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 . Claims 1-20 are being treated on the merits.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the claimed features: 1) the article of footwear comprising "cushioning element" in claims 1-2, 6 and 8; 2) "padding region" of the cushioning element in claims 8 and 10-11; 3) "a padding region" in claim 16; and 4) the article of footwear further comprising "a padding region disposed on an interior" in claim 17, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
In claim 1, there is no antecedent basis in the specification for "a cushioning element" AND "an upper";
In claim 6, there is no antecedent basis in the specification for "wherein one or more chemical bonds are formed between the surface of the cushioning element and the surface of the upper";
In claim 8, there is no antecedent basis in the specification for "wherein the cushioning element comprises a padding region disposed on an interior of a foot opening";
In claim 10, there is no antecedent basis in the specification for "wherein the first area comprises a padding region disposed on an interior of the article of footwear";
In claim 17, there is no antecedent basis in the specification for "wherein the article of footwear further comprises a padding region disposed on an interior".
Claim Objections
Claims 1, 5, 7-12 and 15-17 are objected to because of the following informalities:
In claim 1, line 3, "first fully cured UV radiation curable material" appears to read "a first fully cured UV radiation curable material";
In claims 5, 7-12 and 15-17, "additionally wherein" appears to read "wherein".
Appropriate correction is required.
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.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being which renders the claim indefinite. for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites the article of footwear comprising "a cushioning element" AND "an upper", which renders the claim indefinite. It is unclear where the cushioning element is located. For examination purposes, the examiner has interpreted that one or more layer of material forming a foot covering above a sole structure is an upper; and any structure having a cushioning function, either in the sole structure or above the sole structure, is a cushioning element.
Claim 1 recites the limitations "a cushioning element having a surface" and "the cushioning element having a surface", which render the claim indefinite. It is unclear whether "a surface" in the limitations is referring to the same surface or different. For examination purposes, the examiner has interpreted that "a surface" can be the same surface or different surfaces.
Claim 1 recites the limitation "the surface of the upper", which renders the claim indefinite. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, the limitation has been construed to be a surface of the upper.
Claim 16 recites the limitation "a padding region disposed on an interior of the article of footwear", which renders the claim indefinite. Claim 10 recites the first area comprising a padding region disposed on an interior of the article of footwear. It is unclear whether they are referring to the same padding region or different. For clarity, when multiple terms have the same name but are intended to be distinct elements, clearly distinct labels, such as "first element" and "second element" should be used to make the distinct nature clear. Conversely, if the terms are to the same element, a consistent name should be used with "said" or "the" when referring back.
Claim 17 recites the limitation "a padding region disposed on an interior", which renders the claim indefinite. First, it is unclear which element is being referred to as to "an interior". Second, both claims 10 and 16 recite a padding region disposed on an interior of the article of footwear. It is unclear whether they are referring to the same padding region or different. For clarity, when multiple terms have the same name but are intended to be distinct elements, clearly distinct labels, such as "first element" and "second element" should be used to make the distinct nature clear. Conversely, if the terms are to the same element, a consistent name should be used with "said" or "the" when referring back.
Claim 17 recites the limitation "wherein the heel counter comprises a third microlattice structure with a higher density than the third microlattice structure", which renders the claim indefinite. It is unclear how the third microlattice structure with a higher density than the third microlattice structure itself. As such, the limitation is not examined in this Office action.
The remaining claims each depend from a rejected base claim and are likewise rejected.
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 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.
(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 1-3, 5-13 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Busgen (US 2018/0104922 A1).
Regarding claim 1, Busgen discloses an article of footwear (a shoe; figs. 9-10; paras. 0168-0169) comprising:
a cushioning element (an innermost element made of a layer of a first elastomer; see fig. 10 and annotated fig. 9; paras. 0093-0094, 0117, 0135, 0139) having a surface (an inner surface next to the foot opening; figs. 9-10) including a layer of a first material in a first area (a layer of a first elastomer; figs. 9-10), wherein the first material is first fully cured UV radiation curable material (cured; paras. 0097, 0142, 0151-0153), the cushioning element having a surface (the innermost layer and/or an outermost layer; figs. 9-10); and
an upper (outer layers forming an upper; figs. 9-10; paras. 0168-0169), wherein the first area of the cushioning element is affixed with a second area (a collar area; see annotated fig. 9) of the upper, wherein the second area is an area of the surface of the upper (an outer surface of a collar area; see annotated fig. 9), and the second area comprises a layer of a second material (a second elastomer; paras. 0063, 0093-0094, 0133, 0139), wherein the second material includes a second uncured UV radiation curable material, or a second partially cured UV radiation curable material, or a second fully cured UV radiation curable material (cured; paras. 0094, 0142, 0151-0153).
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Annotated Fig. 9 from US 2018/0104922 A1
Regarding claim 2, Busgen discloses the article of footwear of claim 1. The limitation "wherein the cushioning element has a molded shape or a cut shape" is deemed a product-by-process limitation in the claim, and determination of patentability is based on the product itself, not on its method of production. If the product in the product-by-process limitation is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113, I. In this case, the limitation does not provide any further structural or material feature for the article of footwear as to the shape.
Regarding claim 3, Busgen discloses the article of footwear of claim 1, and further discloses wherein the upper comprises one or more textiles (an interlayer or a surface portion comprising a textile; para. 0061).
Regarding claim 5, Busgen discloses the article of footwear of claim 1, and further discloses additionally wherein the first fully cured UV radiation curable material defines a first microlattice structure (a first honeycomb/lattice structure with voids forming openings 10, the voids having a size of 0.01-1 mm determined by track spacing; see fig. 10 and annotated fig. 9; paras. 0121, 0123, 0168, 0189).
Regarding claim 6, Busgen discloses the article of footwear of claim 1, and further discloses wherein one or more chemical bonds are formed between the surface of the cushioning element and the surface of the upper (paras. 0097).
Regarding claim 7, Busgen discloses the article of footwear of claim 1. Busgen does not explicitly disclose wherein the first material and the second material have differing microlattice structures from one another. However, Busgen does disclose wherein the first material and the second material have differing microlattice structures from one another (at least two material tracks can have parallel spacing or form connected, optionally geometric figures, such as hexagons, circular or non-symmetrical pores; paras. 0121, 0123, 0125). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have configured the article of footwear as disclosed by Busgen, with wherein the first material and the second material of the first and second areas have differing microlattice structures from one another, in order to impart different cushioning, stretching, and/or abrasion-resistant features in different areas of the article of footwear.
Regarding claim 8, Busgen discloses the article of footwear of claim 1, and further discloses additionally wherein the cushioning element comprises a padding region (as made of an elastomer; paras. 0093-0094) disposed on an interior of a foot opening (see annotated fig. 9; as discussed for claim 1) so as to be facing a foot of the wearer when received in the article of footwear (see annotated fig. 9; as discussed for claim 1).
Regarding claim 9, Busgen discloses the article of footwear of claim 1, and further discloses additionally wherein the second area of the upper comprises a collar (see annotated fig. 9; as discussed for claim 1) along an exterior of a foot opening of the upper (see annotated fig. 9; as discussed for claim 1).
Regarding claim 10, Busgen discloses the article of footwear of claim 1, and further discloses additionally wherein the first area comprises a padding region (as made of an elastomer; paras. 0093-0094) disposed on an interior of the article of footwear (see annotated fig. 9; as discussed for claim 1), and wherein the second area comprises a collar exterior to the padding region (see annotated fig. 9; as discussed for claim 1).
Regarding claim 11, Busgen discloses the article of footwear of claim 10. Busgen does not explicitly disclose wherein the padding region and the collar have differing microlattice structures from one another. However, Busgen does disclose wherein the first material and the second material have differing microlattice structures from one another (at least two material tracks can have parallel spacing or form connected, optionally geometric figures, such as hexagons, circular or non-symmetrical pores; paras. 0121, 0123, 0125). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have configured the article of footwear as disclosed by Busgen, with wherein the padding region of the cushioning element and the collar have differing microlattice structures from one another, in order to impart different cushioning, stretching, and/or abrasion-resistant features in different areas of the article of footwear.
Regarding claim 12, Busgen discloses the article of footwear of claim 10, and further discloses additionally wherein the collar has a higher density of microlattice structure than the padding region (the collar does not have large openings 10, while the padding region of the cushioning element has large openings 10; see annotated fig. 9; para. 0189).
Regarding claim 13, Busgen discloses the article of footwear of claim 1, and further discloses wherein the upper comprises one or more materials, the one or more materials including leather, polymers, and combinations thereof (paras. 0093-0094).
Regarding claim 20, Busgen discloses the article of footwear of claim 1, wherein the second material comprises the second fully cured UV radiation curable material (paras. 0151-0153).
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 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.
Claims 4, 7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Busgen (US 2018/0104922 A1).
Regarding claim 4, Busgen discloses the article of footwear of claim 3. Busgen does not explicitly disclose wherein the one or more textiles includes knit textiles, woven textiles, non-woven textiles, and/or combinations thereof. However, one of ordinary skill of the art would recognize that common textiles include knit textiles, woven textiles, and non-woven textiles. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected the one or more textiles as disclosed by Busgen, with wherein the one or more textiles includes knit textiles, woven textiles, non-woven textiles, and/or combinations thereof, in order to use a suitable textile material for the article of footwear. such a configuration would be considered as a mere choice of preferred material that is on the basis of its suitability for the intended use. 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, Busgen discloses the article of footwear of claim 1. Busgen does not explicitly disclose wherein the first material and the second material have differing microlattice structures from one another. However, Busgen does disclose wherein different areas of the article of footwear may have different microlattice structures (at least two material tracks can have parallel spacing or form connected, optionally geometric figures, such as hexagons, circular or non-symmetrical pores; paras. 0121, 0123, 0125). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have configured the article of footwear as disclosed by Busgen, with wherein the first material and the second material of the first and second areas have differing microlattice structures from one another, in order to impart different cushioning, stretching, and/or abrasion-resistant features in different areas of the article of footwear.
Regarding claim 11, Busgen discloses the article of footwear of claim 10. Busgen does not explicitly disclose wherein the padding region and the collar have differing microlattice structures from one another. However, Busgen does disclose wherein different areas of the article of footwear may have different microlattice structures (at least two material tracks can have parallel spacing or form connected, optionally geometric figures, such as hexagons, circular or non-symmetrical pores; paras. 0121, 0123, 0125). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have configured the article of footwear as disclosed by Busgen, with wherein the padding region of the cushioning element and the collar have differing microlattice structures from one another, in order to impart different cushioning, stretching, and/or abrasion-resistant features in different areas of the article of footwear.
Claims 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Busgen (US 2018/0104922 A1) in view of Waatti (US 2016/0242505 A1).
Regarding claim 14, Busgen discloses the article of footwear of claim 1. Busgen does not explicitly disclose additionally wherein the upper comprises a heel counter. However, Busgen does disclose where the upper is formed by printing a number of layers with variable thickness (paras. 0037-0038). Further, Waatti, in an analogous art, teaches an article of footwear (article of footwear 100; fig. 1; para. 0029; claim 1) comprising a heel counter (heel counter 2260; fig. 22; para. 0100; claim 3) integrally printed with a shoe upper (fig. 22; para. 0100; claim 3). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the article of footwear as disclosed by Busgen, with wherein the upper comprises a heel counter as taught by Waatti, in order to provide a rigid heel counter with high tensile strength thereby supporting and maintaining the shape of the heel region of the upper as well as supporting and stabilizing a wearer's heel within the article of footwear.
Regarding claim 15, Busgen and Waatti, in combination, disclose the article of footwear of claim 14. Busgen does not explicitly disclose additionally wherein the heel counter has a higher density of microlattice structure than a collar of the article of footwear. However, one of ordinary skill of the art would recognize that a heel counter should be more rigid for supporting and stabilizing functions to a shoe as well as for a wearer's foot, while a collar should be soft for providing comfort to a wearer. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the article of footwear as disclosed by Busgen, with wherein the heel counter has a higher density of microlattice structure than a collar of the article of footwear, in order to provide the heel counter with sufficient rigidity and tensile strength and a collar with sufficient softness for performing different functions as desired. Such a configuration is within the level of one of ordinary skill of the art.
Regarding claim 16, Busgen and Waatti, in combination, disclose the article of footwear of claim 14. Busgen does not explicitly disclose additionally wherein the heel counter has a higher density of microlattice structure than a padding region disposed on an interior of the article of footwear. However, one of ordinary skill of the art would recognize that a heel counter should be more rigid for supporting and stabilizing a shoe as well as a wearer's foot, while a padding region disposed on an interior of the article of footwear should be soft for providing comfort to a wearer. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the article of footwear as disclosed by Busgen, with additionally wherein the heel counter has a higher density of microlattice structure than a padding region disposed on an interior of the article of footwear, in order to provide the heel counter with sufficient rigidity and tensile strength and an interior padding region with sufficient softness for performing different functions as desired. Such a configuration is within the level of one of ordinary skill of the art.
Regarding claim 17, Busgen and Waatti, in combination, disclose the article of footwear of claim 14, and Busgen further discloses additionally wherein the article of footwear further comprises a padding region disposed on an interior (an innermost region made of a first elastomer with a first shape; see fig. 10 and annotated fig. 9; paras. 0093-0094, 0117, 0135, 0139), wherein the article of footwear further comprises a collar (see fig. 10 and annotated fig. 9) exterior to the padding region and above the heel counter (as collar is a top region of the heel area; see fig. 10 and annotated fig. 9), wherein the padding region comprises a first microlattice structure (a first honeycomb/lattice structure with voids forming openings 10, the voids having a size of 0.01-1 mm determined by track spacing; see fig. 10 and annotated fig. 9; paras. 0121, 0123, 0168, 0189), wherein the collar comprises a second microlattice structure (a second honeycomb/lattice structure; see fig. 10 and annotated fig. 9; paras. 0121, 0123, 0168, 0189).
Busgen does not explicitly disclose wherein the second microlattice structure of the collar has a higher density than the first microlattice structure of the padding region. However, one of ordinary skill of the art would recognize that a heel counter should be more rigid for supporting and stabilizing functions to a shoe as well as for a wearer's foot, while a padding region disposed on an interior of the article of footwear should be soft for providing comfort to a wearer. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the article of footwear as disclosed by Busgen, with wherein the heel counter has a higher density of microlattice structure than a padding region disposed on an interior of the article of footwear, in order to provide the heel counter with sufficient rigidity and tensile strength and an interior padding region with sufficient softness for performing different functions as desired. Such a configuration is within the level of one of ordinary skill of the art.
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Busgen (US 2018/0104922 A1) and Waatti (US 2016/0242505 A1) and further in view of Meschter (US 2015/0282564 A1).
Regarding claim 18, Busgen discloses the article of footwear of claim 1. Busgen does not disclose wherein the second material comprises the second uncured UV radiation curable material. However, Meschter, in an analogous art, teaches an article of footwear, wherein the final footwear has both cured and uncured reactive polymeric material in or on it (one or more areas of uncured reactive polymeric material 820; fig. 8C; para. 0101, 0106). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have configured the article of footwear as disclosed by Busgen, with wherein the second material comprises the second uncured UV radiation curable material as taught by Meschter, in order to provide desired thermoplastic properties to the second area (Meschter; para. 0106).
Regarding claim 19, Busgen discloses the article of footwear of claim 1. Busgen does not disclose wherein the second material comprises the second partially cured UV radiation curable material. However, Meschter, in an analogous art, teaches an article of footwear, wherein the final footwear has both cured and uncured reactive polymeric material in or on it (one or more areas of uncured reactive polymeric material 820; fig. 8C; para. 0101, 0106, 0111). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have configured the article of footwear as disclosed by Busgen, with wherein the second material comprises the second partially cured UV radiation curable material as taught by Meschter, in order to provide desired thermoplastic properties to the second area (Meschter; paras. 0106, 0111).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Additional relevant references cited on attached PTO-892 form(s) can be used to formulate a rejection if necessary. Waatti (US 2016/0242505 A1) and Dojan (US 2011/0088285 Al1) also disclose a shoe upper comprising cured mesh structures varying throughout different portions in in mesh size, mesh geometry, and/or material properties.
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/AIYING ZHAO/Primary Examiner, Art Unit 3732