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 .
It is noted here that the claim amendment did not have the proper status identifier for canceled claims. When claim text shall not be presented; canceling a claim. Further, (i) No claim text shall be presented for any claim in the claim listing with the status of “canceled” or “not entered.” (ii) Cancellation of a claim shall be effected by an instruction to cancel a particular claim number. Identifying the status of a claim in the claim listing as “canceled” will constitute an instruction to cancel the claim (see MPEP 714).
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.
Claim(s) 1-9 and 23-30 is/are rejected under 35 U.S.C. 103 as being unpatentable Bier (US 2013/0233477 A1) in view of Baghdadi (US2021/0276293A1).
Regarding claim 1, Bier discloses a method for producing a shoe (abstract), the method comprising the steps: a. providing an upper assembly (8, figure 1), wherein the upper assembly comprises an upper being mounted on a carrier (figure 4), wherein the upper comprises a bottom section being made from a thermoplastic polymer upper material [0017, claim 26];
b. providing a sole molding unit [0034], wherein the sole molding unit defines a cavity (figure 4B);
c. inserting the upper assembly (8) at least partially into the cavity (figure 4C);
d. Bier does not explicitly disclose introducing a midsole polymer composition comprising a molten thermoplastic polymer midsole material which has a melting temperature equal or higher than the melting temperature of the thermoplastic polymer upper material into the cavity and foaming the molten thermoplastic polymer midsole material inside the cavity to provide a foamed midsole and to establish a material-bonded, in particular fused, connection between the upper and the foamed midsole. However, analogous art, Baghdadi, discloses the materials of the entire footwear has a temperature that has the same/similar temperature range or higher [0057, 0076]. 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 incorporated molten thermoplastic polymer midsole material which has a melting temperature equal or higher than the melting temperature of the thermoplastic polymer upper material into the cavity and foaming the molten thermoplastic polymer midsole material inside the cavity to provide a foamed midsole and to establish a material-bonded, in particular fused, connection between the upper and the foamed midsole as taught by Baghdadi, into the method taught by Bier to create a more efficient ratio of energy [0058].
Regarding claim 2, Baghdadi discloses wherein step d. is performed by supercritical injection foaming [0039, 0047].
Regarding claims 3 and 21, Baghdadi discloses wherein the polymer composition in step d. comprises a physical blowing agent; a physical blowing agent being in a supercritical state [0047].
Regarding claim 4, Baghdadi discloses wherein during step d. the bottom section of the upper is at least partially melted, in particular by the thermal energy of the molten thermoplastic polymer midsole material [0048, 0054, 0075].
Regarding claim 5, Bier discloses , wherein in step c. the upper assembly is inserted such into the sole molding unit that a closed, and in particular sealed, sole molding compartment is formed being defined by the sole molding unit and the upper assembly [0076, 0112] (figure 4c).
Regarding claim 6, Bier and Baghdadi disclose wherein after step d. an outsole polymer composition comprising a molten polymer outsole material is introduced into the cavity to provide an outsole being material-bonded, in particular fused, to the foamed midsole ([Bier 0018,0082, 0117; Baghdadi [0003, 0047-0050]).
Regarding claim 7, Bier discloses wherein the upper assembly provided in step a. is held by a movable robotic arm and wherein step c. is performed by the robotic arm [0032-033, 0035].
Regarding claim 8, Bier does not explicitly disclose in step a. is provided by applying the molten thermoplastic polymer upper material onto the carrier by means of a nozzle in the form of at least one filament, in particular at least one continuous filament, to provide the upper being mounted on the carrier. However, Baghdadi discloses using nozzles from molten resin [0061, 0082] in the form of filament [0156]. 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 incorporated a nozzle since it is conventionally known to use nozzles to deposit polymer. "A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Regarding claim 9, Bier depicts wherein the at least one filament is applied such on the carrier (4) that it forms a plurality of crossings with itself on the carrier (4) and/or a plurality of loops on the carrier (4), wherein a material-bonded connection is established at least one crossing between different sections of the at least one filament (figure 6D).
Regarding claim 22, Bier does not explicitly disclose wherein during step d. the bottom section of the upper is at least partially melted by the thermal energy of the molten thermoplastic polymer midsole material. However, analogous art, Baghdadi, discloses melting (melt composition [0047-0050]) of a midsole [0046]by thermal energy [0086]. Although Baghdadi does not explicitly state the bottom section of the upper, he does disclose a midsole layer which would incorporate the bottom section of the upper midsole since the upper and lower are all parts of the midsole (MPEP 2144.04 states Omission of an element and its function where not needed has been held to be obvious, Ex parte Rainu, 168 USPQ 375, and In re Kuhle, 188 USPQ 7.) 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 incorporated the method of bottom section of the upper is since it has been that omission of an element and its function in combination where the remaining elements perform the same function as before involves only routine skill in the art.
Regarding claim 23, Bier teaches wherein in step c. the upper assembly is inserted such into the sole molding unit that a closed and a sealed sole molding compartment is formed being defined by the sole molding unit and the upper assembly (see figures 4B and 4C).
Regarding claim 24, Baghdadi teaches wherein after step d. an outsole [0053] polymer composition comprising a molten polymer outsole material is introduced into the cavity to provide an outsole being fused to the foamed midsole [0076].
Regarding claim 28, Bier and Baghdadi teaches outsole being material-bonded, in particular fused, to the foamed midsole ([Bier 0018,0082, 0117; Baghdadi [0003, 0047-0050]).
Regarding claim 29, Bier teaches wherein the thermoplastic polymer midsole material is l is selected from polyolefins, such as polyethylene or polypropylene, polyester, such as PET or PBT, polyamide, polyether block amide (PEBAX), polyurethane, ethylene vinyl acetate (EVA) or mixtures thereof [0017, 0046].
Regarding claim 30, Bier teaches wherein the thermoplastic polymer upper material is selected from polyolefins, such as polyethylene or polypropylene, polyester, such as PET or PBT, polyamide, polyether block amide (PEBAX), polyurethane, ethylene vinyl acetate (EVA) or mixtures thereof [0017, 0133].
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable Bier (US 2013/0233477 A1) in view of Baghdadi (US2021/0276293A1), as applied to claim 8, further in view of Martin (US 6080482A).
Regarding claim 10, Bier does not explicitly disclose wherein the nozzle comprises a material outlet and a plurality of air openings being circumferentially arranged around the material outlet wherein pressurized air is applied in such a manner onto the molten polymer upper material exiting the material outlet that it is applied to the carrier as a helical filament. However, analogous filament art, Martin discloses nozzles with a plurality of air openings being circumferentially arranged around the material outlet wherein pressurized air is applied in such a manner onto the molten polymer upper material exiting the material outlet (column 11 lines 5-21 )that it is applied to the carrier as a helical filament (figure 4; column 7 lines 49-61; claim 14). 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 incorporated and a plurality of air openings being circumferentially arranged around the material outlet wherein pressurized air is applied in such a manner onto the molten polymer upper material exiting the material outlet that it is applied to the carrier as a helical filament, as taught by Martin into the method taught by Bier and Baghdadi to form durable filaments (column 4 lines 56-65).
Claim(s) 25-26 is/are rejected under 35 U.S.C. 103 as being unpatentable Bier (US 2013/0233477 A1) in view of Baghdadi (US2021/0276293A1), as applied to claim 1, further in view of Willis (US 2007/0295451 A1).
Regarding claims 25-26, Bier does not explicitly disclose wherein the bottom section of the upper is covered prior to either step d by a thermoplastic film or prior to step c by a thermoplastic film. However, analogous shoe art, Willis, discloses covering with a thermoplastic film for the benefit of forming a bond between the sole component and footwear component (claim 7). Further, MPEP 2144.04 states rearranging method steps are within the skillset of one ordinary skilled in the art. In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to be not patentably distinguish the processes (e.g., Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959); In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930)). See MPEP 2144.04 (IV)(C). Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the bottom section of the upper is covered prior to either step d by a thermoplastic film or prior to step c by a thermoplastic film for the benefit of forming a bond between the sole component and footwear component.
Regarding claim 27, Bier does not explicitly disclose wherein the bottom section of the upper is covered prior to either step d by a thermoplastic film or prior to step c by a thermoplastic film being made from the thermoplastic polymer midsole material. However, analogous shoe art, Willis, discloses covering with a thermoplastic film for the benefit of forming a bond between the sole component and footwear component (claim 7). Further, MPEP 2144.04 states rearranging method steps are within the skillset of one ordinary skilled in the art. In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to be not patentably distinguish the processes (e.g., Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959); In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930)). See MPEP 2144.04 (IV)(C). As for the thermoplastic film being made from the thermoplastic polymer midsole material, Baghdadi teaches recycling [0036]. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention wherein the bottom section of the upper is covered prior to step c or prior to step d, by a thermoplastic film being made from the thermoplastic polymer midsole material since Willis teaches using thermoplastic film and Baghdadi discloses recycling thermoplastic midsole material.
Response to Arguments
The 112(b) rejection and claim objection has been withdrawn.
Applicant's arguments filed 12/05/2025 have been fully considered but they are not persuasive.
Applicant argues the combination of the prior art fails to teach d. introducing a midsole polymer composition comprising a molten thermoplastic polymer midsole material which has a melting temperature equal or higher than the melting temperature of the thermoplastic polymer upper material into the cavity (7) and foaming the molten thermoplastic polymer midsole material inside the cavity (7) to provide a foamed midsole (8) and to establish a material-bonded, in particular fused, connection between the upper (3) and the foamed midsole (8). Examiner disagrees. Examiner cited [0057 and 0076] which states “for any of the disclosed systems, methods, articles, and footwear, the mixed batch of ground recyclate material and virgin polymer material may have a set point temperature of at least about 150° C. or, in some embodiments, ranging from about 190° C. to about 265° C. In this regard, the mixed batch of recyclate and virgin materials may have an average peak crystallization temperature of at least about 90° C. or, in some embodiments, ranging from about 135° C. to about 165° C. A resultant foamed polymer article may have a cell size average, e.g., by volume of a longest cell dimension, of less than about 0.68 mm or, in some embodiments, about 0.18 mm to about 0.58 mm. Creating the polymer melt composition may comprise melting then mixing the recyclate and virgin materials or melting a mixed batch already containing the recyclate and virgin materials” [0057] and “disclosed herein are methods for making a foam article or component, the method comprising: forming a mixture of a molten thermoplastic elastomer composition and a foaming agent; injecting the mixture into a mold cavity; foaming the thermoplastic elastomer composition, thereby forming a foamed thermoplastic elastomer composition; solidifying the foamed thermoplastic elastomer composition, thereby forming a foam article having a multicellular foam structure; and removing the foam article from the mold cavity. In some aspects, forming the mixture of the thermoplastic elastomer composition and the foaming agent comprises forming a single-phase solution of a liquid, gas or supercritical fluid foaming agent and the molten thermoplastic elastomer composition. In some aspects, the mixture is a single-phase solution of supercritical nitrogen or supercritical carbon dioxide and the thermoplastic elastomer composition. In a particular example, the mixture is a single-phase solution of supercritical nitrogen in a thermoplastic polyester composition. In some aspects, the thermoplastic elastomer composition comprises less than 10 weight percent, or less than 5 weight percent, or less than 1 weight percent of non-polymeric ingredients based on a total weight of the thermoplastic elastomer composition. In such aspects, injecting the mixture into a mold cavity can comprise injecting the single-phase solution into a mold cavity, then cooling the single-phase solution in the mold cavity prior to decreasing pressure in the mold cavity to a level at which the supercritical fluid phase transitions to a gas, and the gas drops out of solution in the molten polymer, forming gas bubbles in the molten polymer and foaming the molten polymer. In some aspects, the foaming forms a foam having an open-cell foam structure” [0076].
Therefore the combination of Bier and Baghdadi teach midsole (Bier [0018, 0019] and Baghdadi [0038]) and introducing a midsole polymer composition comprising a molten thermoplastic polymer midsole material which has a melting temperature equal or higher than the melting temperature of the thermoplastic polymer upper [Baghdadi 0057] into the cavity [Baghdadi 0076] and foaming the molten thermoplastic polymer midsole material inside the cavity to provide a foamed midsole [Baghdadi 0076] and to establish a material-bonded in particular fused, connected between the upper and foamed midsole [Baghdadi 0076].
Applicant is reminded one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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 FARAH N TAUFIQ whose telephone number is (571)272-6765. The examiner can normally be reached Monday-Friday: 8:00 am-4:30 pm.
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/FARAH TAUFIQ/Primary Examiner, Art Unit 1754