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 .
Applicant’s amendment filed May 21, 2026 has been received, Claims 1-6, 8-14, and 21-26 are currently pending, with Claim 7 allowed.
Drawings
1. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “first loop and the second loop being co-axial with each other” in Claim 3 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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
2. The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Claim 3 recites “the first loop and the second loop being co-axial with each other”. After a full review of Applicant’s disclosure, there does not appear to be any support for the loops being co-axial with each other. Therefore, the specification fails to provide proper antecedent basis for the claimed subject matter.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
3. Claim 3 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 3 recites “the first loop and the second loop being co-axial with each other”. After a full review of Applicant’s disclosure, there does not appear to be any support for the loops being co-axial with each other. The limitation is new matter.
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.
4. Claim 3 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 3 recites “the first loop and the second loop being co-axial with each other”. The claim limitation is indefinite as it is wholly unclear how the loops are co-axial with each other, as they are in separate locations and do not share coincident axes. Claim 3 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.
5. Claim(s) 1-6, 8-14, 21, and 24-26 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Podhajny (US 2014/0237861).
Regarding Claim 1, Podhajny discloses an upper (1620) for an article of footwear, the upper comprising: a knitted component (1900; para.106) comprising a first course (as seen in Fig.22A) and a first edge (1903) that at least partially defines a medial side or a lateral side of a throat opening of the upper (para.107; as seen in Fig.19); and an inlaid strand (1922) comprising: an inlaid segment that is inlaid within and aligned with at least a portion of the first course of the knitted component (para.106 & 110); and an exposed segment (1922 of medial 1926) where the inlaid strand exits and reenters the knitted component at least once along the first course (as seen in Fig.19 & 22A).
Regarding Claim 2, Podhajny discloses an upper of claim 1, wherein the exposed segment (1922 of medial 1926) is a first exposed segment configured into a first loop (medial 1926) extending out from the knitted component (as seen in Fig.19).
Regarding Claim 3, Podhajny discloses an upper of claim 2, wherein the inlaid strand includes a second exposed segment (1922 of lateral 1926) configured into a second loop (lateral 1926) extending out from the knitted component (as seen in Fig.19); the first loop and the second loop being co-axial with each other (insofar as is definite, as seen in annotated Figure below).
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Regarding Claim 4, Podhajny discloses an upper of claim 3, wherein the knitted component further comprises an edge portion (i.e. distance from 1903 to course from which 1926 exits) between the first edge (1903) and the first course (i.e. course from which 1926 exits), and the first loop and the second loop are positioned on opposite sides of the edge portion (as seen in Fig.16 & 19).
Regarding Claim 5, Podhajny discloses an upper of claim 4, wherein the inlaid segment (of 1922) is secured within the first course (as seen in Fig.19 & 22A; para.110).
Regarding Claim 6, Podhajny discloses an upper of claim 5, wherein the inlaid strand is secured within the first course via an embroidering strand (2200)(para.114; as seen in Fig.22A, inasmuch as has been claimed by Applicant, 2200 is an embroidering strand in that it is a yarn capable of being used in embroidery).
Regarding Claim 8, Podhajny discloses an upper of claim 1, wherein the at least a portion of the first course is substantially parallel to the first edge of the knitted component (as seen in Fig.19 & 22A).
Regarding Claim 9, Podhajny discloses an article of footwear comprising an upper (1620) and a sole structure (1610) attached to the upper along a biteline (1910) (as seen in Fig.16-18), the upper comprising: a knitted component (medial portion of 1902) having a first edge (1903) that at least partially defines a medial side or a lateral side of a throat opening of the upper (para.107), the knitted component having a first course extending in a toe-heel direction adjacent to the first edge (para.113; as seen in Fig.15); and an inlaid strand (1922) comprising an inlaid segment that is inlaid within and aligned with at least a portion of the first course of the knitted component (para.106 & 110), the inlaid strand further comprising an exposed segment (1922 of medial 1926), wherein the exposed segment of the inlaid strand exits and reenters the knitted component at least once along an inner surface or an outer surface of the first course (as seen in Fig.19 & 22A).
Regarding Claim 10, Podhajny discloses an article of footwear of claim 9, wherein the inlaid strand has a first end (1923) and a second end (1924), wherein the first course has a first end opening (i.e. opening from which 1922 exit at 1910) along a perimeter edge of the knitted component (as seen in Fig.19 & 22A), and the first end and the second end of the inlaid strand exit the first course through the first end opening (as seen in Fig.19 & 22A).
Regarding Claim 11, Podhajny discloses an article of footwear of claim 10, wherein the first end and the second end of the inlaid strand extend to the biteline (as seen in Fig.19).
Regarding Claim 12, Podhajny discloses an article of footwear of claim 11, wherein the first end and the second end of the inlaid strand are secured to the sole structure (para.103-104).
Regarding Claim 13, Podhajny discloses an article of footwear of claim 9, wherein the knitted component is a first knitted component (1902) and the upper further comprises a tongue (1920) comprising a second knitted component attached to the first knitted component (para.107).
Regarding Claim 14, Podhajny discloses an article of footwear of claim 13, further comprising a third knitted component (lateral portion of 1902) attached to the second knitted component (1920), wherein the first edge (1903) of the first knitted component defines the medial side of the throat opening and the third knitted component comprises a second edge (1904) that defines the lateral side of the throat opening (para.106), the third knitted component further comprising a second course and a second inlaid strand inlaid (1942) within at least a portion of the second course (as seen in Fig.19 & 22A; para.106).
Regarding Claim 21, Podhajny discloses an upper of claim 2, wherein the first loop (1926) extends around an eyelet (1936) in the knitted component between the first edge and the first course (i.e. course from which 1926 exits)(as seen in Fig.19; para.109).
Regarding Claim 24, Podhajny discloses an upper of claim 1, wherein the upper comprises a second inlaid strand (1942) that is inlaid within the portion of the first course (as seen in Fig.19 & 22A; para.106).
Regarding Claim 25, Podhajny discloses an upper of claim 2, wherein the upper comprises a second inlaid strand (1942), the second inlaid strand comprising: an second inlaid segment that is inlaid within at least a portion of a second course of the knitted component (as seen in Fig.19 & 22A; para.106); and a second exposed segment (i.e. loop end of 1942) where the second inlaid strand exits and reenters the knitted component at least once along the second course (as seen in Fig.19).
Regarding Claim 26, Podhajny discloses an upper of claim 25, wherein the second exposed segment comprises a second loop (i.e. from one end of 1942 to the second end of 1942 is a long loop) that overlaps with the first loop (1926; 1922 extending from 1910, around 1926, and back down to 1910 is a long loop)(as seen in Fig.19 & 22A).
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.
6. Claim(s) 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Podhajny (US 2014/0237861) in view of Kim (US 2022/0213621).
Regarding Claims 22 and 23, Podhajny discloses the invention substantially as claimed above. Podhajny does not disclose wherein the knitted component comprises a yarn formed from recycled leather; and wherein the recycled leather comprises a combination of leather scraps and PET having a ratio between 1:3 and 7:3. However, Kim teaches a textile having a yarn formed from recycled leather (para.2 & 7); and wherein the recycled leather comprises a combination of leather scraps and PET having a ratio between 1:3 and 7:3 (para.7-11).
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 a knitted component yarn of Podhajny to be a yarn formed from recycled leather that comprises a combination of leather scraps and PET, as taught by Kim, in order to provide a durable yarn that provides the desired aesthetic appearance to the shoe upper. Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Allowable Subject Matter
Claim 7 is allowed.
Response to Arguments
In view of Applicant's amendment, the search has been updated, and newly modified grounds of rejection have been identified and applied. Applicant's arguments have been considered but, as they are drawn solely to the newly amended limitations, are moot in view of the newly modified 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, Alissa J. Tompkins can be reached at 571-272-3425. 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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