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 .
DETAILED ACTION
Response to Amendment
Applicant’s amendment filed November 25, 2025 has been received, Claims 1-20 are currently pending, with Claims 1-8 remaining withdrawn from prosecution at this time.
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.
1. Claim(s) 9-10 and 13-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Podhajny (US 2014/0245634).
Regarding Claim 9, Podhajny discloses an article of footwear comprising an upper (120) and a sole structure (110) secured to the upper (para.32), the upper comprising: a knitted component (116), comprising: a base portion (136), comprising: a first side (i.e. medial side), and a second side (i.e. lateral side), wherein the first side is one of a medial side or a lateral side of the article of footwear (para.61-62); and an extended portion comprising a tensile element (158), the extended portion (124,126) extending from a first toe edge (137 in toe region) of the first side, below the base portion, and to a second toe edge (135 in toe region) of the second side (para.63)(as seen in Fig.1 & 5), wherein the extended portion forms a one-piece knit structure with the base portion (para.34 & 39-40).
Regarding Claim 10, Podhajny discloses an article of footwear of claim 9, wherein the tensile element (158) is inlaid in the knitted component and extends through intermeshed loops forming the knitted component (para.43).
Regarding Claim 13, Podhajny discloses an article of footwear of claim 10, wherein the tensile element (158) extends at least partially through an underside (i.e. 124 is an underside) of the upper (as seen in Fig.5 & 6).
Regarding Claim 14, Podhajny discloses an article of footwear of claim 10, wherein the tensile element (158) extends through a knitted tubular structure in the knitted component (as seen in Fig.7; para.85).
Regarding Claim 15, Podhajny discloses an upper for an article of footwear, the upper (120) comprising a knitted component (116), the knitted component comprising: a base portion (medial 126,136) comprising a first side (i.e. medial side of 124) and a second side (i.e. lateral side of 136), the base portion comprising at least two tensile elements (each section of 158) that at least partially extend through intermeshed loops of a knit structure forming the base portion (para.43), wherein the at least two tensile elements splay relative to each other such that the at least two tensile elements extend through the base portion in a non-parallel orientation (see annotated Figure below).
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Regarding Claim 16, Podhajny discloses an upper of claim 15, wherein the knitted component further comprises an extended portion (124, lateral 126) comprising the at least two tensile elements, the extended portion extending from a first edge (137 in toe region) of the first side, passing below the upper from the first side to the second side, and extending beyond (at 159) a second edge (lateral side of 136) of the second side (para.63; as seen in Fig.1, 5 & 6).
Regarding Claim 17, Podhajny discloses an upper of claim 16, wherein the at least two tensile elements splay near a central area of a forefoot region to extend to the first edge of the first side in the non-parallel orientation (see annotated Figure above).
Regarding Claim 18, Podhajny discloses an upper of claim 17, wherein, at the first edge (137 in toe region) of the first side, the at least two tensile elements exit (at 160) the base portion (medial 126), the extended portion (124, lateral 126) comprising the a least two tensile elements passing below the upper from the first edge of the first side to the second edge of the second side (para.63; as seen in Fig.1, 5 & 6).
Regarding Claim 19, Podhajny discloses an upper of claim 18, wherein the base portion and the extended portion comprise a unitary knit construction (para.34 & 39-40; as seen in Fig.5).
Regarding Claim 20, Podhajny discloses an upper of claim 15, wherein the at least two tensile elements extend within courses within the base portion (para.43), and wherein the at least two tensile elements splay in a direction away from a throat area (131) of the knitted component (as seen in Fig.1 & 6).
Claim Rejections - 35 USC § 103
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 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.
2. Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Podhajny (US 2014/0245634) in view of Sokolowski (US 2008/0110049).
Regarding Claims 11 and 12, Podhajny discloses the invention substantially as claimed above. Podhajny does not disclose the tensile element comprises a flattened lace structure; wherein the tensile element is flat or flattened. However, Sokolowski teaches a tensile element (33) inlaid (within 44,54) in a knit upper that is a flattened lace structure; wherein the tensile element is flat or flattened (as seen in Fig.1-2 & 4B).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the tensile element shape of Podhajny to be flat or flattened, as taught by Sokolowski, in order to provide the desired aesthetic appearance to the upper. Further, it would have been an obvious matter of design choice to one skilled in the art before the effective filing date of the claimed invention to construct the tensile element of Podhajny to be flat or flattened, since applicant has not disclosed that this solves any stated problem or is anything more than one of numerous shapes or configurations a person of ordinary skill in the art would find obvious for the purpose of providing a tensile member. In re Dailey and Eilers, 149 USPQ 47 (1966). It is noted that Applicant has no criticality for the use of a flat or flattened tensile member over that of a rounded tensile member.
Response to Arguments
In view of Applicant's amendment, the search has been updated, and new prior art has been identified and applied. Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection.
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 MEGAN E LYNCH whose telephone number is (571)272-3267. The examiner can normally be reached Monday to Friday, 8:00am-4:00pm EST.
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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732