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 .
Election/Restrictions
Applicant’s election without traverse of Invention I in the reply filed on September 30, 2025 is acknowledged. Applicant canceled Claims 15-20. Claims 1-14 and 21-26 are currently pending.
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.
1. 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 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).
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 (para.113; as seen in Fig.15); and an inlaid strand (1922) comprising an inlaid segment that is inlaid within 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 inlaid strand exits and reenters the knitted component at least once along 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.
2. 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 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claim 7 is allowed over the prior art as none of the prior art, alone or in combination, teach the inlaid strand having a bend between a first end and a second end of the inlaid strand, and wherein the bend is located within the first course. To modify Podhajny to include such structure would be improper hindsight reasoning based on Applicant’s own disclosure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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.
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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732