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 .
This is in response to Applicant’s amendment in which claims 1-5 and 7-9 have been amended, claim 6 has been canceled, and claims 1-5 and 7-12 remain pending.
Claim Objections
Claim 8 is objected to because of the following informalities: Claim 8 depends from claim 6, which has been canceled. Appropriate correction is required.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tumino (US 3,082,450).
Regarding claim 9, Tumino discloses an upper to be used for a shoe, the upper comprising: a main body portion (blank) on an upper side of the shoe, the main body portion being seamless and having an outer periphery (25) and an inner periphery (22) on an inner side of the outer periphery; and the outer periphery is configured to be connected to a sole of the shoe; wherein the main body portion is configured of a heat-shrinkable first cut sheet (such as a leather cut sheet) (column 2, line 32-column 3, line 15; Fig. 1, 3).
The limitations “having a heat shrinkage” and “a peripheral length of the outer periphery of the main body portion prior to shrinkage is a sum of a final peripheral length of the outer periphery of the main body portion after shrinkage and the heat shrinkage of the first cut sheet” are product-by-process limitations. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above) Tumino clearly discloses a final peripheral length of the outer periphery.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-5 and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tumino, as applied to claim 9, in view of Smets (US 5,729,918).
Regarding claim 1, Smets discloses an upper to be used for a shoe, the upper comprising: a main body portion (blank) on an upper side of the shoe, the main body portion being seamless and having an outer periphery (25) and an inner periphery (22) on an inner side of the outer periphery; wherein the main body portion is configured of a heat-shrinkable first cut sheet (such as a leather cut sheet) (column 2, line 32-column 3, line 15; Fig. 1, 3).
The limitations “having a heat shrinkage” and “a peripheral length of the outer periphery of the main body portion prior to shrinkage is a sum of a final peripheral length of the outer periphery of the main body portion after shrinkage and the heat shrinkage of the first cut sheet” are product-by-process limitations. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above) Tumino clearly discloses a final peripheral length of the outer periphery.
Tumino discloses that the upper blank may be processed to completion (column 3, lines 13-15), but does not specifically disclose a bottom surface portion. Smets discloses that a lasted shoe upper may comprise a main body portion (15) and a bottom surface portion (16) connected to the main body portion at at least a part of an outer periphery of the main body portion (column 3, lines 14-50; Fig. 4, 5). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a bottom surface portion, as taught by Smets, to the shoe upper of Tumino in order to provide a complete shoe upper which is relatively lightweight and conforms to the shape of the last/foot.
Regarding claims 2 and 3, Tumino discloses that the main body portion may be formed of leather (column 2, lines 50-53), and Smets teaches that the main body portion and bottom surface portion may be cut from leather (column 3, lines 14-16), but the combination of Tumino and Smets does not explicitly disclose that the two portions are identical material. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the two portions of the upper of identical material in order to simplify supply and manufacturing of the upper.
Regarding claim 3, the limitation “configured of an identical sheet” is a product-by-process limitation. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above)
Regarding claim 4, Smets teaches that the two portions of the upper may be manufactured of a variety of materials (such as leather or nylon; column 3, lines 14-16), but does not specifically disclose that two portions are configured of different materials. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the main body portion of a material (such as leather) different from a material (such as nylon) of the bottom surface portion in order to use a more lightweight and inexpensive material for the bottom surface portion.
Regarding claim 5, the combination of Tumino and Smets teaches that each of the sheets is heat shrinkable (wherein leather is a heat shrinkable material).
Regarding claims 10-12, Tumino discloses that the upper blank may be processed to completion (column 3, lines 13-15), but does not specifically disclose a sole on a bottom side of the upper. Smets teaches that an outsole may be attached to a bottom side surface of the upper (column 3, lines 47-50). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a sole, as taught by Smets, to the upper in order to provide a completed shoe.
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tumino and Smets, as applied to claims 1-3, 5, and 6, further in view of Taniguchi et al. (US 2018/0368524), herein Taniguchi.
Regarding claims 7 and 8, the combination of Tumino and Smets does not disclose that each sheet has a heat shrinkage higher in a first direction than a second direction. Taniguchi teaches an upper of a shoe made from a sheet of material having a first direction in which the sheet has a first heat shrinkage and a second direction in which the sheet has a second heat shrinkage higher than the first heat shrinkage, and the main body portion is cut at a position where a longitudinal direction of the main body portion is orthogonal to the second direction. This allows the sheet of the upper material to better fit to the mold/last while manufacturing the shoe (paragraphs 0047-0049). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the portions of the upper of a heat shrinkable material which has a higher heat shrinkage in the width direction, as taught by Taniguchi, in order to allow the sheets of the upper material to better fit to the mold/last while manufacturing the shoe.
Response to Arguments
Applicant's arguments filed 04/15/2026 have been fully considered but they are not persuasive.
Applicant argues that none of the cited references discloses or even suggests an upper having the claimed outer peripheral length prior to shrinkage. However, these newly added limitations are product-by-process limitations, as discussed above. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above) Tumino clearly discloses a final peripheral length of the outer periphery.
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 SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 EST.
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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732
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