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 March 23, 2026 has been received, Claims 1, 3-9, 11-18 and 20-23 are currently pending, with Claims 6 and 12-15 remaining withdrawn from prosecution at this time.
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.
1. Claim 21 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 21 recites “at least one course of normal stitches”. The claim limitation is indefinite as it is unclear what Applicant means by “normal” stitches. Claim 21 is rejected as best understood by examiner.
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.
2. Claim(s) 1, 7-9, 18, 20, and 22-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ly (US 2018/0168271).
Regarding Claim 1, Ly discloses an upper for a shoe (10), the upper (30) comprising: a knitted portion (130) comprising a first region (180) comprising one or more knitted functional elements (82a,82c,82d) and a second region (160) that does not comprise the one or more knitted functional elements (as seen in Fig.4), wherein the first region and the second region are unitarily knit together (para.25); wherein the second region envelops the first region such that the first region forms part of an inner layer (80) arranged in proximity of a foot of a wearer when the shoe is worn and the second region forms part of an outer layer (60) arranged outside with respect to the inner layer when the shoe is worn such that the outer layer at least partially covers the one or more knitted functional elements (para.23; as seen in Fig.3 & 4); and wherein each of the one or more knitted functional elements defines a protrusion (para.20-21; as seen in Fig.4 & 5).
Regarding Claim 7, Ly discloses an upper according to claim 1, wherein the one or more knitted functional elements (82d) define a shape of a fan on at least one of a lateral side region or a medial side region of the upper (as seen in Fig.5; inasmuch as has been claimed and defined by Applicant, 82d “define[s] a shape of a fan”, as fans come in many shapes).
Regarding Claim 8, Ly discloses an upper according to claim 1, wherein each of the one or more knitted functional elements (82a,82c,82d) is arranged at an angle with respect to a neighboring functional element (as seen in Fig.5; i.e. 82a,82c,82d are each arranged at an angle with respect to each other).
Regarding Claim 9, Ly discloses an upper according to claim 1, wherein the knitted portion (130) is located at a midfoot region of the upper spanning from an instep region to a sole region of the upper (as seen in Fig.1 & 5).
Regarding Claim 18, Ly discloses an upper according to claim 1, wherein the one or more knitted functional elements are knitted integrally with the knitted portion (para.18-21; as seen in Fig.4).
Regarding Claim 20, Ly discloses an upper according to claim 1, wherein the one or more knitted functional elements comprise one or more of an elastic yarn, a fusible yarn, a low-melt temperature fusible yarn (para.22), a polyester yarn, a puffy yarn, or a silicone yarn.
Regarding Claim 22, Ly discloses an upper according to claim 1, wherein each of the one or more knitted functional elements (82c) has an elongate axis (i.e. axis from medial edge of 82c to the lateral edge of 82c) directed substantially from an instep region towards a medial side region and/or a lateral side region of the upper (as seen in Fig.5).
Regarding Claim 23, Ly discloses an upper according to claim 1, wherein the knitted portion comprises a seamless tubular construction (para.25 & 27; as seen in Fig.4).
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.
3. Claim(s) 3-4 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ly (US 2018/0168271).
Regarding Claim 3, Ly discloses the invention substantially claimed above. Ly does not disclose wherein the one or more protrusions extend from the inner layer by at least 0.2 mm, and/or by at most 8 mm. However, 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 protrusions of Ly to extend from the inner layer by at least 0.2 mm, and/or by at most 8 mm, in order to provide the desired level of cushioning to protect a user’s foot during use. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
Regarding Claim 4, Ly further discloses an upper according to claim 3, wherein the one or more protrusions comprise a shape of at least one of a rib, a ridge (82c), a lamella, or a fin (82d)(as seen in Fig.5).
Regarding Claim 11, Ly discloses the invention substantially claimed above. Ly does not disclose wherein the one or more functional elements are spaced apart from one another by at least 1 mm, and by at most 50 mm. However, 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 one or more functional elements of Ly to be spaced apart from one another by at least 1 mm, and/or by at most 50 mm, in order to provide the desired spacing of functional elements, to securely fit the upper to a user's foot. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
4. Claim(s) 5 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ly (US 2018/0168271) in view of Berrian (US 2019/0313728).
Regarding Claim 5, Ly discloses an upper according to claim 1, wherein the one or more knitted functional elements (82a,82c,82d) are arranged on a side of the inner layer (para.31; as seen in Fig.3-5). Ly does not disclose the one or more knitted functional elements are arranged on a side of the inner layer facing away from a foot of a wearer, when the shoe is worn. However, Berrian teaches a knit layer (34/200; para.33) having one or more knitted functional elements (46/204) arranged on a side (42/208) of the layer facing away from a foot of a wearer, when the shoe is worn (para.36; as seen in Fig.1A).
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 placement of the one or more knitted functional elements of Ly to be placed on a side of the inner layer facing away from a foot of a wearer, as taught by Berrian, in order to provide the optimum arrangement of cushioning to deliver a comfortable wearing experience for the user. When in combination, Ly and Berrian teach the one or more knitted functional elements are substantially sandwiched between the inner layer and the outer layer.
Regarding Claim 21, Ly discloses the invention substantially claimed above. Ly does not disclose wherein each of the one or more knitted functional elements comprises: a first set of at least four courses of tuck stitches; a second set of at least four courses of tuck stitches; and at least one course of normal stitches between the first set of at least four courses of tuck stitches and the second set of at least four courses of tuck stitches. However, Berrian teaches a cushion region/functional element having a first set of two courses of tuck stitches; a second set of two courses of tuck stitches; and at least one course of normal stitches between the first set of tuck stitches and the second set of tuck stitches (para.60; see annotated Figure below).
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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 formed the one or more knitted functional elements of Ly with a first set of courses of tuck stitches, a second set of courses of tuck stitches, and at least one course of normal stitches between the first set of tuck stitches and the second set of tuck stitches, as taught by Berrian, in order to provide the upper with the optimum level of cushioning for delivering comfort to the wearer’s foot during use.
While Ly and Berrian do not explicitly disclose the first set being at least four courses of tuck stitches and the second set being at least four courses of tuck stitches. However, 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 number of courses of tuck stitches of modified Ly to be four courses, in order to provide the upper with the optimum level of cushioning for delivering comfort to the wearer’s foot during use. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
5. Claim(s) 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ly (US 2018/0168271) in view of Baines (US 2016/0208421).
Regarding Claim 16, Ly discloses the invention substantially claimed above, including one or more knitted functional elements extend over a length of a course in some manner. Ly does not disclose wherein the course is arranged so as to pass through an instep region and a medial side region and/or lateral side region in proximity of a sole region of the upper. However, Baines teaches a knit upper (120) having a course arranged so as to pass through an instep region and a medial side region and/or lateral side region in proximity of a sole region of the upper (para.35 & 66; as seen in Fig.1 & 6, the courses extend from 156, across 144, to 162).
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 formed the knit layer of Ly such that a course is arranged so as to pass through an instep region and a medial side region and/or lateral side region in proximity of a sole region of the upper, as taught by Baines, in order to provide an upper with the optimum level of stretch for best supporting a wearer’s foot during use. When in combination, Ly and Baines teach wherein the one or more knitted functional elements (of Ly) extend over an overall length of a course (as taught by Baines) of the knitted portion.
Regarding Claim 17, Ly discloses the invention substantially claimed above, including one or more knitted functional elements extend over a length of a course in some manner. Ly does not disclose wherein the course of the knitted portion is arranged so as to pass through an instep region and a medial side region and/or lateral side region in proximity of a sole region of the upper. However, Baines teaches a knit upper (120) having a course arranged so as to pass through an instep region and a medial side region and/or lateral side region in proximity of a sole region of the upper (para.35 & 66; as seen in Fig.1 & 6, the courses extend from 156, across 144, to 162).
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 formed the knit layer of Ly such that a course is arranged so as to pass through an instep region and a medial side region and/or lateral side region in proximity of a sole region of the upper, as taught by Baines, in order to provide an upper with the optimum level of stretch for best supporting a wearer’s foot during use. When in combination, Ly and Baines teach the one or more knitted functional elements (of Ly) comprise one or more sections (i.e. front portion of 82c, middle portion of 82c, and rear portion of 82c) , each section extending over a length of a course (as taught by Baines) of the knitted portion of at least 10% and of at most 80% of an overall length of the course of the knitted portion (as seen in Fig.5 of Ly, 82c extends more than 10% and less than 80% of the width from the medial edge to the lateral edge of the midfoot portion).
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached at 571-272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732
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