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 .
Status of the Claims
As directed by the amendment received on July 28, 2026, claims 1, 4-5, 9, 11-12, and 16-18 have been amended. Accordingly, claims 1-20 are currently pending in this application.
Response to Amendment
The amendments filed with the written response received on July 28, 2026, have been considered and an action on the merits follows. Any objections and rejections previously put forth in the Office Action dated April 29, 2026, are hereby withdrawn unless specifically noted below.
Drawings
The drawings are objected to because in each of Figs. 2-5, a reference character should be placed at the center peak of each bracket to properly refer to and identify the overall exploded structure..
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification – Abstract
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because the first sentence of the abstract includes implied phraseology. It is suggested that the first and second sentences of the abstract be combined to read “A method of lasting an upper for manufacture an article of footwear includes placing an upper on a last […]”.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 4 is objected to because at line 3, “from the integrally knit channel” should read “from within the integrally knit channel”.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“lasting element” as recited at least in claims 1, 4-5, 8-12, and 16-18, and 20
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-20 are 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 1 recites the limitation “An article of footwear, comprising: a sole structure; and an upper comprising:” at lines 1-3. As several structures were previously introduced in the claim, it is unclear which of the structure is meant to comprise the subsequent structures. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. It is suggested that the limitation instead read “An article of footwear comprising: a sole structure; and an upper, the upper comprising:”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art.
Claim 11 recites the limitation “an underfoot portion of an article of footwear including the upper” at line 14. It is unclear if the underfoot portion is necessarily required by the claim or not, as the claim is directed to an upper, not an article of footwear. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. It is suggested that the claim at line 1 instead read “An upper for an article of footwear, the upper comprising:” and the limitation at line 14 instead read “an underfoot portion of the upper”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art.
Claim 17 recites the limitation “An article of footwear comprising: an upper comprising: a sole structure; and a knitted component comprising:” at lines 4. As several structures were previously introduced in the claim, it is unclear which of the structure is meant to comprise the subsequent structures. Furthermore, it is unclear how the upper as disclosed can comprise a sole structure, as the upper and the sole structure appear to be separate components as disclosed. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. It is suggested that the limitation instead read “An article of footwear comprising: a sole structure; and an upper, the upper comprising: a knitted component, the knitted component comprising:”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art.
Claims 2-10, 12-16, and 18-20 are also rejected for being dependent on a rejected claim.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20, as best can be understood, are rejected under 35 U.S.C. 103 as being unpatentable over USPN 2,413,824 to Glassman (hereinafter, “Glassman”), in view of US 2015/0059209 to Dekovic et al. (hereinafter, “Dekovic”).
Regarding claim 1, Glassman teaches an article of footwear, comprising: a sole structure; and an upper (See Glassman, Figs. 1-3; footwear includes shoe upper and sole structure (4)) comprising: a component comprising: an inner perimeter edge; an outer perimeter edge (See Glassman, Figs. 1-3; shoe upper forms component having inner perimeter edge at lace and foot opening, and outer perimeter edge around outer perimeter of shoe upper proximate marginal strip (2)); a channel in the component that extends about the upper adjacent to the outer perimeter edge (See Glassman, Figs. 1-3; channel formed by marginal strip (2) that extends about outer perimeter of shoe upper; Examiner notes that the term "adjacent" is very broad and merely means "close to; lying near". (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)); and a lasting element extending through the channel such that the lasting element is located between the upper and the sole structure (See Glassman, Figs. 1-2; lasting element (6) extends through at least a portion of the channel formed by marginal strip (2) and is located between sole (4) and marginal strip (2) of upper), the sole structure secured to the upper adjacent to the outer perimeter edge (See Glassman, Fig. 1; sole (4) is secured to shoe upper adjacent outer perimeter edge).
That said, Glassman is silent to the upper component being knitted and the channel being integrally knit.
However, Dekovic, in a related footwear art, is directed to an article of footwear with a knitted upper (See Dekovic, Fig. 5; abstract). More specifically, Dekovic teaches the upper component being knitted (See Dekovic, Fig. 5; entire upper (130) forms an integrally knitted component having edges (500, 502, 510) connected to upper surface of sole (110); [0053]).
It would have been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to form the entire upper of Glassman to be a single, integrally knitted component as disclosed by Dekovic in order to reduce a number of required manufacturing steps or processes and thereby reduce production costs (See Dekovic, [0046]). As a result of the above modification, the modified article of footwear of Glassman (i.e., Glassman in view of Dekovic, as discussed above) would further teach the channel being integrally knit (entire upper of the modified article of footwear of Glassman would be integrally knit as a single piece including the marginal strip of Glassman which forms the channel).
Regarding claim 2, the modified article of footwear of Glassman (i.e., Glassman in view of Dekovic, as discussed with respect to claim 1 above) further teaches wherein the sole structure and the upper are secured without a strobel (See Glassman, Figs. 1-3; sole (4) and shoe upper are secured without a strobel present).
Regarding claim 3, the modified article of footwear of Glassman (i.e., Glassman in view of Dekovic, as discussed with respect to claims 1-2 above) further teaches wherein the sole structure and the upper are secured with adhesive and/or thermal bonding (See Glassman, Figs. 1-3; sole and shoe upper can be cemented together in finishing of the shoe; Col. 2, lines 13-17).
Regarding claim 4, the modified article of footwear of Glassman (i.e., Glassman in view of Dekovic, as discussed with respect to claim 1 above) further teaches wherein the integrally knit channel comprises a plurality of knitted gaps that expose the lasting element from the integrally knit channel (See Glassman, Figs. 1-3; channel formed by marginal strip (2) which is part of the integrally knit shoe upper in the modified article of footwear includes openings (5) through which lasting element (6) is exposed).
Regarding claim 5, the modified article of footwear of Glassman (i.e., Glassman in view of Dekovic, as discussed with respect to claim 1 above) further teaches wherein the integrally knit channel comprises a first end and a second end, and wherein the lasting element is exposed through at least one opening in the integrally knit channel located between the first end and the second end (See Glassman, Figs. 1-3; channel formed by marginal strip (2) in the modified article of footwear includes first end on a medial side and a second end on a lateral side, lasting element (6) being positioned and exposed through the openings (5) along the channel between the ends).
Regarding claim 6, the modified article of footwear of Glassman (i.e., Glassman in view of Dekovic, as discussed with respect to claims 1 and 5 above) further teaches wherein the at least one opening comprises a first opening located on a first side of the upper and a second opening located on a second side of the upper (See Glassman, Figs. 1-3; channel formed by marginal strip (2) includes at least a first opening (5) at a first end on a medial side and a second opening (5) at a second end on a lateral side).
Regarding claim 7, the modified article of footwear of Glassman (i.e., Glassman in view of Dekovic, as discussed with respect to claims 1 and 5 above) further teaches wherein the at least one opening comprises a first set of openings located on a first side of the upper and a second set of openings located on a second side of the upper (See Glassman, Figs. 1-3; channel formed by marginal strip (2) includes a first set of openings (5) at a first end on a medial side and a second set of openings (5) at a second end on a lateral side).
Regarding claim 8, the modified article of footwear of Glassman (i.e., Glassman in view of Dekovic, as discussed with respect to claims 1 and 5 above) further teaches wherein the at least one opening comprises a first opening located on a first side of the upper and a second opening located on a second side of the upper, and wherein the lasting element extends out of the first opening and into the second opening (See Glassman, Figs. 1-3; channel formed by marginal strip (2) includes at least a first opening (5) at a first end on a medial side and a second opening (5) at a second end on a lateral side; lasting element (6) extends in and out of first and second openings).
Regarding claim 9, the modified article of footwear of Glassman (i.e., Glassman in view of Dekovic, as discussed with respect to claims 1 and 5 above) further teaches wherein the at least one opening comprises a plurality of openings located about the integrally knit channel (See Glassman, Figs. 1-3; channel formed by marginal strip (2) in the modified article of footwear includes plurality of openings (5)), and wherein the lasting element extends between the plurality of openings such that the lasting element extends across an underfoot portion of the article of footwear (See Glassman, Fig. 2; lasting element (6) extends between plurality of openings (5) in channel formed by marginal strip (2); lasting element (6) extends across underfoot portion of upper and article of footwear; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)).
Regarding claim 10, the modified article of footwear of Glassman (i.e., Glassman in view of Dekovic, as discussed with respect to claims 1, 5, and 9 above) further teaches wherein the lasting element comprises a first segment that extends across the underfoot portion and a second segment that extends across the underfoot portion, wherein the first segment and the second segment intersect (See Glassman, Fig. 2; intersecting segments of lasting element (6) extending between medial and lateral sides of upper; Examiner notes that the term "segment" is very broad and merely means "one of the parts into which something is divided; a division, portion, or section". (Defn. No. 1 of "Random House Kernerman Webster's College Dictionary" entry via TheFreeDictionary.com)).
Regarding claim 11, Glassman teaches an upper (See Glassman, Figs. 1-3; shoe upper) comprising: a component comprising: an inner perimeter edge; an outer perimeter edge (See Glassman, Figs. 1-3; shoe upper forms component having inner perimeter edge at lace and foot opening, and outer perimeter edge around outer perimeter of shoe upper proximate marginal strip (2)); a channel within the component, the channel extending about the component adjacent to the outer perimeter edge (See Glassman, Figs. 1-3; channel formed by marginal strip (2) that extends about outer perimeter of shoe upper; Examiner notes that the term "adjacent" is very broad and merely means "close to; lying near". (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)), the channel comprising a first end and a second end (See Glassman, Figs. 1-3; channel formed by marginal strip (2) includes first end on a medial side and a second end on a lateral side of the shoe upper); and a lasting element extending through the channel (See Glassman, Figs. 1-2; lasting element (6) extends through at least a portion of the channel formed by marginal strip (2)), wherein the lasting element is exposed at a plurality of openings in the channel, the plurality of openings located between the first end and the second end (See Glassman, Figs. 1-2; lasting element (6) being positioned and exposed through the openings (5) along the channel between the ends), wherein an exposed portion of the lasting element crosses between opposite sides of the upper proximate the outer perimeter edge in an underfoot portion of an article of footwear including the upper (See Glassman, Fig. 2; lasting element (6) extends between plurality of openings (5) in channel formed by marginal strip (2); lasting element (6) crosses underfoot portion between medial and lateral sides of upper proximate the outer perimeter edge; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)).
That said, Glassman is silent to the upper component being knitted and the channel being integrally knit.
However, Dekovic, in a related footwear art, is directed to an article of footwear with a knitted upper (See Dekovic, Fig. 5; abstract). More specifically, Dekovic teaches the upper component being knitted (See Dekovic, Fig. 5; entire upper (130) forms an integrally knitted component having edges (500, 502, 510) connected to upper surface of sole (110); [0053]).
It would have been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to form the entire upper of Glassman to be a single, integrally knitted component as disclosed by Dekovic in order to reduce a number of required manufacturing steps or processes and thereby reduce production costs (See Dekovic, [0046]). As a result of the above modification, the modified upper of Glassman (i.e., Glassman in view of Dekovic, as discussed above) would further teach the channel being integrally knit (entire upper of the modified upper of Glassman would be integrally knit as a single piece including the marginal strip of Glassman which forms the channel).
Regarding claim 12, the modified upper of Glassman (i.e., Glassman in view of Dekovic, as discussed with respect to claim 11 above) further teaches wherein the plurality of openings comprise a first opening located on a first side of the upper and a second opening located on a second side of the upper (See Glassman, Figs. 1-3; channel formed by marginal strip (2) includes at least a first opening (5) at a first end on a medial side and a second opening (5) at a second end on a lateral side), wherein the exposed portion of the lasting element extends between the first opening and the second opening outside of the integrally knit channel (See Glassman, Fig. 2; lasting element (6) is exposed to extend between first opening (5) on medial side and second opening (5) on lateral side).
Regarding claim 13, the modified upper of Glassman (i.e., Glassman in view of Dekovic, as discussed with respect to claim 11 above) further teaches wherein the lasting element comprises a strip (See Glassman, Figs. 1-3; lasting element (3) is a length of material and considered a strip absent additional structural limitations).
Regarding claim 14, the modified upper of Glassman (i.e., Glassman in view of Dekovic, as discussed with respect to claim 11 above) further teaches wherein the lasting element comprises a strand (See Glassman, Figs. 1-3; lasting element (3) is considered a strand absent additional structural limitations).
Regarding claim 15, the modified upper of Glassman (i.e., Glassman in view of Dekovic, as discussed with respect to claims 11 and 14 above) further teaches wherein the strand comprises at least one of a filament, a fiber, a thread, a yarn, a cable, and a rope (See Glassman, Figs. 1-3; lasting element (3) is considered at least one of a filament, thread, yarn, cable, or rope).
Regarding claim 16, the modified upper of Glassman (i.e., Glassman in view of Dekovic, as discussed with respect to claim 11 above) further teaches wherein the lasting element extends between the plurality of openings such that the lasting element intersects itself outside of the integrally knit channel on the underfoot portion (See Glassman, Fig. 2; lasting element intersects itself outside of channel on underfoot portion of upper).
Regarding claim 17, Glassman teaches an article of footwear comprising: an upper comprising: a sole structure (See Glassman, Figs. 1-3; footwear includes shoe upper and sole structure (4)); and a component comprising: an inner perimeter edge; an outer perimeter edge (See Glassman, Figs. 1-3; shoe upper forms component having inner perimeter edge at lace and foot opening, and outer perimeter edge around outer perimeter of shoe upper proximate marginal strip (2)); a channel that extends about the upper adjacent to the outer perimeter edge (See Glassman, Figs. 1-3; channel formed by marginal strip (2) that extends about outer perimeter of shoe upper; Examiner notes that the term "adjacent" is very broad and merely means "close to; lying near". (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)); and a lasting element extending at least partially through the channel and located between the upper and the sole structure attached to the upper (See Glassman, Figs. 1-2; lasting element (6) extends through at least a portion of the channel formed by marginal strip (2) and is located between sole (4) and marginal strip (2) of upper), wherein the sole structure is attached to the upper without a strobel (See Glassman, Figs. 1-3; sole (4) and shoe upper are secured without a strobel present).
That said, Glassman is silent to the upper component being knitted and the channel being integrally knit.
However, Dekovic, in a related footwear art, is directed to an article of footwear with a knitted upper (See Dekovic, Fig. 5; abstract). More specifically, Dekovic teaches the upper component being knitted (See Dekovic, Fig. 5; entire upper (130) forms an integrally knitted component having edges (500, 502, 510) connected to upper surface of sole (110); [0053]).
It would have been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to form the entire upper of Glassman to be a single, integrally knitted component as disclosed by Dekovic in order to reduce a number of required manufacturing steps or processes and thereby reduce production costs (See Dekovic, [0046]). As a result of the above modification, the modified article of footwear of Glassman (i.e., Glassman in view of Dekovic, as discussed above) would further teach the channel being integrally knit (entire upper of the modified article of footwear of Glassman would be integrally knit as a single piece including the marginal strip of Glassman which forms the channel).
Regarding claim 18, the modified article of footwear of Glassman (i.e., Glassman in view of Dekovic, as discussed with respect to claim 17 above) further teaches wherein the integrally knit channel comprises a plurality of openings spaced about a length of the integrally knit channel at which the lasting element is exposed (See Glassman, Figs. 1-3; channel formed by marginal strip (2) in the modified article of footwear includes plurality of openings (5) spaced about length of channel; lasting element (6) being positioned and exposed through the openings (5) along the length of the channel).
Regarding claim 19, the modified article of footwear of Glassman (i.e., Glassman in view of Dekovic, as discussed with respect to claims 17-18 above) further teaches wherein the plurality of openings comprises a first plurality of openings located on a first side of the upper and a second plurality of openings located on a second side of the upper (See Glassman, Figs. 1-3; channel formed by marginal strip (2) includes a first plurality of openings (5) at a first end on a medial side and a second plurality of openings (5) at a second end on a lateral side).
Regarding claim 20, the modified article of footwear of Glassman (i.e., Glassman in view of Dekovic, as discussed with respect to claims 17-19 above) further teaches wherein the lasting element extends across an underfoot portion and through each opening of the first plurality of openings and through each opening of the second plurality of openings (See Glassman, Fig. 2; lasting element (6) extends through each of the plurality of openings (5) in channel formed by marginal strip (2); lasting element (6) extends across underfoot portion of upper and article of footwear; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)).
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, filed July 28, 2026, with respect to the rejection of the claims under 35 USC 102 and 103 have been fully considered but are moot in view of the new grounds of rejection, as Applicant’s arguments appear to be drawn only to the newly amended limitations and previously presented rejections.
In response to Applicant’s arguments regarding the interpretation of the term “lasting element” under 35 U.S.C. 112(f) in at least some of the claims, Examiner notes that Applicant only points to alleged structural elements in other claims not indicated as being interpreted under 35 U.S.C. 112(f). Indeed, Applicant points to claims 13-15 for support when claims 1, 4-5, 8-12, 16-18, and 20 were only mentioned in the Office Action, none of which depend from any of claims 13-15. Therefore, the interpretation of the claims as described above is maintained.
In response to Applicant’s apparent arguments regarding reliance on multiple embodiments of Glassman, Examiner respectfully disagrees. In both the previous and the current grounds of rejection above, only the embodiment of Figs. 1-3 of Glassman is relied upon. Furthermore, in the embodiment of Figs. 1-3 of Glassman, the lasting element (6) at least partially extends through the channel formed by marginal strip (2).
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 MATTHEW R MARCHEWKA whose telephone number is (571) 272-4038. The examiner can normally be reached M-F: 9:00AM-5:00PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CLINTON T OSTRUP can be reached at (571) 272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW R MARCHEWKA/Examiner, Art Unit 3732
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