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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 Feb. 5, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “a non-woven layer arranged next to one of the fabric layers by needling.” The instant specification does not disclose a non-woven layer “arranged next to one of the fabric layers by needling.” The instant specification discloses that parts of the layers are intertwined and fixed to each other by needling.
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.
Claim 1 is 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.
Claim 1 recites “a non-woven layer arranged next to one of the fabric layers by needling.” The claim is not clear with respect to a layer being “arranged” next to another layer by needling.
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) 1-5, 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Leary et al. (US 2011/0265347 A1) (“Leary”), in view of Champagne et al. (US 9392840 B2) (“Champagne”) and Burns et al. (US 11603611 B2) (“Burns”).
With respect to claim 1, Leary discloses a multi-layered skate shoe (abstr., 0034), comprising a base layer – element 32, two fabric layers disposed at two sides of the base layer respectively – Leary discloses additional fabric layers between the outer layer and interior lining, thus, it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form two fabric layers at two sides of the base layer (0036). Leary is silent with respect to a nonwoven layer as recited in the claim. Champagne discloses a skate shoe including a nonwoven layer, which may be one of the layers of an inner liner (abstr., col. 5, lines 14-22). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form a nonwoven layer next to one of the fabric layers of Leary, such as the inner liner, as it is known in the art of skate shoes to include in them a nonwoven layer. It has been held to select a known material based on its suitability for its intended use to be an obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). The references are silent regarding the non-woven layer and the fabric layer next to it being fixed by needling, at least one fiber of the nonwoven layer being intertwined with at least one fiber of the fabric layer that is next to the nonwoven layer.
Burns discloses a composite made of a fabric layer and a nonwoven layer, the fabric layer being needle punched so that the fibers protrude into the nonwoven fabric (abstr.), the layers being connected, the fibers of the fabric layer being intertwined with the fibers of the nonwoven layer being next to the fabric layer (abstr., col. 1, lines 12-61), and no adhesive being used (col. 1, lines 19-20, 43-50). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form the nonwoven layer and the fabric layer of Leary and Champagne so that at least one fiber of the nonwoven layer is intertwined with at least one fiber of the fabric layer as such connection of layers is known in the art of composites comprising nonwoven layers, when no adhesive is being used between the layers.
Regarding claim 2, Leary, Champagne, and Burns teach the shoe of claim 1. Burns discloses one part of the nonwoven layer being intertwined with at least one part of the fabric layer (col. 1, lines 12-45, 57-61).
As to claim 3, Leary, Champagne, and Burns teach the shoe of claim 1. Leary discloses the material of the base layer being an ethylene-based resin (0045). Champagne discloses a thermoformable layer of a skate shoe comprising polypropylene (col. 3, lines 55-61). It would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form the base layer of Leary of polypropylene as the base layer is to be a heat moldable material (Leary, 0045), and polypropylene is a known material for a heat moldable material for skate shoe uppers. It has been held to select a known material based on its suitability for its intended use to be an obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
As to claim 4, Leary, Champagne, and Burns teach the shoe of claim 3. Champagne discloses fabric layers made of polypropylene (col. 5, lines 14-16).
With respect to claim 5, Leary, Champagne, and Burns teach the shoe of claim 3. Leary discloses the base layer contacts the outer layer and the inner lining through an adhesive (0038), thus, it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form adhesive films between the base layer and the two fabric layers to adhere the base layer and the two fabric layers, each adhesive film being covered by a corresponding fabric layer.
Regarding claim 15, Leary, Champagne, and Burns teach the shoe of claim 3. The claim defines the product by how the product is made, thus, claim 15 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps (MPEP 2113). In the instant case the recited steps imply the structure of claim 15. The references teach the structure.
Claim(s) 6-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Leary, in view of Champagne and Burns, and further in view of Velu et al. (US 10653273 B1) (“Velu”).
Regarding claim 6, Leary, Champagne, and Burns teach the shoe of claim 5. Leary discloses the thickness of the base layer of between about 0.3 mm and about 1.00 mm (0053). The range of thickness overlaps the range recited in claim 6; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05). Leary is silent regarding the thicknesses of the adhesive film, each fabric layer and a nonwoven layer. Velu discloses a shoe upper wherein the thickness of the fabric is from about 0.25 mm to about 2 mm (col.3, lines 38-40). The range of thickness overlaps the range of the thicknesses of each fabric layer and the nonwoven layer recited in the claim; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05). Since the total thickness of the upper is from around 0.5 to around 1.5 mm (col. 4, lines 18-20), it follows that the thickness of the adhesive film satisfies the range recited in the claim. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form the upper according to Leary, Champagne and Burns having the thicknesses of the adhesive film, each fabric layer and the nonwoven layer as disclosed in Velu, as such thicknesses are known in the art of shoes. Changes in size are within the purview of a person skilled in the art (MPEP 2144.04).
With respect to claim 7, Leary, Champagne, and Burns teach the shoe of claim 5, but are silent with respect to an adhesive film as recited in the claim. Velu discloses that a modified polyolefin film is used in joining the layers of a shoe upper (col. 1, lines 60-67, col. 4, lines 10-13). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form each adhesive film in the upper of Leary, Champagne and Burns of a modified polyolefin film, as such adhesive is known in the art of shoes.
As to claim 8, Leary, Champagne, Burns and Velu teach the shoe of claim 6. Leary discloses that more than one fabric layer is disposed at one side of the base layer (0036), thus, it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that a second adhesive film is placed between each adjacent two fabric layers, as duplication of parts is of no patentable significance, unless new and unexpected result is produced (MPEP 2144.04(VI)).
Regarding claim 9, Leary, Champagne, Burns and Velu teach the shoe of claim 6. Leary discloses a lining layer disposed on a surface of the nonwoven layer – element 30 (0036). Champagne discloses the lining layer formed of polyester (col. 5, lines 14-20), base layer formed of polypropylene (col. 3, lines 55-61), fabric layers formed of polypropylene (col. 5, lines 14-16), Burns discloses a nonwoven layer formed of polyester (col. 7, lines 43-50, col. 8, lines 60-61, col. 9, lines 10-11). Velu discloses an adhesive layer formed of polyolefin (col. 4, lines 10-13). It is known in the art that polyester has a higher melting point than polypropylene or generally polyolefin.
With respect to claim 10, Leary, Champagne, Burns and Velu teach the shoe of claim 6. Leary discloses the thermoplastic film is a polymeric material (0035), Champagne discloses an outer layer formed of thermoplastic film - polypropylene (col. 3, lines 55-61).
Regarding claim 11, Leary, Champagne, Burns and Velu teach the shoe of claim 9. Leary discloses the thermoplastic film is a polymeric material (0035), Champagne discloses an outer layer formed of thermoplastic film - polypropylene (col. 3, lines 55-61).
As to claim 12, Leary, Champagne, Burns and Velu teach the shoe of claim 11. Leary discloses that the lining layer should help to alleviate the need for additional comfort padding (0036), thus, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to optimize the thickness of the lining layer in order for it to alleviate the need for additional comfort padding. Champagne discloses a thickness of a thermoplastic film of between 0.3 mm and 0.7 mm (col. 6, lines 27-34). The range of thickness overlaps the range recited in claim 12; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
With respect to claim 13, Leary, Champagne, Burns and Velu teach the shoe of claim 12. Burns discloses a nonwoven layer comprising synthetic fiber (col. 7, lines 43-50).
Regarding claim 14, Leary, Champagne, Burns and Velu teach the shoe of claim 13. Champagne discloses the thermoplastic film comprising polypropylene (col. 3, lines 55-61).
Response to Arguments
Applicant’s arguments filed on Feb. 5, 2026 have been fully considered.
In view of the recent amendment 35 USC 112(b) rejection of claim 4 has been withdrawn.
The Applicant stated “Compared with the prior art, in which the non-woven layer 14 and the fabric 13 are fixed using the adhesive, the needling process provides a stronger and more reliable physical bond” (p. 6 of the Remarks). The Examiner notes it is not clear which “prior art” the Applicant is referring to.
The Applicant discussed the benefits of fixing the fabric layer by the needling process, in contrast to the use of an adhesive. The Examiner notes Burns discloses needling without the use of an adhesive, as discussed above.
The Applicant argued Burns is directed to a carpet manufacturing process, and is not directed to thermal insulation as is the present invention. The Applicant argued there would have been no motivation to combine the inventions of Leary, Champagne and Burns. The Examiner notes the motivation to combine the references is provided in the rejection above. The Applicant appears to argue that Burns is not an analogous art, as the present invention relates to skate shoes and the nonwoven layer used together with the fabric layer for thermal insulation, while Burns focuses on carpet softness and comfort. The Examiner notes a reference is analogous art if the reference is reasonably pertinent to the problem faced by the inventor even if it is not in the same field of endeavor as the claimed invention (MPEP 2141.01(a)). Burns discloses fixing a fabric layer and a nonwoven layer by needling in forming a composite that could be used in floorcovering or wallcovering (col. 1, lines 12-17), the fibers of the respective layers being interlocked when no adhesive is being used (col. 1, lines 27-50). In the instant invention a nonwoven layer and a fabric layer are fixed wherein at least one fiber of the nonwoven layer is intertwined with at least one fiber of the fabric layer being next to the nonwoven layer without the need of using an adhesive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOANNA PLESZCZYNSKA whose telephone number is (571)270-1617. The examiner can normally be reached M-F ~ 11:30-8.
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, Maria Veronica Ewald can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Joanna Pleszczynska/
Primary Examiner, Art Unit 1783