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 .
Information Disclosure Statement
Since this application is a division of US Application 17/701287, the Examiner has considered the information provided in the parent application (per MPEP 609.02). Should Applicant desire the information to be printed in any patent issuing from this application, a new listing of the information must be separately submitted.
Election/Restrictions
Applicant’s election without traverse of Species 3 (Fig. 6-9) in the reply filed on 11/18/2025 is acknowledged.
Claim Rejections - 35 USC § 112
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 9 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.
Claim 9 recites the limitation “the outer periphery is connected to a sole of the shoe” in line 5. However, the preamble claim 9 recites “An upper to be used for a shoe.” It is not clear if the claim is directed to the subcombination of an upper for a shoe, or the shoe itself including the upper and sole. The claim should be amended to either clearly recite the whole shoe in the preamble, or to remove any positive recitation of the sole (which is not part of the upper). For purposes of examination it appears that the claim is directed to an upper, and the outer periphery is configured to be connected to a sole of the shoe.
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.
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 (column 2, line 32-column 3, line 15; Fig. 1, 3).
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.
Claim(s) 1-6 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 (column 2, line 32-column 3, line 15; Fig. 1, 3).
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 claims 5 and 6, 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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