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 .
This is in response to Applicant’s amendment in which claims 21, 25, 28, and 32 have been amended, and claims 21 and 23-38 remain pending.
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 21, 23-24, 27, and 37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 11,910,875. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent.
Claims 25-26 and 28-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 11,910,875 in view of Davis (WO 2010/055276).
The claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent, except for a second channel, and the first and second channel forming concentric arcs.
Davis teaches an upper for a sports shoe, the upper comprising: a plurality of areas comprising a medial area, a lateral area, and a toe area (Fig. 14, 15); a first plurality of protrusions (11) protruding from an outer surface of the upper and arranged in a first row; and a second plurality of protrusions (11) protruding from the outer surface of the upper and arranged in a second row, wherein the first row and the second row are spaced apart and form a first channel, wherein the first channel comprises an arc shape, and wherein the first and second plurality of protrusions are arranged in a front half of the upper. Davis discloses a third plurality of protrusions protruding from the outer surface and arranged in third row spaced apart from the second row to form a second channel. The second channel comprises an arc shape, and the first channel and second channel are concentric arcs (pages 17-18, Fig. 14-15).
It would have been obvious to one of ordinary skill in the art to provide protrusions such that they form channels in concentric arcs, as taught by Davis, in order to provide a specific ball control pattern to the upper, depending on the needs of the individual user.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 28-36 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pietravalle et al. (WO 2007/144331), herein Pietravalle.
Regarding claim 28, Pietravalle discloses an upper (2) for a sports shoe, the upper comprising: a plurality of areas comprising a medial area, a lateral area, and a toe area (Fig. 1, 2); a first plurality of protrusions (3, 4) protruding from an outer surface of the upper and arranged in a first row; and a second plurality of protrusions (3, 4) protruding from the outer surface of the upper and arranged in a second row, wherein the first row and the second row are spaced apart and form a first channel, wherein the first channel comprises an arc shape (Fig. 1), and wherein the first and second plurality of protrusions are arranged in a front half of the upper (Fig. 3), and wherein at least one protrusion of the first plurality of protrusions comprises a base, a peak and a concave rise extending from the base to the peak such that the base of the at least one protrusion is wider than the peak, and wherein the concave rise faces away from the outer surface (Fig. 4) (page 2; Fig. 1, 2, 4).
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Regarding claim 29, Pietravalle discloses a third plurality of protrusions protruding from the outer surface and arranged in a third row spaced apart from the second row to form a second channel (Fig. 1).
Regarding claim 30, Pietravalle discloses that the second channel comprises an arc shape (Fig. 1).
Regarding claim 31, Pietravalle discloses that the first channel and second channel are concentric (Fig. 1).
Regarding claim 32, Pietravalle discloses that the first channel extends from the medial area (medial side) to the toe area (top of toe portion; Fig. 2).
Regarding claim 33, Pietravalle discloses that each protrusion of the first plurality of protrusions comprises a quadrilateral-shaped base area (Fig. 1).
Regarding claim 34, Pietravalle discloses that a first protrusion of the first plurality of protrusions comprises a first side having a first length and a second side having a second length greater than the first length, and wherein the first protrusion is arranged in the medial area and comprises a first orientation such that the first side is faces the toe area (Fig. 1).
Regarding claim 35, Pietravalle discloses that the first protrusion of the plurality of protrusions comprises a peak (Fig. 4) at the first side.
Regarding claim 36, Pietravalle discloses a shoe comprising the upper of claim 28 (Fig. 1-3).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 21 and 23-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnston (US 6,523,282).
Regarding claim 21, Johnston discloses an upper (102) for a sports shoe, the upper comprising: a plurality of areas comprising a medial area, a lateral area, and a toe area (Fig. 1); and a first plurality of protrusions (110) protruding from an outer surface of the upper and extending along a first row towards the toe area, wherein each protrusion comprises a quadrilateral-shaped base, a first side having a first length and a second side having a second length greater than the first length (as seen in Fig. 1), wherein a first protrusion of the first plurality of protrusions has a first orientation such that the first side faces the toe area (Fig. 1), and wherein a second protrusion of the first plurality of protrusions disposed in the medial area has the first orientation (wherein the protrusions are spaced apart at their peaks and sides; Fig. 4), wherein the first protrusion comprises a first sloped side and a second sloped side adjacent the first sloped side, and wherein the first sloped side and the second sloped side meet at an edge extending from the quadrilateral-shaped base to a point peak, and wherein the second protrusion is immediately adjacent to the first protrusion (column 3, line 56-column 4, line 14; Fig. 1-2A).
Johnston teaches that the ball control region wraps around the outer surface of the upper below the fastening portion (column 4, lines 8-9), and that protrusions may be on a medial and lateral side of the upper (column 5, lines 4-6; Fig. 7, 9), but does not specifically disclose that the first protrusion is disposed in the medial area. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to locate the protrusions on the medial side of the upper, in order to provide improved kicking and handling the medial area of the foot of the user.
The embodiment of Fig. 1 does not disclose that the base of the second protrusion is spaced apart from the base of the first protrusion. However, the embodiment of Fig. 7 of Johnson teaches that a plurality of protrusions on an upper may be spaced apart from each other at the base (Fig. 7-9). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to space the protrusions of Fig. 1 apart at the base, as taught in Fig. 7-9, in order to provide a different level of ball control, spin, and/or power, depending on the needs of the individual user.
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Regarding claim 23, Johnston discloses a second plurality of protrusions arranged in a second row and having the first orientation, wherein the second row is spaced apart from the first row to form a first channel extending along the outer surface (Fig. 1).
Regarding claim 24, Johnston teaches that the first row and the second row are disposed in the medial area.
Regarding claim 25, Johnston discloses a third plurality of protrusions arranged in a third row and having the first orientation, wherein the third row is spaced apart from the second row to form a second channel (Fig. 1).
Regarding claim 26, Johnston discloses that the first channel and the second channel form concentric arcs (Fig. 1).
Regarding claim 27, Johnston discloses a shoe (100) comprising the upper of claim 21 (Fig. 1).
Allowable Subject Matter
Claim 38 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 37 is free of art rejections but is subject to a double patenting rejection.
Response to Arguments
Applicant’s arguments with respect to claim(s) 21 and 23-38 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
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 SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached at (571) 272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHARON M PRANGE/Primary Examiner, Art Unit 3732
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