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 February 20, 2026 has been received, Claims 1-50 are currently pending.
Claim Objections
1. Claim 24 is objected to because of the following informalities: Claim 24 recites “upper that includes the plurality of inner apertures and the plurality of outer apertures”, this appears to be an error and should read “upper that includes the plurality of inner lace apertures and the plurality of outer lace apertures”. Appropriate correction is required.
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.
2. Claim(s) 1-12, 14-23, and 25-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fallon (US 2002/0104233) in view of Huffa (US 2012/0233882).
Regarding Claim 1, Fallon discloses an article of footwear, comprising: an upper (114, not including 140) comprising an instep area (i.e. center area of 114) extending between a first side (i.e. medial side of 114) of the upper and a second side (i.e. lateral side of 114) of the upper; a plurality of outer lace apertures (132) disposed at a first location along the instep area on at least the first side of the upper; a plurality of inner lace (134) apertures disposed at a second location along the instep area on at least the first side of the upper, wherein the second location is located more inward toward a middle of the upper than the first location (as seen in Fig.3); a lace (130) that extends through an inner lace aperture of the plurality of inner lace apertures on the first side of the upper, extends along an innermost surface (120’ & inner surface of 118) of the article of footwear, and then exits the upper through an outer lace aperture of the plurality of outer lace apertures on the first side of the upper (as seen in Fig.2 & 4), wherein after exiting the upper through the outer lace aperture on the first side of the upper, the lace extends across the instep area along and above an exterior surface (i.e. exterior surface of 120) of the upper (as seen in Fig.2 & 4), until the lace extends into a lace aperture (136) on the second side of the upper; and a sole structure (112) secured to the upper (as seen in Fig.2 & 4). Fallon does not disclose the upper comprising a knitted component incorporated into at least the instep area. However, Huffa teaches an upper (120) that is formed entirely from a knitted component (130/150)(as seen in Fig.2; para.37-39).
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 upper material of Fallon for the knit upper material of Huffa, as a simple substitution of one well known type of upper material for another, in order to yield the predictable result of providing a durable and comfortable upper material for a user. 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 Claims 2-3, Fallon and Huffa disclose the inventio substantially as claimed above. Fallon does not disclose wherein the upper includes a reinforcing element to reinforce at least some outer lace apertures; and wherein the reinforcing element is inlaid within the knitted component. However, Huffa teaches an upper (120) including a reinforcing element (132) to reinforce at least some outer lace apertures (123)(as seen in Fig.2 & 5); and wherein the reinforcing element (132) is inlaid within the knitted component (para.40).
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 upper of modified Fallon to include an inlaid reinforcing element, as further taught by Huffa, in order to provide support, stability, and structure to the upper.
Regarding Claim 4, When in combination, Fallon and Huffa teach an article of footwear of claim 1, wherein the knitted component includes a first area formed from a first type of yarn having a first set of properties and a second area formed from a second type of yarn having a second set of properties different from the first set of properties (Huffa: para.47).
Regarding Claim 5, Huffa further teaches an article of footwear of claim 1, wherein the knitted component (130) comprises a knitted one-piece element (as seen in Fig.5; para.39).
Regarding Claim 6, When in combination, Fallon and Huffa teach an article of footwear of claim 1, wherein the knitted component forms an ankle cuff (Huffa: i.e. cuff at 135; para.41 & 53, as seen in Fig.2 & 5).
Regarding Claim 7, When in combination, Fallon and Huffa teach an article of footwear of claim 6, wherein the instep area (Fallon: i.e. center area of 114) extends between an ankle opening (Fallon: 138) and a forefoot region (Fallon: 122), and wherein the instep area is joined through knitting to the ankle cuff (Huffa: i.e. cuff at 135; para.41 & 53, as seen in Fig.2 & 5).
Regarding Claim 8, Modified Fallon discloses an article of footwear of claim 1, wherein the knitted component in the instep area (i.e. center area of 114) extends continuously between the inner lace aperture of the plurality of inner lace apertures on the first side of the upper and the lace aperture of the second side (as seen in Fig.2-3).
Regarding Claim 9, Fallon discloses an article of footwear of claim 8, wherein the knitted component in the instep area comprises a stretch knit structure (para.47; knit material stretches to some degree by way of interloping yarns).
Regarding Claim 10, Fallon and Huffa disclose the invention substantially as claimed above. Fallon and Huffa do not explicitly disclose wherein a remaining portion of the knitted component comprises a different knit structure than the stretch knit structure. However, Huffa teaches selecting yarns to impart different properties throughout areas of an upper, such as stretch and stretch resistance (para.6, 40 & 47).
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 upper portions modified Fallon to have a different knit structure than the stretch knit structure, as taught by Huffa, in order to provide an upper with a variety of properties to separate areas of upper, delivering the optimum levels of stretch, stretch resistance, and durability along the length of a user’s foot.
Regarding Claim 11, Huffa further teaches an article of footwear of claim 1, wherein the knitted component (130) includes a polymer layer (139) at one or more areas of the knitted component (para.50-51).
Regarding Claim 12, Fallon discloses an article of footwear of claim 1, wherein the first side (i.e. medial side of 114) is a medial side of the upper and the second side (i.e. lateral side of 114) is a lateral side of the upper (as seen in Fig.3).
Regarding Claim 14, Huffa teaches an article of footwear of claim 1, wherein the knitted component is flat knitted (para.78).
Regarding Claim 15, Fallon further discloses an article of footwear of claim 1, wherein the sole structure (112) comprises a plurality of ground-engaging cleat members (124)(as seen in Fig.2 & 4).
Regarding Claim 16, When in combination, Fallon and Huffa teach an article of footwear of claim 1, wherein the knitted component (Huffa: 130/150) comprises a first knit layer (Huffa: 156) forming at least part of the exterior surface of the upper and a second knit layer (Huffa: 157) forming at least part of the innermost surface of the upper (Huffa: as seen in Fig.9 & 12D and Fallon: Fig.4).
Regarding Claim 17, Huffa further teaches an article of footwear of claim 16, wherein the first knit layer (156) comprises a plurality of voids (i.e. mesh voids) that expose portions of the second knit layer (para.71; as seen in Fig.9 & 12D).
Regarding Claim 18, Modified Fallon discloses an article of footwear of claim 1, wherein the plurality of inner lace apertures (134) extend through the knitted component (as seen in Fig.4 of Fallon and evidenced by Fig.2 & 5 of Huffa).
Regarding Claim 19, When in combination, Fallon and Huffa teach an article of footwear of claim 18, wherein the plurality of inner lace apertures (of modified Fallon) are formed into the knitted component by knitting (as evidenced by 123 of Huffa; para.36 & 41).
Regarding Claim 20, When in combination, Fallon and Huffa teach an article of footwear of claim 1, wherein the plurality of inner lace apertures (of modified Fallon) and at least some of the plurality of outer lace apertures (of modified Fallon) extend through the knitted component (as evidenced by 123 of Huffa; para.36 & 41).
Regarding Claim 21, Huffa further teaches an article of footwear of claim 20, wherein the knitted component has a unitary knit construction (as seen in Fig.5; para.39).
Regarding Claim 22, Fallon discloses an article of footwear of claim 1, wherein the plurality of outer lace apertures (132) are offset from the plurality of inner lace apertures (134) along the instep area in a longitudinal direction (as seen in Fig.2 & 3).
Regarding Claim 23, Fallon discloses an article of footwear of claim 1, wherein the plurality of outer lace apertures (132) and the plurality of inner lace apertures (136) form pairs, each pair comprising one outer lace aperture and one inner lace aperture (as seen in Fig.2-3), wherein an inner lace aperture (134 next to 132A) of a first pair is closer to an outer lace aperture (132A) within the same pair than to an outer lace aperture (132B) of a different pair (as seen in Fig.3).
Regarding Claim 25, Fallon further discloses an article of footwear of claim 1, wherein a portion of the exterior surface (i.e. exterior surface of 114) over which the lace (130) crosses comprises a common coextensive layer (as seen in Fig.2-3), wherein the inner lace aperture (134) on the first side of the upper, the outer lace aperture (132) on the first side of the upper, and the lace aperture (136) on the second side of the upper each extend through the common coextensive layer (as seen in Fig.4).
Regarding Claim 26, Fallon discloses an article of footwear of claim 1, wherein the upper comprises a heel counter (116) located in a heel region (para.28; as seen in Fig.2).
Regarding Claim 27, Fallon discloses an article of footwear of claim 1, wherein the upper (114) comprises a toe guard in a forefoot region (i.e. inasmuch as has been claimed by Applicant, the toe portion of 114 is a toe guard).
Regarding Claim 28, When in combination, Fallon and Huffa teach an article of footwear of claim 1, wherein the knitted component extends through an underfoot region of the upper (Huffa: as seen in Fig.4A-4C; 130 has medial and lateral portions which extend in an underfoot region).
Regarding Claim 29, When in combination, Fallon and Huffa teach an article of footwear of claim 1, wherein the knitted component comprises an ankle cuff (Huffa: i.e. cuff at 135; para.41 & 53, as seen in Fig.2 & 5) joined through knitting to the instep area (Fallon: i.e. center area of 114) of the upper. Fallon and Huffa do not explicitly disclose the ankle cuff exhibiting greater stretch compared to remaining areas of the knitted component. However, Huffa teaches selecting yarns to impart different properties throughout areas of an upper, such as stretch and stretch resistance (para.6, 40 & 47).
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 ankle cuff of modified Fallon to have greater stretch compared to remaining areas of the knitted component, as taught by Huffa, in order to provide an upper with an ankle cuff that stretches to allow a user easy entry of the foot into the shoe and stabilizes other portions of the user’s foot along its length.
Regarding Claim 30, Fallon discloses an article of footwear, comprising: an upper (114, not including 140), comprising: a first side (i.e. medial side of 114); a second side (i.e. lateral side of 114); an instep area (i.e. center area of 114) extending between the first side and the second side (as seen in Fig.3); a plurality of pairs of lace apertures (132C-F,134C-F) arranged along the instep area on the first side of the upper, each pair of lace apertures comprising a first lace aperture (132) and a second lace aperture (134) spaced apart along a lateral direction and extending through an innermost surface of the upper and through an outermost surface of the upper (as seen in Fig.3-4), wherein each lace aperture of the plurality of pairs of lace apertures is spaced away from a longitudinal centerline of the upper (para.34, “the second row 134 may shift to one side or the other of the longitudinal centerline 126”); and a sole (112) attached to the upper (as seen in Fig.2). Fallon does not disclose the upper comprising a knitted component incorporated into at least the instep area. However, Huffa teaches an upper (120) that is formed entirely from a knitted component (130/150)(as seen in Fig.2; para.37-39).
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 upper material of Fallon for the knit upper material of Huffa, as a simple substitution of one well known type of upper material for another, in order to yield the predictable result of providing a durable and comfortable upper material for a user. 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 31, Fallon discloses an article of footwear of claim 30, further comprising a lace (130) that enters a first lace aperture of one of the pairs of lace apertures on the first side from the outermost surface, extends continuously along the innermost surface of the upper, and then exits a second lace aperture of the one of the pairs of lace apertures on the first side to then extend continuously across the outermost surface of the upper to the second side of the upper (as seen in Fig.2 & 4).
Regarding Claim 32, Fallon discloses an article of footwear of claim 31, wherein each lace aperture (132C-F,134C-F) of the plurality of pairs of lace apertures extends through a common layer (i.e. material layer of 114) of the upper comprising the innermost surface and the outermost surface, wherein the common layer is coextensive across the instep area of the upper (as seen in Fig.2-3).
Regarding Claim 33, Fallon discloses an article of footwear of claim 30, wherein the plurality of pairs of lace apertures (132,134) comprise a first pair of lace apertures (132C & 134’C’) and a second pair of lace apertures (132D & 132’D’) positioned immediately adjacent to each other on the first side of the upper, wherein the first lace aperture and the second lace aperture of the first pair of lace apertures are separated by a first distance (as seen in Fig.3), and wherein the first pair of lace apertures and the second pair of lace apertures are separated by a second distance (as seen in Fig.3), wherein the first distance is measured between a center of the first lace aperture and a center of the second lace aperture of the first pair of lace apertures, and wherein the second distance is measured from a center of a lace aperture of the first pair adjacent to the second pair and a center of a lace aperture of the second pair adjacent to the first pair (as seen in Fig.3; para.35). Fallon does not disclose wherein the second distance is greater than the first distance. 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 modified the second distance of Fallon to be great than the first distance, in order to provide the optimum distance for securely fastening a shoelace over a user’s foot. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
Regarding Claim 34, When in combination, Fallon and Huffa teach an article of footwear of claim 30, further comprising a polymer layer (Huffa: 139; para.50-51) on a surface of the upper, wherein the polymer layer surrounds at least a portion of the plurality of pairs of lace apertures (of modified Fallon)(as seen in Fig.3 of Fallon and Fig.8B & 9 of Huffa).
Regarding Claim 35, When in combination, Fallon and Huffa teach wherein the upper comprises a polymer layer (Huffa: 139; para.50-51) on the first side of the upper and on the second side of the upper (of modified Fallon)(as seen in Fig.3 of Fallon and Fig.8B & 9 of Huffa). Fallon and Huffa do not explicitly disclose wherein the knitted component comprises an elastic yarn in at least the instep area of the upper. However, Huffa teaches selecting yarns to impart different properties throughout areas of an upper, such as elastic yarns (para.47).
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 instep area modified Fallon to have an elastane yarn, as taught by Huffa, in order to provide an upper with substantial stretch and recovery to withstand the wear-and-tear of use.
Regarding Claim 36, When in combination, Fallon and Huffa teach an article of footwear of claim 30, wherein a plurality of gaps (Huffa: i.e. spaces between knit wales as seen in Fig.8B) are formed in a first knit layer (Huffa: 138) and a second knit layer (Huffa: 139) of the upper (para.49-51), wherein the first knit layer forms at least a part of the outermost surface of the upper, and wherein the second knit layer forms at least a part of the innermost surface of the upper (Huffa: as seen in Fig.8B).
3. Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fallon (US 2002/0104233) and Huffa (US 2012/0233882) in view of Johnson (US 4,438,574).
Regarding Claim 13, Fallon and Huffa disclose the invention substantially as claimed above, including Fallon teaching a plurality of inner lace apertures (136) disposed at a second location along the instep area on the second side of the upper (as seen in Fig.2-3); and wherein the lace aperture on the second side of the upper through which the lace extends after exiting the upper through the outer lace aperture on the first side is an inner lace aperture of the plurality of inner lace apertures at a second location (as seen in Fig.2 & 4). Fallon does not disclose a plurality of outer lace apertures disposed at a first location along the instep area on the second side of the upper; and a plurality of inner lace apertures disposed at a second location along the instep area on the second side of the upper, wherein the second location is located more inward toward the middle of the upper than the first location. However, Johnson teaches a plurality of outer lace apertures disposed at a first location along the instep area on the second side of the upper; and a plurality of inner lace apertures disposed at a second location along the instep area on the second side of the upper, wherein the second location is located more inward toward the middle of the upper than the first location (See annotated Figure below).
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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 side of Fallon’s upper to include outer lace apertures, as taught by Johnson, in order to provide the optimum lacing configuration for securely fastening the shoe to a user’s foot during use.
4. Claim(s) 24, 46, and 48-49 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fallon (US 2002/0104233) and Huffa (US 2012/0233882), in view of Nakano (US 2011/0000101).
Regarding Claim 24, Fallon and Huffa disclose the invention substantially as claimed above. Fallon further discloses an article of footwear of claim 1, wherein at the first side (i.e. medial side of 114) of the upper that includes the plurality of inner [lace] apertures (134) and the plurality of outer [lace] apertures (132). Fallon does not disclose the innermost surface of the article of footwear, at the first side of the upper is adapted to contact a foot or a sock covering the foot of a wearer in an as-worn configuration. However, Nakano teaches a shoe upper (12) that may or may not include a liner (para.29 & 44).
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 upper of Fallon to omit the liner/lining, as taught by Nakano, in order to provide a lightweight upper for sporting purposes. When modified, Fallon teaches the innermost surface of the article of footwear, at the first side of the upper is adapted to contact a foot or a sock covering the foot of a wearer in an as-worn configuration.
Regarding Claim 46, Fallon and Huffa disclose the invention substantially as claimed above. Fallon does not disclose the innermost surface of the upper, at the first side including the plurality of pairs of lace apertures, is adapted to contact a foot of a wearer or a sock covering the foot of the wearer when in an as-worn configuration. However, Nakano teaches a shoe upper (12) that may or may not include a liner (para.29 & 44).
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 upper of Fallon to omit the liner/lining, as taught by Nakano, in order to provide a lightweight upper for sporting purposes. When modified, Fallon teaches the innermost surface of the upper, at the first side including the plurality of pairs of lace apertures, is adapted to contact a foot of a wearer or a sock covering the foot of the wearer when in an as-worn configuration.
Regarding Claim 48, Fallon and Huffa disclose the invention substantially as claimed above. Fallon does not disclose the innermost surface of the article of footwear defines a portion of an interior foot-receiving void of the article of footwear. However, Nakano teaches a shoe upper (12) that may or may not include a liner (para.29 & 44).
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 upper of Fallon to omit the liner/lining, as taught by Nakano, in order to provide a lightweight upper for sporting purposes. When modified, Fallon teaches the innermost surface of the article of footwear defines a portion of an interior foot-receiving void of the article of footwear.
Regarding Claim 49, Fallon and Huffa disclose the invention substantially as claimed above. Fallon does not disclose the innermost surface of the upper is exposed to an interior foot-receiving void of the article of footwear. However, Nakano teaches a shoe upper (12) that may or may not include a liner (para.29 & 44).
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 upper of Fallon to omit the liner/lining, as taught by Nakano, in order to provide a lightweight upper for sporting purposes. When modified, Fallon teaches the innermost surface of the upper is exposed to an interior foot-receiving void of the article of footwear.
5. Claim(s) 37-45, 47, and 50 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fallon (US 2002/0104233) in view of Huffa (US 2012/0233882), and in further view of Nakano (US 2011/0000101).
Regarding Claims 37, 47, and 50, Fallon discloses an article of footwear, comprising: an upper (114, not including 140), comprising: a first side (i.e. medial side of 114); a second side (i.e. lateral side of 114); an exterior-facing surface (i.e. outer facing surface of 114); an innermost surface (120’ & inner surface of 118) that is facing an interior foot-receiving void of the article of footwear; an instep area (i.e. center area of 114) extending between the first side and the second side (as seen in Fig.2-3); a first pair of lace apertures (132,134) positioned adjacent to the instep area on the first side of the upper, the first pair of lace apertures extending through the exterior-facing surface and through the innermost surface (as seen in Fig.4), the first pair of lace apertures comprising a first lace aperture (132) and a second lace aperture (134) that are offset along a lateral orientation of the upper and that are offset along a longitudinal orientation of the upper (as seen in Fig.3); a lace (130) that enters through the first lace aperture, then extends along the innermost surface of the upper, and then exits through the second lace aperture, on the first side (as seen in Fig.4); and a sole (112) attached to the upper (as seen in Fig.2 & 4). Fallon does not disclose the upper comprising a knitted component incorporated into the instep area and into at least part of the first side and into at least part of the second side of the upper. However, Huffa teaches an upper (120) that is formed entirely from a knitted component (130/150)(as seen in Fig.2; para.37-39).
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 upper material of Fallon for the knit upper material of Huffa, as a simple substitution of one well known type of upper material for another, in order to yield the predictable result of providing a durable and comfortable upper material for a user. 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.
Fallon and Huffa disclose the invention substantially as claimed above. Fallon does not disclose the innermost surface is exposed to an interior foot-receiving void of the article of footwear; wherein the innermost surface, at the instep area of the upper, is adapted to contact a foot of a wearer or a sock covering the foot of the wearer in an as-worn configuration; and wherein the lace, as it extends along the innermost surface of the upper, is exposed to the interior foot-receiving void of the article of footwear. However, Nakano teaches a shoe upper (12) that may or may not include a liner (para.29 & 44).
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 upper of Fallon to omit the liner/lining, as taught by Nakano, in order to provide a lightweight upper for sporting purposes. When modified, Fallon teaches the innermost surface is exposed to an interior foot-receiving void of the article of footwear; wherein the innermost surface, at the instep area of the upper, is adapted to contact a foot of a wearer or a sock covering the foot of the wearer in an as-worn configuration; and wherein the lace, as it extends along the innermost surface of the upper, is exposed to the interior foot-receiving void of the article of footwear.
Regarding Claim 38, Fallon discloses an article of footwear of claim 37, wherein the lace (130) exits the second lace aperture on the first side to then extend continuously across the exterior-facing surface of the upper to the second side of the upper to then enter into a lace aperture (136) on the second side of the upper (as seen in Fig.2 & 4).
Regarding Claim 39, Fallon discloses an article of footwear of claim 38, wherein each lace aperture of the first pair of lace apertures (132,134) extends through a common layer (i.e. material of 114) of the upper on the first side (as seen in Fig.4), wherein the common layer integrally extends from the first side, across the instep area, and to the second side, wherein the exterior-facing surface is continuous between the common layer and the instep area (as seen in Fig.2-3).
Regarding Claim 40, Fallon discloses an article of footwear of claim 39, wherein the lace aperture (136) on the second side of the upper extends through the common layer (as seen in Fig.4).
Regarding Claim 41, Fallon discloses an article of footwear of claim 37, wherein the first lace aperture (132) and the second lace aperture (134) each extend entirely through the upper (as seen in Fig.4).
Regarding Claim 42, When in combination, Fallon, Huffa, and Nakano teach an article of footwear of claim 41, wherein, when the lace (130) extends along the innermost surface of the upper (as seen in Fig.4 and modified by Nakano), the lace is adapted to directly contact a foot of a wearer or a sock covering the foot of the wearer in an as-worn configuration (Fallon as modified by Nakano teaches the lace would be in contact with a wearer or sock in an as-worn configuration).
Regarding Claim 43, When in combination, Fallon and Huffa teach wherein the upper comprises a polymer layer (Huffa: 139; para.50-51) on the first side of the upper and on the second side of the upper (of modified Fallon)(as seen in Fig.3 of Fallon and Fig.8B & 9 of Huffa). Fallon and Huffa do not explicitly disclose wherein the knitted component comprises an elastic yarn in at least the instep area of the upper. However, Huffa teaches selecting yarns to impart different properties throughout areas of an upper, such as elastic yarns (para.47).
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 instep area modified Fallon to have an elastane yarn, as taught by Huffa, in order to provide an upper with substantial stretch and recovery to withstand the wear-and-tear of use.
Regarding Claim 44, Fallon discloses an article of footwear of claim 43, wherein the upper comprises a plurality of pairs of lace apertures (132,134) comprising the first pair of lace apertures (132A & 134’A’) and a second pair of lace apertures (132B & 132’B’) positioned immediately adjacent to the first pair of lace apertures on the first side of the upper, wherein the first lace aperture and the second lace aperture of the first pair of lace apertures are separated by a first distance (as seen in Fig.3), and wherein the first pair of lace apertures and the second pair of lace apertures are separated by a second distance (as seen in Fig.3), wherein the first distance is measured between a center of the first lace aperture and a center of the second lace aperture of the first pair of lace apertures, and wherein the second distance is measured from a center of a lace aperture of the first pair adjacent to the second pair and a center of a lace aperture of the second pair adjacent to the first pair (as seen in Fig.3). Fallon does not disclose wherein the second distance is greater than the first distance. 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 modified the second distance of Fallon to be great than the first distance, in order to provide the optimum distance for securely fastening a shoelace over a user’s foot. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
Regarding Claim 45, When in combination, Fallon and Huffa teach an article of footwear of claim 44, wherein a plurality of gaps (Huffa: i.e. spaces between knit wales as seen in Fig.8B) are opened through a first knit layer (Huffa: 138) and a second knit layer (Huffa: 139) of the upper (para.49-51), wherein the first knit layer forms at least a part of the exterior-facing surface of the upper, and wherein the second knit layer forms at least a part of the innermost surface of the upper (Huffa: as seen in Fig.8B).
Response to Arguments
Applicant's arguments filed February 20, 2026 have been fully considered but they are not persuasive.
6. Applicant’s Remarks: Applicant asserts that the inner surface 120’ of Fallon is not “an innermost surface of the article of footwear”. Applicant further argues that Fallon teaches away from an innermost surface being exposed to the foot receiving void.
Examiner’s Response: Examiner respectfully disagrees and notes that the inner surface of Fallon’s 120’ is “an innermost surface of the article of footwear”, as it is the innermost surface of 120 which is part of the footwear. Applicant’s argument that Fallon teaches away from an innermost surface being exposed to the foot receiving void, is not found persuasive as Fallon provides no critical reason for the lining and it is well known in the footwear art for laced uppers to include or exclude the use of a liner. For these reasons, Applicant’s arguments are not found persuasive.
7. Applicant’s Remarks: Applicant asserts Fallon does not disclose, teach, or suggest "a lace that extends through an inner lace aperture on the first side," "extends along an innermost surface," "exits the upper through an outer lace aperture," and "extends across the instep area into an [inner] lace aperture on the second side of the upper," as recited in claims 1 and 13. Applicant further argues the NFOA is devoid of any analysis as to how a POSITA would arrive at the claimed lacing configuration in view of the lace aperture on the second side of the upper being an inner lace aperture, any conceivable lacing configuration upon the combination of Fallon and Johnson would destroy the intended purpose of, or the principal operation of, Fallon's upper. The described purpose of Fallon's layered lacing arrangement is destroyed when modified to add another row of lace apertures, specifically, the addition of another row of lace apertures on the opposite side, exposes more of the lace and thus destroys Fallon's intended purpose of providing a smoother kicking surface with the layered effect.
Examiner’s Response: Examiner respectfully disagrees. Fallon clearly shoes in Fig.2 "a lace (130) that extends through an inner lace aperture (134) on the first side," "extends along an innermost surface (i.e. inner surface of 120’)," "exits the upper through an outer lace aperture (132)," and "extends across the instep area into an [inner] lace aperture (136) on the second side of the upper," as recited in claims 1 and 13 (see annotated Figure for clarity). Applicant’s assertion that there was no analysis as to how a POSITA would arrive at the claimed lacing configuration upon the combination of Fallon and Johnson is wholly false, see Pgs.22-24 of the Non-Final Rejection filed 10/23/2025. Additionally, the addition of a second row of lace aperture to Fallon as taught by Johnson would not destroy Fallon as the “kicking surface” on a soccer shoe is known to be the medial surface of the shoe, and the additional lace apertures of Johnson would be positioned on the lateral surface of the shoe. For these reasons, Applicant’s arguments are not found persuasive.
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In view of Applicant's amendment, the search has been updated, newly modified grounds of rejection and new prior art has been identified and applied. Applicant's arguments, which are drawn solely to the newly amended limitations, have been considered but are moot in view of the newly modified grounds of rejection and 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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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732
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