Notice of Pre-AIA or AIA Status
The present application, filed on or after March 12, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
DETAILED ACTION
The present amendment, filed on September 24, 2025, in which claims 1-20 were presented for examination, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of Species III (embodiment of Fig. 7) in the reply filed on September 24, 2025 is acknowledged. The traversal is on the ground(s) that “In addition, respectfully, it is submitted that pending independent claims 1, 11, and 19 are each generic at least to species I and III, because each of claims 1, 11, and 19 includes overlapping distinctions that are not mutually exclusive; as one non-limiting example, the first and second zones and arrangement thereof. As such, it is believed that there should be no undue burden on search and examination of at least these species together.
Therefore, reconsideration of the pending restriction/election requirement is respectfully requested”. This is not found persuasive because the first and second zones from each species listed by the Examiner is shown to be shaped structurally different and located in different regions of the footwear, compared to other embodiments. This would require a search outside of the CPC and USPC classes that the elected Species falls into, leading to a serious search burden on the Examiner; unless Applicant believes the invention in Figs. 7 is an obvious variant of the invention shown in Species I (Fig. 1-4), Species II (Fig. 5-6) and Species IV (Fig. 8-10).
The requirement is still deemed proper and is therefore made FINAL.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,992,090. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations regarding the “first zone, second zone, knitted heel region, second zone having a higher degree of elasticity than the first zone, first extension, second extension” in claims 1-20 are similar in scope to claims 1-19 of US Patent 11,992,090.
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.
Claims 3, 6, 14, and 18 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.
Regarding claims 3 and 14, the limitation “the thermoplastic polymer material comprises at least one of: polyurethane; polyamide; polyolefin, and nylon” is indefinite because the term “one of” is not proceeded by “and/or”, since the term “one of” can apply to one or both of the choices.
Regarding claims 6 and 18, the limitation “the multi-layer knit structure comprises at least one of a ribbed knit structure, an interlock structure, a single jersey knit structure, and a double jersey knit structure” is indefinite because the term “one of” is not proceeded by “and/or”, since the term “one of” can apply to one or both of the choices.
Claim Rejections - 35 USC § 102
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, 2, 4, 7-13, 16, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Zavala et al. “Zavala” (US PG Pub. 2015/0047225)
Regarding claim 1, Zavala discloses an article of footwear (100), comprising: a knitted heel region (152, Fig. 1-3 and 5-6), comprising: a first zone (228, Fig. 6) comprising a thermoplastic polymer material that is fused (Par. 0068, lines: 14-20); and a second zone (230) that has a higher degree of elasticity than the first zone (Par. 0066, lines: 1-4 and Par. 0068, lines: 14-18, examiner notes the first zone has more resistance to being stretched compared to the second zone), wherein the first zone (228) extends below the second zone (230) between the second zone (230) and a sole structure (110, examiner notes as shown in Fig. 1-3 and annotated Fig. 6 above).
Regarding claim 2, Zavala discloses wherein the first zone (228) includes a yarn comprising the thermoplastic polymer material (Par. 0068, lines: 14-16).
Regarding claim 4, Zavala discloses the first zone (228) and the second zone (230) are integrally knitted with each other (examiner notes as shown in Fig. 6).
Regarding claim 7, Zavala discloses the second zone (230) comprises an elastic material (Par. 0066, lines: 1-4, and Par. 0068, lines: 10-12).
Regarding claim 8, Zavala discloses the first zone (228) includes yarns comprising a first material (Par. 0068, lines: 14-20), and wherein the second zone (230) includes yarns comprising a second material (Par. 0068, lines: 10-12) that is different than the first material (Par. 0066, lines: 1-4).
Regarding claim 9, Zavala discloses the first zone comprises a substantially inelastic material, and wherein the second zone comprises a substantially elastic material (Par. 0066, lines: 1-4, examiner notes the first zone has more resistance to being stretched compared to the second zone).
Regarding claim 10, Zavala discloses an article of footwear (100), comprising: a knitted heel region (152, Fig. 1-3 and 5-6), comprising an elongate portion comprising a first extension (see annotated Fig. 6 below) and a second extension (see annotated Fig. 6 below); and a second zone (230) comprising a greater elasticity than the first zone (Par. 0066, lines: 1-4 and Par. 0068, lines: 14-18, examiner notes the first zone has more resistance to being stretched compared to the second zone), wherein the first extension extends around a first side of the second zone (see annotated Fig. 6 below) and the second extension extends around a second side of the second zone (see annotated Fig. 6 below), and the second zone is separate from a collar portion (as shown in annotated Fig. 6 below).
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Fig. 6-Examiner Annotated
Regarding claim 11, Zavala discloses the first zone (228) and the second zone (230) are integrally knitted (examiner notes as shown in Fig. 6).
Regarding claim 12, Zavala discloses wherein the first zone (228) comprises a thermoplastic polymer material that is fused (Par. 0068, lines: 14-20).
Regarding claim 13, Zavala discloses wherein the knitted heel region (152) includes a yarn comprising the thermoplastic polymer material (Par. 0068, lines: 14-16).
Regarding claim 16, Zavala discloses the first zone (228) includes yarns comprising a first material (Par. 0068, lines: 14-20), and wherein the second zone (230) includes yarns comprising a second material (Par. 0068, lines: 10-12) that is different than the first material (Par. 0066, lines: 1-4).
Regarding claim 19, Zavala discloses an article of footwear (100), comprising: a knitted heel region (152), comprising: a first zone (228, Fig. 6) comprising a thermoplastic polymer material that is fused (Par. 0068, lines: 14-20) and that forms at least part of an outer-facing surface of the knitted heel region (as shown in Fig. 1-4 and 6); and a second zone (230) that has a higher degree of elasticity than the first zone (Par. 0066, lines: 1-4, examiner notes the first zone has more resistance to being stretched compared to the second zone), wherein the first zone extends (228) below the second zone (230) between the second zone and a sole structure of the article of footwear (110, examiner notes as shown in Fig. 1-3 and annotated Fig. 6 above), and wherein the second zone (230) is spaced from a collar portion of the article of footwear (as shown in annotated Fig. 6 above).
Regarding claim 20, Zavala discloses the knitted heel region (152) includes a yarn comprising the thermoplastic polymer material (Par. 0068, lines: 14-16).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 3, 5, 6, 14, 15, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Zavala in view of Podhajny et al. (US PG Pub. 2014/0150292).
Regarding claim 3, Zavala discloses the invention substantially as claimed above.
Zavala does not explicitly disclose the thermoplastic polymer material comprises at least one of: polyurethane; polyamide; polyolefin, and nylon.
However, Podhajny et al. “Podhajny” teaches yet another knitted article of footwear, wherein Podhajny teaches an upper (130) forming of a knitted material (par. 0031) that makes up a first zone (area of 130 at the heel of the footwear, Fig. 1-3), wherein the first zone comprises a thermoplastic polymer material of nylon (Par. 0031, lines: 17-20).
It would have been obvious for a person of ordinary skill in the art at the time of the effective filing date of the claimed invention to use nylon as taught by Podhajny as the material for the first zone of Zavala. A person of ordinary skill would have been motivated to do so, with a reasonable expectation of success, because nylon was a well-known material for articles of footwear as taught by Podhajny, in order to enhance properties of the footwear, such as abrasion resistance (Par. 0031, lines: 17-23).
Regarding claim 5, Zavala discloses the invention substantially as claimed above.
Zavala does not disclose the knitted heel region comprises a multi-layer knit structure.
However, Podhajny et al. “Podhajny” teaches yet another knitted article of footwear, wherein Podhajny teaches a knitted heel region (area of 130 at the heel of the footwear, Fig. 1-3) comprises a multi-layer knit structure (Par. 0039, lines: 16-24, examiner notes a “double knit circular knit jacquard” is a type of multi-layer knit structure).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the heel region as disclosed by Zavala, by altering the construction of the knitted component to a multi-layer knit structure as taught by Podhajny, in order to enhance the footwears durability.
Regarding claim 6, Zavala in view of Podhajny disclose the multi-layer knit structure comprises at least one of an interlock structure (Par. 0039, lines: 16-24 of Podhajny, examiner notes a “double knit circular knit jacquard” is a type of interlocking structure with the loops of yarns connecting with other loops of yarns).
Regarding claim 14, Zavala discloses the invention substantially as claimed above.
Zavala does not explicitly disclose the thermoplastic polymer material comprises at least one of: polyurethane; polyamide; polyolefin, and nylon.
However, Podhajny et al. “Podhajny” teaches yet another knitted article of footwear, wherein Podhajny teaches an upper (130) forming of a knitted material (par. 0031) that makes up a first zone (area of 130 at the heel of the footwear, Fig. 1-3), wherein the first zone comprises a thermoplastic polymer material of nylon (Par. 0031, lines: 17-20).
It would have been obvious for a person of ordinary skill in the art at the time of the effective filing date of the claimed invention to use nylon as taught by Podhajny as the material for the first zone of Zavala. A person of ordinary skill would have been motivated to do so, with a reasonable expectation of success, because nylon was a well-known material for articles of footwear as taught by Podhajny, in order to enhance properties of the footwear, such as abrasion resistance (Par. 0031, lines: 17-23).
Regarding claim 15, Zavala discloses the invention substantially as claimed above.
Zavala does not disclose the first zone comprises yarns having a first denier, and wherein the second zone comprises yarns having a second denier, such that the yarns having the second denier impart a higher degree of elasticity to the second zone compared to the first zone.
However, Podhajny et al. “Podhajny” teaches yet another knitted article of footwear, wherein Podhajny teaches a first yarn having a first denier (135, Par. 0034, lines: 15-16) and a second yarn having a second denier (134, Par. 0034, lines: 12-13), such that the yarns having the second denier impart a higher degree of elasticity compared to the yarns of the first denier (Par. 0034, lines: 12-14, examiner notes one of ordinary skill in the art would recognize yarn 134, which is an of an elastic material, has a higher degree of elasticity compared to yarn 135, which is made of polyester).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second zone as disclosed by Zavala, by incorporating a yarn with a denier that imparts a higher degree of elasticity in the second zone compared to a yarn with a different denier in the first zone as taught by Podhajny, in order to enhance the user fit of the footwear.
Regarding claim 17, Zavala discloses the invention substantially as claimed above.
Zavala does not disclose the knitted heel region comprises a multi-layer knit structure.
However, Podhajny et al. “Podhajny” teaches yet another knitted article of footwear, wherein Podhajny teaches a knitted heel region (area of 130 at the heel of the footwear, Fig. 1-3) comprises a multi-layer knit structure (Par. 0039, lines: 16-24, examiner notes a “double knit circular knit jacquard” is a type of multi-layer knit structure).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the heel region as disclosed by Zavala, by altering the construction of the knitted component to a multi-layer knit structure as taught by Podhajny, in order to enhance the footwears durability.
Regarding claim 18, Zavala in view of Podhajny disclose the multi-layer knit structure comprises at least one of an interlock structure (Par. 0039, lines: 16-24 of Podhajny, examiner notes a “double knit circular knit jacquard” is a type of interlocking structure with the loops of yarns connecting with other loops of yarns).
Conclusion
The prior art made of record and not relied upon is considered pertinent (See PTO-892) to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAKOTA MARIN whose telephone number is (571)272-3529. The examiner can normally be reached Mon.-Fri., 9:00AM-6:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ALISSA TOMPKINS can be reached on (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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/DAKOTA MARIN/Examiner, Art Unit 3732
/ALISSA J TOMPKINS/Supervisory Patent Examiner, Art Unit 3732