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 .
Withdrawn Rejections
Any rejections and or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn due to Applicant’s amendments and/or arguments in the response dated November 13, 2025. 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 § 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 and 3 – 7 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 one or more surfaces of the footwear, such that the material lies smoothly along the one or more surfaces without deforming the shape of the decal (Figure 1B; Abstract; Page 8, line 15 to Page 9, line 2), and wherein the material comprises suede (Page 2, lines 1 – 12) as in claim 1. With respect to claim 3, the material is further configured to adhere and conform to a first surface and a second surface of the footwear, 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 (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). 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). For claim 5, the material is further configured to adhere and conform to a first surface and a second surface of the footwear, and wherein 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).
Claims 9 – 15 are rejected under 35 U.S.C. 102(a)(1) and (a)(2)as being anticipated by Perry et al. (USPGPub 2017/0119105 A1).
Perry et al. further disclose a decal alignment application system (Figures; Abstract) comprising: a first layer comprising a flexible non-stick material permanently coupled to a second layer (Paragraph 0035); the second layer having a first surface coated in an adhesive that permanently couples the second layer and the first layer (Paragraph 0035), and a second surface coated in an adhesive that temporarily bonds the second layer and a decal layer (Paragraph 0035); the decal layer comprising a material layer and an adhesive layer, wherein the material layer comprises a flexible three-dimensional material formed in a shape of a decal (Paragraph 0028), wherein the adhesive layer comprises a pressure sensitive adhesive configured to removeable coupled to a backing layer (Paragraph 0029); and the backing layer removably coupled to the adhesive layer of the decal layer and is configured to maintain adhesive characteristics of the pressure sensitive adhesive of the adhesive layer (Paragraph 0029), wherein the material layer is configured to adhere and conform, via the adhesive layer, to one or more surfaces of footwear, such that the material layer lies smoothly along the one or more surfaces without deforming the shape of the decal (Figures; Paragraph 0027) as in claim 9. With respect to claim 10, the material comprises one of vinyl or flexible plastic (Paragraph 0028). Regarding claim 11, the material layer is further configured to adhere and conform to a first surface and a second surface of the footwear, 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 (Figures; Abstract, wherein the adhesive allows the decal to adhere to a multitude of surfaces). For claim 12, 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 (Figures; Abstract, wherein the adhesive allows the decal to adhere to a multitude of surfaces). In claim 13, the material layer is further configured to adhere and conform to a first surface and a second surface of the footwear, and wherein 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 (Figures; Abstract, wherein the adhesive allows the decal to adhere to a multitude of surfaces). With regard to claim 14, the first layer comprises a tab configured to facilitate the uncoupling of the second layer and the decal layer (Paragraph 0035, wherein the first layer may be cut, leaving a tab). With respect to claim 15, the first layer comprises a transparent material (Paragraph 0035).
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, 3 – 8, 16, and 18 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Perry et al. (USPGPub 2017/0119105 A1) in view of Stephen (USPGPub 2010/0170112 A1).
Perry et al. disclose 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), wherein the material is configured to adhere and conform to one or more surfaces of the footwear, such that the material lies smoothly along the one or more surfaces without deforming the shape of the decal (Figures; Paragraph 0027) as in claim 1. With respect to claim 2,. Regarding claim 3, the material is further configured to adhere and conform to a first surface and a second surface of the footwear, 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 (Figures; Abstract, wherein the adhesive allows the decal to adhere to a multitude of surfaces). For 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 (Figures; Abstract, wherein the adhesive allows the decal to adhere to a multitude of surfaces). In claim 5, the material is further configured to adhere and conform to a first surface and a second surface of the footwear, and wherein 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 (Figures; Abstract, wherein the adhesive allows the decal to adhere to a multitude of surfaces). With regard to claim 6, the shape of the material is formed via a die cutting process or laser cutting process (The recitation that the decal is formed by the “die cutting process or laser cutting process” is a process recitation in a product. Product claims including process recitations are not limited by the manipulation of the recited steps, only the structure implied by the steps. See MPEP2113. In the present instance, the process steps imply that the decal is cut. The reference discloses such a product. See Figures). As in claim 7, the material is configured to adhere, via the pressure sensitive adhesive, to one or more surfaces of the footwear for at least a year (Paragraph 0029, wherein the adhesive may be chosen to allow removal when desired). With respect to claim 8, 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). Perry et al. also disclose a decal alignment application system (Figures; Abstract) comprising: 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 (Paragraph 0035), wherein the material comprises one of vinyl or flexible plastic (Paragraph 0028); the decal layer comprising a material layer and an adhesive layer, wherein the material layer comprises a flexible three-dimensional material formed in a shape of a decal (Paragraph 0028), wherein the adhesive layer comprises a pressure sensitive adhesive configured to removeable coupled to a backing layer (Paragraph 0028); and the backing layer removably coupled to the adhesive layer of the decal layer and is configured to maintain adhesive characteristics of the pressure sensitive adhesive of the adhesive layer (Paragraph 0028), wherein the material layer is configured to adhere and conform, via the adhesive layer, to one or more surfaces of footwear, such that the material layer lies smoothly along the one or more surfaces without deforming the shape of the decal Figures; Abstract, wherein the adhesive allows the decal to adhere to a multitude of surfaces) as in claim 16. For claim 18, the material layer is further configured to adhere and conform to a first surface and a second surface of the footwear, 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 Figures; Abstract, wherein the adhesive allows the decal to adhere to a multitude of surfaces). In claim 19, 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 Figures; Abstract, wherein the adhesive allows the decal to adhere to a multitude of surfaces). Regarding claim 20, the material layer is further configured to adhere and conform to a first surface and a second surface of the footwear, and wherein 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 Figures; Abstract, wherein the adhesive allows the decal to adhere to a multitude of surfaces). However, Perry fails to disclose the material comprises one of leather, faux leather, vegan leather, synthetic leather, suede, or canvas.
Stephens teaches 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 leather, faux leather, synthetic leather, suede, or canvas (Paragraph 0001) for the purpose changing the appearance of a shoe through customization (Paragraph 0001).
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 material chosen from leather, faux leather, synthetic leather, suede, or canvas in Perry et al. in order to change the appearance of a shoe through customization as taught by Stephens.
Response to Arguments
Applicant’s arguments with respect to claims 1, 3 – 8, 16 and 18 – 20 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.
Please see the newly presented rejections in view of Eiger et al. and the combination of Perry et al in view of Stephens.
While Perry et al. mainly discusses the use of polymer for the flexible material, the use of the phrase “may comprise” (Paragraph 0028) allows for the use of other materials, such as those used by Stephens.
Applicant's arguments filed November 13, 2025 with regard to claims 9 – 15 as anticipated by Perry et al. have been fully considered but they are not persuasive.
In response to Applicant’s argument that “Perry does not teach or suggest Perry et al. further disclose a decal alignment application system comprising: a first layer comprising a flexible non-stick material permanently coupled to a second layer; the second layer having a first surface coated in an adhesive that permanently couples the second layer and the first layer, and a second surface coated in an adhesive that temporarily bonds the second layer and a decal layer”, the Examiner respectfully disagrees. Perry et al. clearly discloses the alignment system through the use of contact paper (Figure 4; Paragraph 0042 - 0043), which includes an additional adhesive that does not stay with the decal when it is attached to the surface of shoe.
Conclusion
The prior art made of record on the PTO-892 and not relied upon is considered pertinent to applicant's disclosure. The prior art is cited to show the state of the art with regard to decals that are made out of a variety of materials including leather.
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 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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/Patricia L. Nordmeyer/
Primary Examiner
Art Unit 1788
/pln/Primary Examiner, Art Unit 1788 November 26, 2025