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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 1, 2026 has been entered.
Withdrawn Rejections
Any rejections and or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn due to Applicant’s amendments and/or arguments in the response dated June 1, 2026. However, new rejections may have been made using the same prior art if still applicable to the newly presented amendments and/or arguments.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 4, 6 – 8, and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The phrase “the first surface of the footwear is disposed at a first angle respective to the footwear and the second surface of the footwear is disposed at a second angle respective to the footwear” in claims 1 and 16 is unclear, which renders the claims vague and indefinite. It is unclear from the above language and the specification where the angles are being measured from and what is trying to be claimed by these different angles.
Claims 4, and 6 – 8 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, due to their dependency on the above rejected claims.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4, and 6 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Eiger et al. (WO 2017/187437 A1).
Eiger et al. disclose a pressure sensitive decal configured to adhere to footwear (Figures; Abstract; Page 1, lines 10 – 11), comprising: a flexible three-dimensional material formed in a shape (Page 2, lines 1 – 12; Page 3, lines 1 – 3), wherein a rear surface of the material comprises a pressure sensitive adhesive configured to removably couple the material to one or more surfaces of the footwear (Figure 1B; Page 8, line 15 to Page 9, line 2) and a backing removably coupled to a rear surface of the material via the pressure sensitive adhesive (Figure 1B; Page 8, line 15 to Page 9, line 2), wherein the backing is configured to maintain adhesive characteristics of the pressure sensitive adhesive (Figure 1B; Page 8, line 15 to Page 9, line 2), wherein the material is configured to adhere and conform to a first surface and a second surface of the footwear, such that the material lies smoothly along the first surface and the second surface without deforming the shape of the decal (Figure 1B; Abstract; Page 8, line 15 to Page 9, line 2), wherein the first surface of the footwear is disposed at a first angle respective to the footwear and the second surface of the footwear is disposed at a second angle respective to the footwear (Figure 1B; Abstract; Page 8, line 15 to Page 9, line 2, wherein the adhesive allows the decal to adhere to a multitude of surfaces), wherein the material comprises suede (Page 2, lines 1 – 12) as in claim 1. Regarding claim 4, the first surface is disposed at a farther distance from the second surface of the footwear, such that elevations of the first surface and second surface are different (Figure 1B; Abstract; Page 8, line 15 to Page 9, line 2, wherein the adhesive allows the decal to adhere to a multitude of surfaces). In claim 6, the shape of the material is formed via laser cutting process (Page 2, lines 13 – 14).
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.
Claims 1, 4, 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Stephens (USPGPub 2010/0170112 A1) in view of Eiger et al. (WO 2017/187437 A1).
Stephens disclose a decal configured to adhere to footwear (Entire Document), comprising: a flexible three-dimensional material formed in a shape (Paragraph 0001), wherein a rear surface of the material comprises an adhesive configured to removably couple the material to one or more surfaces of the footwear (Paragraph 0001), and a backing removably coupled to a rear surface of the material via the adhesive (Paragraph 0001), wherein the backing is configured to maintain adhesive characteristics of the adhesive (Paragraph 0001), wherein the material is configured to adhere and conform to one or more surfaces a first surface and a second surface of the footwear (Paragraph 0001, wherein the decal may cover the entire surface of the shoe), such that the material lies smoothly along the one or more surfaces first surface and the second surface without deforming the shape of the decal (Paragraph 0001, wherein the decal is made of the same material as claimed and would react in the same fashion, resulting in the material lying smoothly), and, wherein the first surface of the footwear is disposed at a first angle respective to the footwear and the second surface of the footwear is disposed at a second angle respective to the footwear (Paragraph 0001, wherein the decal may cover the entire surface of the shoe), and wherein the material comprises one of leather, faux leather, synthetic leather, suede, or canvas (Paragraph 0001) as in claim 1. With respect to claim 4, the first surface is disposed at a farther distance from the second surface of the footwear, such that elevations of the first surface and second surface are different (Paragraph 0001, wherein the decal may cover the entire surface of the shoe). For claim 7, the material is configured to adhere, via the adhesive, to one or more surfaces of the footwear for at least a year (Paragraph 0001, wherein the adhesive may be chosen to allow removal when desired). However, Stephens fails to disclose a pressure sensitive adhesive, and the shape of the material is formed via a die cutting process or a laser cutting process.
Eiger et al. teach a pressure sensitive decal configured to adhere to footwear (Figures; Abstract; Page 1, lines 10 – 11), comprising: a flexible three-dimensional material formed in a shape (Page 2, lines 1 – 12; Page 3, lines 1 – 3), wherein a rear surface of the material comprises a pressure sensitive adhesive configured to removably couple the material to one or more surfaces of the footwear (Figure 1B; Page 8, line 15 to Page 9, line 2) and a backing removably coupled to a rear surface of the material via the pressure sensitive adhesive (Figure 1B; Page 8, line 15 to Page 9, line 2), wherein the backing is configured to maintain adhesive characteristics of the pressure sensitive adhesive (Figure 1B; Page 8, line 15 to Page 9, line 2), wherein the material is configured to adhere and conform to a first surface and a second surface of the footwear, such that the material lies smoothly along the first surface and the second surface without deforming the shape of the decal (Figure 1B; Abstract; Page 8, line 15 to Page 9, line 2), wherein the first surface of the footwear is disposed at a first angle respective to the footwear and the second surface of the footwear is disposed at a second angle respective to the footwear (Figure 1B; Abstract; Page 8, line 15 to Page 9, line 2, wherein the adhesive allows the decal to adhere to a multitude of surfaces), wherein the material comprises suede (Page 2, lines 1 – 12), the shape of the material is formed via laser cutting process (Page 2, lines 13 – 14) for the purpose of marking or adding color to an article (Page 1, Background of the Invention).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a pressure sensitive adhesive on a laser cut article in Stephens in order to mark or add color to an article as taught by Eiger et al.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Stephens (USPGPub 2010/0170112 A1) in view of Eiger et al. (WO 2017/187437 A1) applied to claim 7 above, and further in view of Perry et al. (USPGPub 2017/0119105 A1).
Stephens, as modified with Eiger et al., disclose the claimed invention except for the material is configured to be removed from the one or more surfaces of the footwear without leaving residue of the pressure sensitive adhesive.
Perry et al. teach a pressure sensitive decal configured to adhere to footwear (Figures; Abstract) comprising: a flexible three-dimensional material formed in a shape (Paragraph 0028), wherein the material may comprise one of vinyl or flexible plastic (Paragraph 0028); wherein a rear surface of the material comprises a pressure sensitive adhesive configured to removably couple the material to one or more surfaces of the footwear (Paragraph 0029), and a backing removably coupled to a rear surface of the material via the pressure sensitive adhesive (Paragraph 0029), wherein the backing is configured to maintain adhesive characteristics of the pressure sensitive adhesive (Paragraph 0029), the material is configured to be removed from the one or more surfaces of the footwear without leaving residue of the pressure sensitive adhesive (Paragraph 0029) for the purpose of decorating a shoe (Abstract; Figures).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a residue free pressure sensitive adhesive in the modified Stephens in order to mark or add color to an article as taught by Perry et al.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Stephens (USPGPub 2010/0170112 A1) in view of Eiger et al. (WO 2017/187437 A1) and Abrams et al. (USPGPub 2020/0257024 A1).
Stephens disclose a decal configured to adhere to footwear (Entire Document), comprising: a flexible three-dimensional material formed in a shape (Paragraph 0001), wherein a rear surface of the material comprises an adhesive configured to removably couple the material to one or more surfaces of the footwear (Paragraph 0001), and a backing removably coupled to a rear surface of the material via the adhesive (Paragraph 0001), wherein the backing is configured to maintain adhesive characteristics of the adhesive (Paragraph 0001), wherein the material is configured to adhere and conform to one or more surfaces a first surface and a second surface of the footwear (Paragraph 0001, wherein the decal may cover the entire surface of the shoe), such that the material lies smoothly along the one or more surfaces first surface and the second surface without deforming the shape of the decal (Paragraph 0001, wherein the decal is made of the same material as claimed and would react in the same fashion, resulting in the material lying smoothly), and, wherein the first surface of the footwear is disposed at a first angle respective to the footwear and the second surface of the footwear is disposed at a second angle respective to the footwear (Paragraph 0001, wherein the decal may cover the entire surface of the shoe), and wherein the material comprises one of leather, faux leather, synthetic leather, suede, or canvas (Paragraph 0001) as in claim 16. However, Stephens fails to disclose a pressure sensitive adhesive, and a first layer comprising a flexible material having a second surface coated in an adhesive that temporarily bonds the first layer and a decal layer.
Eiger et al. teach a pressure sensitive decal configured to adhere to footwear (Figures; Abstract; Page 1, lines 10 – 11), comprising: a flexible three-dimensional material formed in a shape (Page 2, lines 1 – 12; Page 3, lines 1 – 3), wherein a rear surface of the material comprises a pressure sensitive adhesive configured to removably couple the material to one or more surfaces of the footwear (Figure 1B; Page 8, line 15 to Page 9, line 2) and a backing removably coupled to a rear surface of the material via the pressure sensitive adhesive (Figure 1B; Page 8, line 15 to Page 9, line 2), wherein the backing is configured to maintain adhesive characteristics of the pressure sensitive adhesive (Figure 1B; Page 8, line 15 to Page 9, line 2), wherein the material is configured to adhere and conform to a first surface and a second surface of the footwear, such that the material lies smoothly along the first surface and the second surface without deforming the shape of the decal (Figure 1B; Abstract; Page 8, line 15 to Page 9, line 2), wherein the first surface of the footwear is disposed at a first angle respective to the footwear and the second surface of the footwear is disposed at a second angle respective to the footwear (Figure 1B; Abstract; Page 8, line 15 to Page 9, line 2, wherein the adhesive allows the decal to adhere to a multitude of surfaces), wherein the material comprises suede (Page 2, lines 1 – 12), the shape of the material is formed via laser cutting process (Page 2, lines 13 – 14) for the purpose of marking or adding color to an article (Page 1, Background of the Invention).
Abrams et al. teach a decal configured to adhere to footwear (Paragraph 0098; Figures; Abstract), a first layer comprising a flexible material having a second surface coated in an adhesive that temporarily bonds the first layer and a decal layer (Figures 3 – 5, #204 or 208) for the purpose of applying the decal to a substrate (Paragraph 0112).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a pressure sensitive adhesive and a first layer comprising a flexible material having a second surface coated in an adhesive in Stephens in order to mark or add color to an article as taught by Eiger et al. and to apply a decal to a substrate as taught by Abrams et al.
Allowable Subject Matter
Claims 9 – 15 are allowed.
Response to Arguments
Applicant's arguments filed June 1, 2026 have been fully considered but they are not persuasive.
In response to Applicant’s argument that “Eiger Does Not Teach Multi-Surface Conformance at Different Angles”, the Examiner respectfully disagrees. Applicant’s own specification shows a sheet material but fails to clarify any specific thicknesses or properties of the materials that makes is conformable at different angles. Eiger et al. clearly teaches a sheet structure as claimed, including the same materials and use with regard to using a pressure sensitive adhesive and suede material that attaches to a shoe.
In response to Applicant’s argument that “Eiger Does Not Disclose a Flexible Three-Dimensional Material”, the Examiner respectfully disagrees. Applicant’s own specification shows a sheet material as the three-dimensional structure (Figures) but fails to provide any additional clarification. Eiger et al. clearly teaches a sheet structure as claimed, including the same materials and use with regard to using a pressure sensitive adhesive and suede material that attaches to a shoe. Therefore, Eiger et al. does discoes a flexible three-dimensional material.
In response to Applicant’s argument that “The Combined References Do Not Teach Multi-Surface Conformance at Different Angles”, the Examiner respectfully disagrees. Applicant’s own specification shows a sheet material but fails to clarify any specific thicknesses or properties of the materials that makes is conformable at different angles. Stephens clearly teaches a sheet structure as claimed, including the same materials and use with regard to using an adhesive and materials that attaches to a shoe (Paragraph 0001).
In response to Applicant’s argument that “Neither Perry nor the Combination with Stephens Discloses a Flexible Three-Dimensional Material”, the Examiner respectfully disagrees. Applicant’s own specification shows a sheet material as the three-dimensional structure (Figures) but fails to provide any additional clarification. Stephens clearly teaches a sheet structure as claimed, including the same materials and use with regard to using an adhesive and materials that attaches to a shoe (Paragraph 0001). Therefore, Stephens does discoes a flexible three-dimensional material.
In response to Applicant’s argument that “No Motivation to Combine”, the Examiner respectfully disagrees. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, all of the prior art is directed towards decals that adhered to a variety of substrates, including shoes, through the use of adhesives for the purpose of decoration.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Patricia L Nordmeyer whose telephone number is (571)272-1496. The examiner can normally be reached 10am - 6:30pm EST, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Patricia L. Nordmeyer/
Primary Examiner
Art Unit 1788
/pln/Primary Examiner, Art Unit 1788 June 16, 2026
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