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 .
Response to Arguments
Applicant's arguments filed 2/3/26 have been fully considered but they are not persuasive.
Applicant’s first argument:
Claims 1-20 stand rejected on the ground of non-statutory double patenting as allegedly being unpatentable over claims 1-20 of U.S. Patent No. 12,043,929. Without agreeing that the pending claims 1-20 are patentability indistinct from the claims of U.S. Patent No. 12,043,929 and only to advance prosecution, a terminal disclaimer has been submitted herewith in compliance with 37 C.F.R. § 1.321(c). Therefore, withdrawal of this double patenting rejection is requested.
Office’s response:
While a terminal disclaimer may overcome the non-statutory double patenting rejection. No such terminal disclaimer has been filed.
Applicant’s second argument:
Applicant respectfully disagrees with the Office’s assertion that FIGS. 5A and 5B of Neher discloses an inlaid yarn (11a) that forms loops such as 14a (see, e.g., Office Action at p. 5). Instead, the specification of Neher expressly describes element 11a as a yarn that alternates between float loops and stitches (see Neher at col. 6, ll. 28-48), which is consistent with the
illustrations in FIG. 5A and 5B showing yarns 11a and 12a alternately forming stitches at successive needles (see, e.g., annotated FIG. 5A below). Thus, in the context of the disclosure of Neher, yarn 11a (and 12a), being regularly and frequently stitched together with the courses of the knit structure, is not an “inlaid” yarn.
Office’s response:
Yarns 11a and 12a are “inlaid” across every other wale to form plush loops. Yarns 11a and 12a may also provide stitches on other wales. However this does not take away from the fact that the yarns are “inlaid” across some wales to the extent claimed. US patent 4,237,707 to Safrit et al. has been cited as extrinsic evidence showing an “inlaid” yarn (E) may also form stitches (e.g. at W19, W20, W21) as seen at least in figure 3 and noted at column 6, lines 17-24.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,043,929. Although the claims at issue are not identical, they are not patentably distinct from each other because the application’s independent claim 1 is broader at least for the reason that it does not recite a “wherein the first yarn has a first stitch sequence within each course of the plurality of courses, the first stitch sequence comprising a quantity of knit stitches and a quantity of missed stitches forming at least part of the first surface, wherein the second yarn has a second stitch sequence within each course of the plurality of courses, the second stitch sequence comprising a quantity of tuck stitches forming at least part of the second surface, each tuck stitch of the second yarn being looped with a knit stitch of the first yarn, wherein each of the first stitch sequence and the second stitch sequence is repeated at least once in each course of the plurality of courses.” As such the claims of the patent encompass those of the application and the claims of the application are not patentably distinct from those of the patent.
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)(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 1-7, 17, 18, 21 and 22 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Neher (US 5,186,025).
Regarding claims 1 and 17, as seen for example in the embodiment of figures 5A, 5B, Neher teaches the knitted component as claimed including a first surface and a second surface that is opposite the first surface (formed by ground yarns 1 and 5); a plurality of courses each comprising a first yarn (1) and a second yarn (5); and a plurality of loops (14A) extending outward from the second surface, each loop being formed of a third yarn (11A) that is inlaid within each of the plurality of courses. Note that Neher is useful as an article of apparel (column 1, paragraph 2). Regarding claims 2 and 18, the plurality of loops are angularly aligned in adjacent courses. Regarding claim 3, the plurality of loops are aligned in a wale-wise direction in adjacent courses. Regarding claim 4, the plurality of loops are offset in adjacent courses. Regarding claim 5, the plurality of loops are offset in a wale-wise direction in adjacent courses. Regarding claim 6, the first yarn has a first stitch sequence within each course of the plurality of courses, the first stitch sequence comprising a quantity of knit stitches and a quantity of missed stitches forming at least part of the first surface. Regarding claims 7 and 22, the embodiment of figure 14 and Neher’s claims 18 provides a quantity of tuck stitches forming at least part of the second surface, each tuck stitch of the second yarn being looped with a knit stitch of the first yarn. Regarding claim 21, the plurality of loops are locked into place by stitches of the second yarn.
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 8-16, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Neher in view of McFarland, II et al. (US 2020/0048800)
Neher teaches the knitted component as claimed including a first surface and a second surface that is opposite the first surface (formed by ground yarns 1 and 5); a plurality of courses each comprising a first yarn (1) and a second yarn (5); and a plurality of loops (14A) extending outward from the second surface, each loop being formed of a third yarn (11A) that is inlaid within each of the plurality of courses. Although Neher’s knit fabric is used for apparel (column 1, paragraph 2), it is not specifically set forth as being an upper of a shoe. McFarland teaches a shoes characteristically have uppers formed of knit components. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the knitted apparel fabric of Neher as a shoe upper as shown by McFarland for the purpose of providing a shoe with the specific optimized decorative appeal of the plush knitted fabric of Neher. Regarding claim 9, the plurality of loops are aligned in adjacent courses. Regarding claim 10, the plurality of loops are aligned in a wale-wise direction in adjacent courses. Regarding claim 11, the plurality of loops are offset in adjacent courses. Regarding claim 12, the plurality of loops are offset in a wale-wise direction in adjacent courses. Regarding claims 13 and 19, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the second surface with the extending loops on at least part of an interior surface of the upper for the purpose of having a plush or pile cushioning effect on the interior of the shoe. Regarding claims 14 and 20, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the first yarn as fusible yarn that is at least partially fused with the second yarn as is typical in knitted uppers as shown by McFarland for the purpose increasing stiffness, strength and water resistance as noted by McFarland. Regarding claim 15, the first yarn has a first melting temperature and the third yarn has a third temperature that is greater than the first melting temperature, wherein the third temperature is a melting temperature or a decomposition temperature of the third yarn. Regarding claim 16, the combined teachings of Neher and McFarland provide for a first area of the knitted component, wherein a second area of the knitted component is integrally knitted with the first area and does not include loops extending outward from the second surface.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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 extension fee 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 date of this final action.
Applicant is reminded that all business with the Patent and Trademark Office should be transacted in writing. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt. 37 C.F.R. 1.2
Further it is noted that a complete response must satisfy the requirements of 37 C.F.R. 1.111, including:
-The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.
-A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
-Moreover, The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 2163.06, MPEP 714.02. The "disclosure" includes the claims, the specification and the drawings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Danny Worrell whose telephone number is (571)272-4997. The examiner can normally be reached on M-Th.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached on 571-272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANNY WORRELL/Primary Examiner, Art Unit 3732
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