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 .
Election/Restrictions
Applicant’s election of Group I, Species A and Sub-species A1 (citing claims 1-12 as being readable thereon) in the reply filed on January 2, 2026 is acknowledged. Applicant did not specify whether the election was being made with traverse. Because Applicant did not distinctly and specifically point out any supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Examiner notes that Applicant included claim 10 in the listing of elected claims. However, claim 10 appears to be directed to a non-elected species, since the elected species involves the hole (20g) as being disposed in the instep region, and claim 10 requires that the hole is in a heel portion of the shoe. When describing, in the Specification, that the hole can be in the heel portion of the shoe, Applicant is discussing the embodiments of Figs. 9 (¶ 0057) and 18 (¶ 0067), both of which are representative of non-elected species/sub-species A2 and B2. Accordingly, claim 10 is also withdrawn from further consideration as being directed to a non-elected species.
Response to Preliminary Amendment
The preliminary amendments filed on July 11, 2024 have been considered and an action on the merits follows. As directed by the preliminary amendment, and in light of the above-noted election, claims 1, 3-6, 8, 9 and 12-17 have been amended; claims 10 and 13-18 are withdrawn from further consideration; and claims 18 has been added. Accordingly, claims 1-18 are pending in this application, with an action on the merits to follow regarding claims 1-9, 11 and 12.
Specification
The use of the term “Kevlar” (¶ 0027), which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be fully capitalized wherever it appears and, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term (Examiner suggests changing “Kevlar (registered trademark)” to recite “KEVLAR®, a type of para-aramid fiber”).
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Rejections - 35 USC § 112(b)
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.
Claim 1 (and claims 2-9, 11 and 12 at least due to dependency from claim 1) is 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 claim 1 (line 2), Applicant recites “a cloth-like base member” (emphasis added). The adjective “cloth-like” is unclear, and the metes and bounds of the claim are indefinite. What material would constitute “cloth-like”? One of ordinary skill in the art may consider an actual cloth/fabric to be “cloth-like”, but since a cloth/fabric already is a type of cloth, it would be confusing as to how it could be described as “cloth-like” when it is already a cloth. The Specification does not appear to provide any further clarifying subject matter as to how one should interpret “cloth-like”. Correction is required. For purposes of examination, the limitation will be interpreted as best as can be understood when applying any prior art thereagainst, and an actual cloth/fabric material will be considered as being “cloth-like” at least to some degree.
Further regarding claim 1, Applicant recites “the layer” (lines 6 and 8). Earlier in the claim, Applicant positively recites “at least one layer”, which implies there may be more than one layer. In such an event there is more than one layer, the mere reference to “the layer” would be indefinite. Correction is required. Examiner suggests reciting “the at least one layer” instead of “the layer”. Examiner notes that dependent claims 5 (twice), 6, 9 and 12 also recite “the layer”, and these claims are likewise indefinite.
Further regarding claim 1, Applicant recites “a second portion disposed in a portion of the linear member other than the first portion and not fixed to the layer”. It is unclear how the second portion would not be fixed to the layer (i.e. the at least one layer) when another part of the linear member would be fixed to the [at least one] layer (i.e. at the first portion of the linear member, as recited in lines 5-6). All components of the claimed upper appear to be fixed to one another, at least via intermediate structure if not directly affixed. Correction is required. Examiner suggests reciting “not directly fixed to the at least one layer” as one potential remedy.
Further regarding claim 1, Applicant recites “the instep portion”, “the shoe”, “the medial foot side”, “the lateral foot side” and “the remainders” (lines 11-14). All of these limitations lack clear antecedent basis in the claim. Correction is required. Further, the preamble of claim 1 is directed to “an upper”, as opposed to an upper that is actively part of an overall shoe. Any reference of any element as being actively in relation to “the shoe” is indefinite and should be amended to be “adapted to be” in the proposed relation to the shoe and the shoe’s parts (i.e. instep portion, lateral foot side, medial foot side, etc.) Examiner notes that dependent claims 3 and 11 also recite subject matter of the claimed upper’s parts in relation to what is assumed to be a hypothetical shoe’s parts, and these claims are likewise indefinite.
Further, regarding claim 1’s reference to “the remainders of the linear members are extend across” (line 13), it is unclear as to what “the remainders” of the linear members is being intended to refer. Also, should the term “are” be deleted? Correction is required. For purposes of examination, the limitation will be interpreted as best as can be understood when applying any prior art thereagainst.
Further regarding claim 1, Applicant recites “the first portion of at least one of the linear members are disposed in in at least both ends of the respective linear members”. First, it is unclear whether any terms or words are missing from this phrase, or if the emphasized instance of “are” should be recited as “is”, since “the first portion” is a singular term (i.e. hence, the possibility of using “is” instead). Second, it appears “in in” should just recite “in”. Third, the phrase “the respective linear members” refers to multiple linear members, when the previous part of the excerpt only refers to “at least one” of the linear members. The phrase “the respective linear members” should perhaps recite “the respective at least one of the linear members” to match the earlier-recited syntax. Fourth, the term “both ends” is unclear because the linear members are recited as having “at least one end portion”, and it is indefinite as to whether “both ends” should recite “both end portions” or the “ends” should be interpreted as some other type of ends of the linear members. For purposes of examination, “both ends” will be interpreted as “wherein the at least one end portion of each of the plurality of linear members includes two end portions” and that the first portion of at least one of the linear members is disposed in at least both end portions of the respective linear members, as best as can be understood.
Regarding claim 3, Applicant recites “the linear members partly and the remainders of the linear members are disposed symmetrically with respect to the shoe center axis”. This language is confusing. Examiner suggests Applicant expand this language out into a clearer statement that explicitly describes “the linear members partly” and “the remainders of the linear members”. Correction is required. For purposes of examination, the limitation will be interpreted as best as can be understood when applying any prior art thereagainst.
Regarding claim 4, Applicant recites “remainders of the second portions”. It is unclear as to what previous language describing the second portions divided the second portions into some subsection to which there would be “remainders” left over. Correction is required. For purposes of examination, the limitation will be interpreted as best as can be understood when applying any prior art thereagainst.
Regarding claim 5, Applicant recites “wherein the layer is one layer”. As noted above, the phrase “the layer” is indefinite since claim 1 recites “at least one layer”. This limitation is also indefinite because claim 1 permits “at least one layer”, which would indicate additional layers may be present. Claim 5 appears to contradict this limitation, if the intention is to limit the at least one layer to being one layer. Correction/clarification is required. Since no other claim language ever references “the at least one layer” (i.e. all just refer to “the layer”, as noted above), Examiner suggests amending claim 1 to recite “a layer” instead of “at least one layer”. The open-ended transitional phrase “comprising” in claim 1 would not prevent additional layers from being present, if Applicant’s intention is for claim 1 to not be limited to the layer being one layer. Examiner notes that, if Applicant adopts this suggestion of amending claim 1 to recite “a layer”, then claim 6 should be amended so that the subject matter is clear, since claim 6 currently recites that “the layer is a first layer and a second layer”.
Regarding claim 6, Applicant recites “wherein the layer includes a first layer and a second layer disposed with a gap from the first layer”. It is unclear as to what “a gap from the first layer” is intended to mean, let alone how a second layer would be “disposed with” such a gap from the first layer. Correction is required. For purposes of examination, the limitation will be interpreted as best as can be understood when applying any prior art thereagainst.
An effort has been made to identify all indefinite language with the pending claims. However, Examiner notes the above listing of 35 U.S.C. § 112 rejections may not be conclusive and Applicant is required to review every claim for compliance to 35 U.S.C. § 112(b) so as to facilitate a clear understanding of the claimed invention and proper application of the prior art.
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.
Claims 1-9, 11 and 12, as best as can be understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sokolowski et al. (hereinafter “Sokolowski”) (US 2008/0110049).
Regarding independent claim 1, Sokolowski discloses an upper (#30; Figs. 1-7 embodiment in Sokolowski) comprising: a cloth-like base member including at least one layer (medial textile element #50, lateral textile element #40 and central textile element #60 form at least one layer for the upper as a base member; since it is a textile, it is “cloth-like” as best as “cloth-like” can be understood); and a plurality of linear members disposed independently of each other (lace elements #33 are a plurality of linear members that are disposed independent of one another), wherein each of the linear members includes: a first portion disposed in at least one end portion of the linear member along a length direction and fixed to the layer (see annotated Fig. 4B below, which identifies a representative lace element #33 (i.e. linear member) as having a first portion disposed in two end portions along a length direction of the lace element; lace element #33 is fixed to the layer (#50/40) through channels #44/54 in the base layer; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)); and a second portion disposed in a portion of the linear member other than the first portion and not [directly] fixed to the layer (see annotated Fig. 4B below; the lace elements #33 are not rigidly/directly affixed to the layer (i.e. they sit within channels #44/54 formed in the layer), second portion is in a portion of the lace element that is not the first portion, as identified), a part or all of the second portion of at least one of the linear members is exposed to an outside of the base member (loops #35 are exposed; Examiner notes that the term "part" is very broad and merely means "a portion, division, piece, or segment of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)), the linear members partly extend across the instep portion of the shoe from the medial foot side toward the lateral foot side (lace elements have a part that extends across the instep portion from the medial side #50 toward the lateral side #40, at least in the central section #36 of each lace element #33), the remainders of the linear members […] extend across the instep portion of the shoe from the lateral foot side toward the medial foot side (lace elements have a remainder part that extends across the instep portion from the lateral side #40 toward the medial side #50, at least in the central section #36 of each lace element #33), and the first portion of at least one of the linear members are disposed in in at least both [end portions] of the respective linear members (as shown in annotated Fig. 4B below, part of the first portion of each lace element #33 (i.e. linear members) is disposed on both end portions of the lace elements, as best as this limitation can be understood).
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Regarding claim 2, Sokolowski discloses that the second portions of the linear members are partly disposed to be concentrated at one position and exposed to the outside of the base member (see annotated Fig. 3 below; loops #35 (part of the second portions) are exposed to the outside of the base member of the upper (i.e. medial and lateral textiles #50/40); Examiner notes that the term "position" is very broad and merely means "a place or location" (Noun Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)).
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Regarding claim 3, Sokolowski discloses that in a planar view, a perpendicular line along a front-rear direction of a shoe passing through the center of a foot width direction of the shoe serves as a shoe center axis, the linear members partly and the remainders of the linear members are disposed symmetrically with respect to the shoe center axis (see Fig. 3).
Regarding claim 4, Sokolowski discloses that remainders of the second portions of the linear members are disposed so as to be dispersed from each other (see Figs. 1-3; all lace elements #33 are dispersed from one another, in that they are not joined together directly).
Regarding claim 5, Sokolowski discloses that the layer is one layer, and the second portions of the linear members are exposed on a surface of the layer (as best as this limitation can be understood, there is one layer present (either of #40 or #50 is one layer) and the loops #35 of the lace elements #33 are exposed on a surface thereof).
Regarding claim 6, Sokolowski discloses that the layer includes a first layer and a second layer disposed with a gap from the first layer (medial channels #54 and lateral channels #44 are defined by two layers that are formed via flat knitting (¶ 0010, 0035, 0043, 0044, 0048); the space within the two layers that define the channels is a “gap from the first layer” as best as this limitation can be understood), and the second portions of the linear members are positioned between the first layer and the second layer (see annotated Fig. 4B above, which shows that at least part of the second portions are positioned within the channels, which is between the first and second layers).
Regarding claim 7, Sokolowski discloses that the second portions of the linear members each include a linear portion extending linearly (the identified second portions of the lace elements #33 (see Fig. 4B above) include at least one arbitrary linear portion that extends linearly; see annotated partial view of Fig. 3 below).
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Regarding claim 8, Sokolowski discloses that a curved path extending in a curved shape is disposed between the first layer and the second layer, and the second portions of the linear members each include a curved portion passing through the curved path (see annotated Fig. 4B above; each lace element has a curved shape from the perspective when viewing the cross-section of the shoe upper).
Regarding claim 9, Sokolowski discloses that a hole is disposed in at least one of the first layer and the second layer to expose the second portion of at least one of the linear members to an outside of the layer (the top exit point of the channels #54/44 represents a hole in at least one of the first and second layers; the loops #35 are exposed through the top of the channels).
Regarding claim 11, Sokolowski discloses that the hole is disposed in the instep portion of the shoe (see Fig. 3, which shows the loops (and their accompanying top holes of their channels) in an arbitrary instep region of the shoe).
Regarding claim 12, Sokolowski discloses that an opening communicating with the gap between the first layer and the second layer is disposed in an outer edge of the base member to expose the second portion of at least one of the linear members to an outside of the layer (the top exit point of the channels #54/44 represents an opening in between the first and second layers in an outer edge of the base member; the loops #35 are exposed through the openings).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All art cited on the PTO-892 and not relied upon in an art rejection above is deemed relevant in the field of footwear uppers with linear members that have exposed portions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMESON COLLIER whose telephone number is (571)270-5221. The examiner can normally be reached Monday - Friday 8 am - 5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CLINTON OSTRUP can be reached at (571)272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMESON D COLLIER/ Primary Examiner, Art Unit 3732