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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 10, 2026 has been entered.
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.
1. Claims 1-11 and 13-16 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.
Claim 1 recites “a main material formed of a first thread body…at least a part of the main material is an embroidered portion consisting of a second thread body embroidered and/or sewn to the first thread body”. The claim limitation is indefinite as it is unclear how the embroidered portion can be consisting of a second thread body when the main material is formed of a first thread body and the second thread body is embroidered and/or sewn to the first thread body; i.e. the embroidered portion contains both the first and second threads. Claim 1 is rejected as best understood by examiner.
Claims 15 recites “a main material formed of a first thread body, the method comprising: forming, on at least a part of the main material, an embroidered portion consisting of a second thread body by embroidering and/or sewing the second thread body onto the first thread body”. The claim limitation is indefinite as it is unclear how the embroidered portion can be consisting of a second thread body when the main material is formed of a first thread body and the second thread body is embroidered and/or sewn to the first thread body; i.e. the embroidered portion contains both the first and second threads. Claim 15 is rejected as best understood by examiner.
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 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.
2. Claim(s) 1, 4-5, 10-11, and 13-16 is/are rejected, insofar as is definite, under 35 U.S.C. 102(a)(1) as being anticipated by Dojan (US 2015/0272275).
Regarding Claim 1, Dojan discloses a shoe comprising an upper body (10) configured to cover at least an instep (12) of a foot (as seen in Fig.1), wherein the upper body includes a main material (31) formed of a first thread body (para.24; i.e. a textile would contain a thread/yarn), at least a part of the main material is an embroidered portion (portion of 42) consisting of a second thread body (42) embroidered and/or sewn to the first thread body (para.28), the second thread body consisting of a material having a melting point lower than a melting point of the first thread body (para.32 & 49; i.e. 42 is melted, meaning it has a lower melting point than 31), and the embroidered portion comprises a solidified portion which is melted and then solidified (i.e. melted & cured 42), and a non-solidified portion (i.e. portion of 31 below 42 is not a melted portion) which has not been melted and is disposed adjacent to the solidified portion (i.e. 31 is not a melted portion)(as seen in Fig.1).
Regarding Claim 4, Dojan discloses a shoe according to claim 1, wherein the upper body is further configured to cover a toe (11), and the embroidered portion (portion of 42) is located at an area corresponding to the toe (as seen in Fig.1 & 2).
Regarding Claim 5, Dojan discloses a shoe according to claim 1, wherein the upper body is further configured to cover a heel (13), and the embroidered portion (portion of 42) is located at an area corresponding to the heel (as seen in Fig.1 & 2).
Regarding Claim 10, Dojan discloses a shoe according to claim 1, wherein at least a part of the second thread body (42) is a monofilament (para.31; i.e. “an individual filament”).
Regarding Claim 11, Dojan discloses a shoe according to claim 1, wherein at least a part of the second thread body (42) is a multifilament (para.31; i.e. strand 42 may be formed from…filaments).
Regarding Claim 13, Dojan discloses a shoe according to claim 1, wherein the second thread body (42) includes a plurality of types of thread bodies having different melting points (para.31; 42 “may include filaments that are each formed from two or more different materials, or may include filaments that are each formed from two or more different materials” and different materials such as polyester and silk, have different melting points).
Regarding Claim 14, Dojan discloses a shoe according to claim 1, wherein at least a part of the solidified portion (i.e. melted 42) has a smaller thickness than other parts of the main material (31)(as seen in Fig.3 & 6A, 42 is thinner than 31).
Regarding Claim 15, Dojan discloses a method of manufacturing a shoe including an upper body (10) configured to cover at least an instep (12) of a foot (as seen in Fig.1), the upper body including a main material (31) formed of a first thread body (para.24; i.e. a textile would contain a thread/yarn), the method comprising: forming, on at least a part of the main material, an embroidered portion (portion of 42) consisting of a second thread body (42) by embroidering and/or sewing the second thread body onto the first thread body (para.28), the second thread body consisting of a material having a melting point lower than a melting point of the first thread body (para.32 & 49; i.e. 42 is melted, meaning it has a lower melting point than 31), and melting and the solidifying a first part (i.e. melted & cured 42) of the embroidered portion
while not melting a second part (i.e. portion of 31 below 42 is not melted) of the embroidered portion disposed adjacent to the first part (as seen in Fig.1).
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.
3. Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dojan (US 2015/0272275) in view of McGinnity (US 2018/0255876).
Regarding Claim 2, Dojan discloses the invention substantially as claimed above. Dojan does not disclose the first thread body is a polyester-based material. However, McGinnity teaches an upper with a base material (602) with a first thread body formed from a polyester-based material (para.84).
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 first thread body material of Dojan for the polyester-based thread material of McGinnity, as a simple substitution of one well known type of upper thread 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.
4. Claim(s) 3 and 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dojan (US 2015/0272275) in view of Thompsett (US 2021/0401106).
Regarding Claim 3, Dojan discloses the invention substantially as claimed above. Dojan 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 Dojan 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, Dojan discloses the invention substantially as claimed above. Dojan 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 Dojan 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 Dojan 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).
Regarding Claims 8 and 9, Dojan discloses the invention substantially as claimed above. Dojan does not disclose wherein at least a part of the second thread body is colored or a pre-colored thread. However, Thompsett teaches a shoe upper with a colored/pre-colored yarn (para.102 & 109).
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 Dojan to be colored/pre-colored, as taught by Thompsett, in order to provide the preferred aesthetic appearance of 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 Dojan to be colored/pre-colored, 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).
5. Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Dojan (US 2015/0272275).
Regarding Claim 6, Dojan discloses a shoe according to claim 1, wherein the
upper body includes an eyelet (34; para.39). Dojan does not explicitly teach the
embroidered portion is located around the eyelet. However, it would have been obvious
to one having ordinary skill in the art before the effective filing date of the claimed
invention to have located the embroidered portion around the eyelet, in order to
reinforce the eyelet so that the aperture does not become distorted with the wear-and-
tear of tightening the shoe laces. Further, it has been held that rearranging parts of an
invention involves only routine skill in the art. See MPEP 2144.04 VI.
Response to Arguments
In view of Applicant's amendment, the search has been updated, and new grounds of rejection have been identified and applied. Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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, 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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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732
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