DETAILED ACTION
This non-final rejection is responsive to the claims filed 30 July 2024. Claims 1-20 are pending. Claims 1, 11, and 17 are independent claims.
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 .
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-3 and 5-17 of 17/213,691. Although the claims at issue are not identical, they are not patentably distinct from each other.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Clarkson (US 2015/0366293 A1) hereinafter known as Clarkson in view of Chen (US 2010/0299616 A1) hereinafter known as Chen.
Regarding independent claim 1, Clarkson teaches:
selecting a base footwear structure, the base footwear structure comprising an upper that is configured to be coupled to a sole structure; (Clarkson: Fig. 2 and ¶[0030] and ¶[0050]-¶[0051]; Clarkson teaches selecting base models of footwear which includes an upper and a sole.)
retrieving a model of an article of footwear to be formed from the selected base footwear structure, wherein the model is stored in the computer-readable medium; (Clarkson: Fig. 4 and ¶[0050] and ¶[0088]; Clarkson teaches retrieving a data file corresponding to a base footwear design.)
selecting one or more design elements from a plurality of available design elements associated with the model, wherein the one or more design elements are design elements to be added to or modified on the base footwear structure to form the article of footwear; (Clarkson: Fig. 4 and ¶[0064] and ¶[0089]-¶[0090]; Clarkson teaches receiving a design input assigning one or more knit structures to a footwear design.)
updating the model based on the one or more selected design elements; and (Clarkson: Fig. 4 and ¶[0093]; Clarkson teaches applying the design input.)
generating the article of footwear from the updated model, (Clarkson: ¶[0038], ¶[0051], and ¶[0085]-¶[0086]; Clarkson teaches supplying the design to a knitting machine.)
wherein the upper comprises a base material, an internal support structure comprising one or more reinforcement elements or linings, ... and wherein the one or more selected design elements includes a selection of one or more structures that define the one or more reinforcement elements or linings, ... . (Clarkson: Fig. 2 and ¶[0021] and ¶[0055]-¶[0056]; Clarkson teaches an upper with different material and upper thickness characteristics and the user design changing the knit structures of the upper.)
Clarkson does not explicitly teach but Chen teaches:
... a closure element arranged at a heel portion of the upper, and a lacing region, and wherein the one or more selected design elements includes ... the closure element, and the lacing region. (Chen: Fig. 9 and ¶[0067]-¶[0068]; Chen teaches the user selecting the heel portion or the eyelets/laces.)
Clarkson and Chen are in the same field of endeavor as the present invention, as the references are directed to customizing shoe design. It would have been obvious, before the effective filing date of the claimed invention, to a person of ordinary skill in the art, to combine a a method for customizing shoes which allows the user to select the upper part of the shoe and customize it as taught in Clarkson with further allowing the user customize the heel and lace parts as taught in Chen. As such, it would have been obvious to one of ordinary skill in the art to modify the teachings of Clarkson to include teachings of Chen because the combination would allow customizing different parts of the shoe, as suggested by Chen: ¶[0068].
Regarding claim 2, Clarkson in view of Chen further teaches the non-transient computer-readable medium of claim 1.
Chen further teaches:
wherein the base footwear structure further comprises the sole structure, the sole structure coupled to the upper. (Chen: ¶[0018]; Chen teaches sole elements of the shoe.)
Regarding claim 3, Clarkson in view of Chen further teaches the non-transient computer-readable medium of claim 2.
Chen further teaches:
wherein the sole structure comprises a midsole and an outsole and wherein the one or more selected design elements includes a cushioning element for the midsole. (Chen: ¶[0018]; Chen teaches sole elements of the shoe, which includes the midsole and outsole. ¶[0068] further teaches allow selection of fluid-filled bladders in the midsole, which is interpreted as cushioning.)
Regarding claim 4, Clarkson in view of Chen further teaches the non-transient computer-readable medium of claim 1.
Clarkson further teaches:
wherein selecting the one or more design elements includes selecting a footwear design model from a plurality of available footwear design models stored in the model, wherein each footwear design model includes a combination of predetermined design elements to be updated on or added to the base footwear structure. (Clarkson: Fig. 4 and ¶[0088]; Clarkson teaches a data file that identifies various visual and physical attributes associated with the base footwear design.)
Regarding claim 5, Clarkson in view of Chen further teaches the non-transient computer-readable medium of claim 1.
Clarkson further teaches:
wherein selecting the one or more design elements includes individually selecting one or more design elements from one or more lists of design elements stored in the model. (Clarkson: ¶[0056]-¶[0057], ¶[0065], and ¶[0068]; Clarkson teaches selecting design elements.)
Regarding claim 6, Clarkson in view of Chen further teaches the non-transient computer-readable medium of claim 1.
Chen further teaches:
wherein the one or more selected design elements include one or more of a color of the upper, a material of the upper, a color of the sole structure, a style of the sole structure, and an overlay for the upper. (Chen: ¶[0065] and ¶[0068]; Chen teaches changing the color of the shoe and selecting the logo color (i.e. overlay).)
Regarding claim 7, Clarkson in view of Chen further teaches the non-transient computer-readable medium of claim 6.
Chen further teaches:
wherein the one or more selected design elements includes the overlay for the upper and wherein the selecting the one or more design elements further comprises selecting one or more of a color, material, shape, and size of the selected overlay from a list of available options stored in the model. (Chen: ¶[0065] and ¶[0068]; Chen teaches changing the color of the shoe and selecting the logo color (i.e. overlay).)
Regarding claim 8, Clarkson in view of Chen further teaches the non-transient computer-readable medium of claim 1.
Chen further teaches:
wherein the one or more selected design elements includes a sole structure having a predetermined style, the predetermined style of the selected sole structure including one or more of a shape, size, and patterning of the sole structure. (Chen: ¶[0068]; Chen teaches sole features such as tread design, midsole thickness, etc...)
Regarding claim 9, Clarkson in view of Chen further teaches the non-transient computer-readable medium of claim 1.
Clarkson further teaches:
wherein selecting the base footwear structure includes selecting one base footwear structure from a finite number of distinct base footwear structures, wherein each of the distinct base footwear structures includes an upper configured to be coupled to a sole structure, and wherein each of the distinct base footwear structures has a differently structured upper from each of the other distinct base footwear structures in the finite number of distinct base footwear structures. (Clarkson: ¶[0029]-¶[0030] and ¶[0050]-¶[0051]; Clarkson teaches selection of base models which are available to the user. A lasts library contains lasts of various shapes and forms and stores data files corresponding to base footwear designs. The base footwear designs may include footwear designs that were previously created by the user or other users and that are available to select.)
Regarding claim 10, Clarkson in view of Chen further teaches the non-transient computer-readable medium of claim 1.
Clarkson further teaches:
wherein selecting the base footwear structure includes selecting one base footwear structure from a finite number of distinct base footwear structures, wherein each of the distinct base footwear structures includes an upper and a sole structure coupled to the upper, ... . (Clarkson: ¶[0029]-¶[0030] and ¶[0050]-¶[0051]; Clarkson teaches selection of base models which are available to the user. A lasts library contains lasts of various shapes and forms and stores data files corresponding to base footwear designs. The base footwear designs may include footwear designs that were previously created by the user or other users and that are available to select.)
Chen further teaches:
... and wherein each of the distinct base footwear structures has a sole structure that is distinct from each of the other distinct base footwear structures. (Chen: ¶[0020], ¶[0049], and ¶[0074]; Chen teaches saving and sharing designs with other users, which includes the sole structure.)
Regarding claims 11-20, these claims recite a non-transient computer-readable medium that performs the function of claims 1-10; therefore, the same rationale for rejection applies.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX OLSHANNIKOV whose telephone number is (571)270-0667. The examiner can normally be reached M-F 9:30-6.
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/ALEKSEY OLSHANNIKOV/Primary Examiner, Art Unit 2118
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