends under and along an interior surface of the upper, and then exits the upper through an inner lace aperture of the plurality of inner lace apertures on the first side of the upper and then extends over and across the instep area, and then enters an outer lace aperture of the plurality of outer lace apertures on the second side of the upper, and then extends under and along the interior surface of the upper, and then exits out of an inner lace aperture of the plurality of inner lace apertures on the second side of the upper, wherein, as the lace extends over and across the instep area, the lace extends diagonally toward the forefoot region; and a sole structure secured to the upper.
Dua teaches footwear (fig. 6A) comprising a knitted component (Col. 9, lines 1-25 & Col. 10, line 66- Col. 11, line 12) integrally extends across the instep area including lace apertures (Figure 6A).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have formed the upper of Johnson so as to include a knitted component integrally extends across the instep in view of Dua in order to increase stretch-resistance, stability and support.
The Johnson/Greene combined reference fails to teach a lace that extends through an inner lace aperture of the plurality of outer lace apertures on the first side of the upper, extends under and along an interior surface of the upper, and then exits the upper through an inner lace aperture of the plurality of inner lace apertures on the first side of the upper and then extends over and across the instep area, and then enters an outer lace aperture of the plurality of outer lace apertures on the second side of the upper, and then extends under and along the interior surface of the upper, and then exits out of an inner lace aperture of the plurality of inner lace apertures on the second side of the upper, wherein, as the lace extends over and across the instep area, the lace extends diagonally toward the forefoot region; and a sole structure secured to the upper.
Wired teaches lacing a shoe such that the lace extends into a lace aperture on a first side of the upper, extends under and along an interior surface of the upper, and then exits out of the upper and then extends over and across the instep area, and then enters an outer lace aperture of the plurality of outer lace apertures on the second side of the upper, and then extends under and along the interior surface of the upper, and then exits out of an inner lace aperture of the plurality of inner lace apertures on the second side of the upper, wherein, as the lace extends over and across the instep area, the lace extends diagonally toward the forefoot region; and a sole structure secured to the upper. (fig. 1 and description of 1).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have laced the article of footwear of the Johnson/Greene combined reference as taught by Wired fig. 1 in order to alleviate pressure points to provide more breathing room (description of 1 of Wired).
Regarding claim 39, the Johnson/Dua/Wired combined reference teaches as the lace extends over and across the instep area, the lace remains exposed on an outer surface of the instep area that is continuous between the inner lace aperture on the first side of the upper and the outer lace aperture on the second side of the upper (fig. 1 & 2, Wired, description of 1, fig. 1).
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Response to Amendment
Applicant's arguments filed 4/20/2026 have been fully considered but they are not persuasive.
Applicant Remarks: Applicant asserts the combination of Fallon and Wired destroy Fallon’s intended purpose of providing “an improved kicking surface”, described explicitly as being “added by” incorporating the “doubled or layered segment of lace between row 134 and the longitudinal edge 128”
Examiner respectfully disagrees. Currently, the claimed lacing does not require doubling or layering either. Thus, as presently claimed and rejected through modification; the combination does not have to layer or double with the currently claimed lacing for part of the shoe.
A prima facie case of obviousness is established by presenting evidence indicating that the reference teachings would appear to be sufficient for one of ordinary skill in the relevant art having those teachings before him to make the proposed combination or other modification. See In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972). It is noted that skill, not the converse, is presumed on the part of those practicing in the art (In re Sovish, 226 USPQ 771) and a conclusion of obviousness can be made from "common sense" of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference. (In re Bozek, 163 USPQ 545, 549 (CCPA 1969)).
Applicant Remarks: Applicant asserts Fallon fails to disclose, teach, or suggest the first location and the second location are offset from a longitudinal centerline.
Examiner respectfully disagrees. Currently, a longitudinal centerline is an arbitrary line since it has not been structurally defined. Technically, the first location and second location are offset from a longitudinal centerline. A centerline can be construed as slightly off from Fallon’s centerline.
Applicant Remarks: Applicant asserts Greene teaches away from the cited combination.
Examiner respectfully disagrees. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Furthermore, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Applicant' s arguments with respect to claims 38 & 39 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHARINE KANE whose telephone number is (571)272-3398. The examiner can normally be reached Mon-Fri 9am-6pm EST.
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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.
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/KATHARINE G KANE/Primary Examiner, Art Unit 3732
Prosecution Insights