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 Amendment
Applicant’s amendment filed on 1/30/2026 has been received; Claims 1-5, 7-19, 21 & 22 are pending.
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 1-20 of U.S. Patent No. USPN 12,053,046. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are in regards to similar claim matter even though different term language is used. Also, the current application is broader than the patented invention.
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.
Claims 1-3, 5, 8-11, 18, 19, 21 & 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Turner (US 2013/0340484).
Regarding Claim 1, Turner discloses a textile (Figure 1), comprising: a first scallop element (1, see annotated Figure 1A below); a second scallop element (2, see annotated Figure 1A below); and a third scallop element (3, see annotated Figure 1A below) comprising a centerline (centerline, see annotated Figure 1A below), wherein the first scallop element and the second scallop element are positioned on opposite sides of the centerline (see annotated Figure 1a below), and wherein the third scallop element at least partially overlaps a first corner of the first scallop element (C, see annotated Figure 1A below) and at least partially overlaps a first corner the second scallop element (C, see annotated Figure 1A below), the first corner of the first scallop element and the first corner of the second scallop element both located on a common side of the third scallop element (Figure 1A).
Regarding Claim 2, Turner discloses the third scallop element at least partially overlaps a fourth scallop element (4, see annotated Figure 1A below) positioned below the third scallop element and at least partially between the first scallop element and the second scallop element (see annotated Figure 1A below).
Regarding Claim 3, Turner discloses the textile comprises a knitted textile comprising a plurality of courses extending in a first direction (Para. 4 & 27).
Regarding Claim 5, Turner discloses the first scallop element, the second scallop element, and the third scallop element each comprise a first layer (Figure 1A) and a second layer (Figure 1A).
Regarding Claim 8, Turner discloses an upper comprising a textile (Figure 1), comprising: a first scallop element (1, see annotated Figure 1A below); a second scallop element (2, see annotated Figure 1A below); and a third scallop element (3, see annotated Figure 1A below); wherein the first scallop element and the second scallop element are positioned adjacent to each other on a common side of the third scallop element (Figure 1A), such that the third scallop element at least partially overlaps the first scallop element and the second scallop element on the common side (Figure 1A).
Regarding Claim 9, Turner discloses the third scallop element at least partially overlaps a fourth scallop element (4, see annotated Figure 1A below) positioned below the third scallop element and at least partially between the first scallop element and the second scallop element (see annotated Figure 1A below);
Regarding Claim 10, Turner discloses the textile comprises a knitted textile comprising a plurality of courses extending in a first direction (Para. 4 & 27).
Regarding Claim 11, Turner discloses the first scallop element, the second scallop element, and the third scallop element at least partially comprise a thermoplastic polymeric material (Para. 29).
Regarding Claim 18, Turner discloses the first scallop element, the second scallop element, and the third scallop element are empty (Figure 1A).
Regarding Claim 19, Turner discloses the first scallop element, the second scallop element, and the third scallop element are filled with a filler material (222).
Regarding Claim 21, Turner discloses the first corner of the first scallop element is adjacent to the first corner of the second scallop element (see annotated Figure 1A below).
Regarding Claim 22, Turner discloses the first corner of the first scallop element and the first corner of the second scallop element abut each other on the common side (see annotated Figure 1A below).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 4 & 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Turner (US 2013/0340484) in view of Meir (US 2016/0088893).
Regarding Claim 4, 12 & 13, Turner does not specifically disclose the textile comprises at least part of an upper for an article of footwear, and wherein the first direction is an approximately horizontal direction of the upper. However, Turner discloses the textile used for various apparel items (Para. 27). Also, Meir discloses the textile comprises at least part of an upper for an article of footwear (Figure 25 & 26), and wherein the first direction is an approximately horizontal direction of the upper (Figure 20). It would have been obvious to one of ordinary skill in the art to use the textile for an upper for an article of footwear, as taught by Meir, in order to provide a printable knit upper material.
Regarding Claim 14, Turner discloses a textile (Figure 1), comprising: a first scallop element (1, see annotated Figure 1A below); a second scallop element (2, see annotated Figure 1A below); and a third scallop element (3, see annotated Figure 1A below) comprising a centerline (centerline, see annotated Figure 1A below), wherein the first scallop element and the second scallop element are positioned on opposite sides of the centerline (see annotated Figure 1a below) on a common side of the third scallop element (Figure 1A), such that the third scallop element at least partially overlaps a first end of the first scallop element (C, see annotated Figure 1A below) and at least partially overlaps a first end of the second scallop element (C, see annotated Figure 1A below) on the common side of the third scallop element, wherein the first end of the first scallop element and the first end of the second scallop element abut each other on a common side (Figure 1A). Turner does not specifically disclose the textile comprises at least part of an upper for an article of footwear. However, Meir discloses an article of footwear comprising an upper comprising a textile (2002), comprising: a first scallop element (1, see annotated Figure 1 below); a second scallop element (2, see annotated Figure 1 below); and a third scallop (3, see annotated Figure 1 below). It would have been obvious to one of ordinary skill in the art to use the textile for an upper for an article of footwear, as taught by Meir, in order to provide a printable knit upper material.
Regarding Claim 15, Turner discloses the third scallop element at least partially overlaps a fourth scallop element (4, see annotated Figure 1A below) positioned below the third scallop element and at least partially between the first scallop element and the second scallop element (see annotated Figure 1A below).
Regarding Claim 16, Turner does not specifically disclose the first direction is an approximately horizontal direction of the upper. Meir discloses wherein the first direction is an approximately horizontal direction of the upper (Figure 20). It would have been obvious to one of ordinary skill in the art to use a horizontal direction for an upper for an article of footwear, as taught by Meir, in order to provide a printable knit upper material.
Regarding Claim 17, the combination of Turner and Meir discloses the first direction is approximately a horizontal direction extending between a heel area and a toe area of the article of footwear (Meir, Figures 25 & 26).
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Claims 7 is rejected under 35 U.S.C. 103 as being unpatentable over Turner (US 2013/0340484) in view of Meir (US 2016/0088893) in further view of Clinton (US 2013/0305561).
Regarding Claims 7, Turner does not specifically discloses the second layer includes more courses than the first layer. However, Meir discloses the second layer includes more courses than the first layer (Figures 8). It would have been obvious to one of ordinary skill in the art before the effective filing date to use a second layer includes more courses than the first layer, as taught by Meir, in order to provide desirable performance characteristics. Turner or Meir do not specifically disclose the second layer sags. However, Clinton disclose over time material tens to sag over its own weight over time (Para. 3). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have a second layer sag over time, as taught by Clinton, because due to wear and tear, material over time will weaken and sag.
Claims 20 is rejected under 35 U.S.C. 103 as being unpatentable over Meir (US 2016/0088893).
Regarding Claim 20, Meir does not specifically disclose the filler material comprises a foam. It, however, would have been obvious to one of ordinary skill in the art before the effective filing date to modify the material of the strips as claimed, since it is well 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. Also, such a modification would be considered a mere choice of preferred material that is on the basis of its suitability for the intended use. In other words, using woven polyester fibers and woven polyamide fibers bound in a polymer matrix would have been an "obvious to try" approach because the use of such a material that is not of innovation but of ordinary skill and common sense.
Response to Arguments
Applicant’s arguments with respect to the amended claims have been fully considered but are moot in view of the new grounds of rejection as discussed supra.
Conclusion
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHARINE KANE whose telephone number is (571)272-3398. The examiner can normally be reached Mon-Fri 9am-6pm EST.
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/KATHARINE G KANE/Primary Examiner, Art Unit 3732
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