DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. A suggestion is “Shoe Upper with Heat Retention.”
Please update the first paragraph of the specification as the status of 16/790,556 has matured into USPN 12,123,135 B2; 15/615,537 has matured into USPN 10,563,349 B2 and 13/618,835 has matured into USPN 9,719,206 B2. Appropriate correction is required.
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 11 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 11 recites that “the ceramic powder is discontinuous”. It is unclear what it means for a powder to be discontinuous. Therefore, claim 11 is indefinite. For examination purposes, the claim has been interpreted as “the ceramic powder forms a discontinuous structure”.
Claim 11 also recites “ceramic sections free of ceramic powder”. This language is contradictory; and therefore, indefinite. For examination purposes, the claim has been interpreted as “fabric sections free of ceramic powder”.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 13 of copending Application 19/004,988 [USPUB 20250129546A1]. The claims filed on 12/30/24 were considered for analysis. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented. Although the claims at issue are not identical, they are not patentably distinct from each other because the embodiment of the instant claims would be rendered obvious by the embodiments of claims 1-10 and 13 of Application 19/004,988.
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 pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 2, 3 and 5 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by CN 101632507 issued to Yongqi.
Yongqi teaches warm shoes for the winter comprising a vamp and a sole. It should be noted that vamp serves as Applicant’s show upper. Yongqi teaches that the vamp is made from a cloth layer. The cloth layer maybe made from silk, polyester, cotton, batiste or terylene silk fabric which serves as Applicant’s natural or synthetic fibers. The cloth layer is covered with nano ceramic powder which provides good infrared heat retention properties.
Regarding Claim 2, where Applicant seeks a shoe upper comprising a fabric panel including fibers, the fabric panel comprising a fabric portion including ceramic powder, wherein the fabric portion including the ceramic powder retains heat longer than a fabric portion free of the ceramic powder; Applicant is directed to ¶ ¶17, 18, 19 and claim 6.
Regarding Claim 3, where Applicant seeks that the shoe upper of claim 2, wherein the fibers comprise one or both of natural fibers and synthetic fibers; Applicant is directed to ¶¶ 16, 19 and claim 2.
Regarding Claim 5, where Applicant seeks that shoe upper of claim 2, wherein the ceramic powder covers the portion of the fabric panel; Applicant is directed to ¶ 17 and claim 6.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 2-11 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ozawa (JP H02-182968 (Applicant provided translation relied upon), Teruto (JP 2002-371465, machine translation relied upon) and Worley (USPUB 2003/0054141) all found in the parent application.
Ozawa teaches a knitted/woven pile fabric where the tips of the pile fibers are exposed and covered with a binder containing granules with far infrared radiation characteristics (page 2). Ozawa teaches further a coating can be made on the other side of the fabric (page 2 and Figure 2 (binder 6).
Ozawa teaches the fabric finds use as a blanket (Ex. 1), a vest (Ex. 2), and an insole for shoes (Ex. 3). Ozawa teaches the granules include both oxide (e.g. silicon oxide) and non-oxide (SiC) ceramics.
As Ozawa teaches both as suitable for the granules and that combinations of the granule may be used, it would have been obvious to the person having ordinary skill in the art to choose one or both with a reasonable expectation of providing an upper with heat retention characteristics.
A blanket, vest, or insole or an upper may all be articles of apparel. Each fundamentally must have an inner and outer surface. The surface which is “user facing” could be either or both surface depending on if the garment is worn inside out; if the user faces both sides of the garment; and who the user is. As such, both sides of the articles disclosed by Ozawa meet this limitation.
Ozawa teaches the pile’s tips as coated which would thus be a discontinuous layer but fails to teach the portion of the layer which is coated. Ozawa, with respect to the non-pile side does not teach the coating as discontinuous.
Ozawa does not teach the use of elastic fibers and how the ceramic powder is placed.
Teruto (JP 2002-371465, machine translation relied upon) teaches a stretchable (elastic fibers) fabric which is woven or knit and which further includes a far infrared ceramic powder in a coating (abstract). Teruto teaches the base coating material can be polyurethane and the ceramic can be included in an amount preferably from 10-50% per 100 parts resin. Teruto also further suggests the coating can be in the form of a dot, stripe, or mesh for the benefit of advantageous elasticity, fashionability, and softness.
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the invention to use as the amount of ceramic in the coatings of Ozawa 10-50% because Teruto teaches in a similar application (see e.g. [2-4) that such an amount is suitable. Additionally, as Teruto teaches dot, strip, or mesh coating may advantageously be used for elasticity, fashionability, and softness the skilled artisan would be motivated to use a dot, strip, or mesh coating on the non-pile layer for the expected benefit of elasticity, fashionability, and softness.
Worley teaches a coated article with enhanced reversible thermal properties where a coating including a polymeric material and a temperature regulating material is dispersed therein (abstract). The coating is discontinuous so as to provide improved flexibility, softness, air permeability, or water vapor transport properties (abstract). Worley teaches the surface area covered by the coating should be 1 -99% of the layer (preferably 50-80%) but that the exact amount of the coverage must take on consideration of which property is controlling, the thermal regulating properties (provided by a high coating percentage) and or other properties (e.g., flexibility, softness, air permeability, or water vapor transport properties, provided by a low coating coverage).
As Ozawa teaches the purpose of the coating is heat retention (page 1, §3) and that comfort of the garment is a consideration (page 2, para 2) including sweat / moisture absorption (page 4, p6) and as Teruto and Worley both teach a means for providing softness to a fabric is a discontinuous coating it would have been obvious to the person having ordinary skill in the art to use as the coating coverage of both the pile and non-pile surfaces 1 -99% because Worley teaches such an amount is suitable to provide both thermal regulation properties and fabric properties. Worley directs the skilled artisan optimize the coverage amount based on the desired property of the fabric. Therefore, it further would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of coating coverage since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed coverage area is critical and has unexpected results. In the present invention, one would have been motivated to optimize the coverage motivated by the desire to provide a fabric with the appropriate balance of thermal and contort properties.
Ozawa in view of Teruto and Worley teaches the article of claim 2. As discussed above, a skilled artisan would be motivated to use a dot, strip, linear, or mesh coating on the nonpile layer for the expected benefit of elasticity, fashionability, and softness. Strips would be a plurality of linear members of printed and non-printed members with the non-printed portions positioned between the strips. Additionally, a change in the shape of the printed portion is an aesthetic design change and change in shape. MPEP 2144.04(1, IV) as there is no disclosed mechanical or structural change associated with the claimed shape.
Regarding claim 8, Ozawa teaches all the limitations of claims 2 and 7 (see above) including incorporating the fabric, but fails to teach the ceramic powder arranged in spaced apart linear members forming a broken border, wherein the ceramic powder coating is discontinuous having sections covered with ceramic powder and sections not covered with ceramic powder.
However, Worley teaches a discontinuous coating on the surface of the fabric which may have a pattern of spaced apart linear members forming a broken border as shown in Figure 1. Worley teaches the coating including a phase change material which has the capacity to both absorb and release thermal energy [¶ 0033], and that the coating can include a ceramic, such as silica [¶ 0044]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Ozawa’s fabric panel by having the ceramic material applied as a discontinuous pattern of linear members forming a broken border as disclosed by Worley. In light of the teachings of Worley, at ¶ 0007, one would have been motivated to make this modification of providing a discontinuous pattern to the fabric to improve flexibility and air permeability.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
WO 2011/114025- Chapuis discloses making a garment fabric panel [abstract], made out of natural or synthetic fibers and/or elastic fibers, and including portions covered with ceramic powder, such as silica powder (which retains heat. Chapuis teaches the fabric panel having the ceramic powder arranged in a plurality of spaced apart linear members forming a broken border (a line of separated hexagons forms a linear member having a broken border), such that the ceramic powder forms a discontinuous coating having fabric sections covered with the powder and sections free of powder (Figure 1). Chapuis also teaches the garment can be a t-shirt which has a torso portion and a sleeve (Figure 5), and that the ceramic powder may penetrate to the user-facing side of the t-shirt. Chapuis does not teach a shoe upper.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Arti R Singh-Pandey whose telephone number is (571)272-1483. The examiner can normally be reached Monday-Thursday 8:30-3:00 and 8:00-10:00.
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/Arti Singh-Pandey/
Primary Patent Examiner
Art Unit 1759
asp