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 .
DETAILED ACTION
Response to Amendment
Applicant’s amendment filed July 30, 2026 has been received, Claims 1-11 and 13-16 are currently pending.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
1. Claim(s) 1-2, 4-6, 8-11, and 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Whiteman (US 2018/0360156) in view of Berend (US 2013/0312284).
Regarding Claim 1, Whiteman discloses a shoe (400) comprising an upper body (315) configured to cover at least an instep of a foot (as seen in Fig.14 & 15), wherein the upper body includes a main material formed of a first thread body (para.59), at least a part of the main material is an embroidered portion (405, 410, 150) comprising a second thread body (15) embroidered and/or sewn to the first thread body (para.6), the second thread body consisting of a material having a melting point (para.70). Whiteman does not explicitly disclose the second thread body consisting of a material having a melting point lower than a melting point of the first thread body; and the embroidered portion comprises a solidified portion of the second thread body which is melted and then solidified, and a non-solidified portion of the second thread body which has not been melted and is disposed adjacent to the solidified portion. However, Berend teaches a shoe upper (110) having a second material (material of 190) consisting of a material having a melting point lower than a melting point of a first material (185)(para.49 & 91); and a portion (190) comprises a solidified portion (205) of the second material which is melted and then solidified (para.50), and a non-solidified portion (190 between 205) of the second thread body which has not been melted and is disposed adjacent to the solidified portion (as seen in Fig.6 & 7).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the second thread body of Whiteman with a melting point lower than a melting point of the first thread body, as taught by Berend, in order to provide an embroidered material that securely bonds to the upper material. Additionally, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the embroidered portion of Whiteman to have a solidified portion and a non-solidified portion, as taught by Berend, in order to provide a durable embroidered portion that is aesthetically pleasing to the user. When in combination, Whiteman and Berend teach the second thread body consisting of a material having a melting point lower than a melting point of the first thread body; and the embroidered portion comprises a solidified portion of the second thread body which is melted and then solidified, and a non-solidified portion of the second thread body which has not been melted and is disposed adjacent to the solidified portion.
Regarding Claim 2, Whiteman discloses a shoe according to claim 1, wherein the first thread body is a polyester-based material (para.68).
Regarding Claim 4, Whiteman discloses a shoe according to claim 1, wherein the upper body (315) is further configured to cover a toe (330), and the embroidered portion (405, 410) is located at an area corresponding to the toe (as seen in Fig.14 & 15).
Regarding Claim 5, Whiteman discloses a shoe according to claim 1, wherein the upper body (315) is further configured to cover a heel (340), and the embroidered portion (405, 410) is located at an area corresponding to the heel (as seen in Fig.14 & 15).
Regarding Claim 6, Whiteman discloses a shoe according to claim 1, wherein the upper body includes an eyelet (lace opening seen in Fig.14 & 14), and the embroidered portion (150) is located around the eyelet (para.84).
Regarding Claim 8, Whiteman discloses a shoe according to claim 1, wherein at least a part of the second thread body is colored (para.87).
Regarding Claim 9, Whiteman discloses a shoe according to claim 8, wherein at least a part of the second thread body is a pre-colored thread (para.87).
Regarding Claim 10, Whiteman discloses a shoe according to claim 1, wherein at least a part of the second thread body is a monofilament (para.68).
Regarding Claim 11, Whiteman discloses a shoe according to claim 1, wherein at least a part of the second thread body is a multifilament (para.68).
Regarding Claim 13, Whiteman discloses a shoe according to claim 1, wherein the second thread body includes a plurality of types of thread bodies having different melting points (para.68; i.e. a fusable strand wound with a non-fusable strand).
Regarding Claim 14, When in combination, Whiteman and Berend further teach a shoe according to claim 1, wherein at least a part of the solidified portion has a smaller thickness (Berend: at 205) than other parts of the main material (as seen in Fig.6 & 7 of Berend).
Regarding Claim 15, Whiteman discloses a method of manufacturing a shoe (400) including an upper body (315) configured to cover at least an instep of a foot (as seen in Fig.14 & 15), the upper body including a main material formed of a first thread body (para.59), the method comprising: forming, on at least a part of the main material, an embroidered portion (405, 410, 150) comprising a second thread body (15) by embroidering and/or sewing the second thread body onto the first thread body (para.6), the second thread body consisting of a material having a melting point (para.70). Whiteman does not explicitly disclose the second thread body consisting of a material having a melting point lower than a melting point of the first thread body; and melting and then solidifying a first part of the second thread body while not melting a second part of the second thread body disposed adjacent to the first part. However, Berend teaches a shoe upper (110) having a second material (material of 190) consisting of a material having a melting point lower than a melting point of a first material (185) (para.49 & 91); and melting and then solidifying a first part (205) of the second thread body while not melting a second part of the second thread body (190 between 205) disposed adjacent to the first part (para.50; as seen in Fig.6 & 7).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the second thread body of Whiteman with a melting point lower than a melting point of the first thread body, as taught by Berend, in order to provide an embroidered material that securely bonds to the upper material. Additionally, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the embroidered portion of Whiteman to melt and then solidify a first part of the second thread body while not melting a second part of the second thread body disposed adjacent to the first part, as taught by Berend, in order to provide a durable embroidered portion that is aesthetically pleasing to the user. When in combination, Whiteman and Berend teach the second thread body consisting of a material having a melting point lower than a melting point of the first thread body; and melting and then solidifying a first part of the second thread body while not melting a second part of the second thread body disposed adjacent to the first part.
Regarding Claim 16, When in combination, Whiteman and Berend further teach a shoe according to claim 1, wherein the solidified portion has a thickness smaller (Berend: at 205) than a thickness of the non-solidified portion (Berend: 190 between 205) and thereby forms a recess in the main material (as seen in Fig.6 & 7 of Berend).
2. Claim(s) 3 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Whiteman (US 2018/0360156) and Berend (US 2013/0312284), in view of Thompsett (US 2021/0401106).
Regarding Claim 3, Whiteman and Berend disclose the invention substantially as claimed above. Whiteman does not disclose wherein the second thread body includes TPEE. However, Thompsett teaches a shoe upper formed material that includes TPEE (para.90).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the polyester material of Whiteman for the TPEE of Thompsett, as a simple substitution of one well known type of shoe upper material for another, in order to yield the predictable result of providing a durable upper material. Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Regarding Claim 7, Whiteman and Berend disclose the invention substantially as claimed above. Whiteman does not disclose wherein at least a part of the second thread body is transparent and/or translucent. However, Thompsett teaches a shoe upper with transparent yarn (para.90).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the second thread body of Whiteman to be transparent, as taught by Thompsett, in order to provide the desired transparent visual effect to the shoe upper. It is noted that a change in color is generally recognized as being within the level of ordinary skill in the art. Additionally, “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." A change in the color of the thread would have been obvious due to design incentives or market forces providing a reason to make an adaptation, and the invention resulted from application of the prior knowledge in a predictable manner. Further, it would have been an obvious matter of design choice to one skilled in the art at the time the invention was made to construct the thread of Whiteman to be transparent, since applicant has not disclosed that such solves any stated problem or is for any particular purpose other than aesthetics. Furthermore, it is noted that matters relating to ornamentation which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
Response to Arguments
In view of Applicant's amendment, the search has been updated, and new prior art has been identified and applied. Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection.
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 MEGAN E LYNCH whose telephone number is (571)272-3267. The examiner can normally be reached Monday to Friday, 8:00am-4:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alissa J. Tompkins can be reached at 571-272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732
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