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 .
Terminal Disclaimer
The terminal disclaimer filed on 11/24/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent Nos. 11,206,899 and 12,201,179 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 8-10, 12, and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zavala (US 2014/0338226).
Regarding claim 8, Zavala discloses a shoe (100), comprising: a sole (110); and a knit textile upper (120) attached to the sole, wherein the upper defines an opening to a cavity of the shoe, the knit textile upper comprising: an elastic region (218, 332) configured to exert a compressive force to assist in maintaining the shoe on a wearer’s foot, the elastic region extending at least partially around the opening to the cavity and comprising at least a first knit pattern (at curved boundary 361) and a second knit pattern (at straight boundary 361), a structural region (214, 328) coupled to the elastic region, wherein the first knit pattern is located in a first portion within and along the elastic region, and the second knit pattern is located in a second portion within and along the elastic region, the first portion laterally adjacent to the second portion around the elastic region, wherein the first knit pattern is different than the second knit pattern (wherein the first knit pattern forms a curved bottom edge, and the second knit pattern forms a straight bottom edge, necessitating different patterns to form the different shapes) (paragraphs 0048, 0051, 0054, 0056, 0064; Fig. 1, 6, 9).
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Regarding claim 9, Zavala discloses that the first knit pattern is a first ribbed knit pattern, and the second knit pattern is a second ribbed knit pattern (paragraph 0056).
Regarding claim 10, Zavala discloses that the first knit pattern defines a curved portion of the elastic region, and the second knit pattern defines a substantially straight portion of the elastic region (Fig. 9).
Regarding claim 12, Zavala discloses that the knit textile upper is a continuous knit textile upper.
Regarding claim 13, Zavala discloses that the elastic region extends completely around the opening to the cavity (Fig. 3).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3, 6, 8, and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dunlap et al. (US 4,282,727) in view of Guille (US 3,863,272).
Regarding claim 1, Dunlap discloses an article of footwear, comprising: and a knit textile upper (10), wherein the upper defines an opening (14) to a cavity of the shoe, the knit textile upper comprising: an elastic region (12) configured to exert a compressive force to assist in maintaining the shoe on a wearer’s foot, the elastic region extending at least partially around the opening to the cavity and defining a ribbed knit pattern (20), a structural region (foot of sock) coupled to the elastic region at a boundary (Fig. 1), wherein the ribbed knit pattern comprises: a first set of ribs (20) extending a first distance between the opening and the boundary; and a second set of ribs (22), each rib of the first set of ribs alternating with an adjacent rib of the second set of ribs, the second set of ribs extending a second distance between the opening and the boundary less than the first distance (Fig. 3) (column 2, line 42-column 3, line 4; column 4, lines 4-11; Fig. 1-3).
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Dunlap does not disclose a sole. Guille teaches a shoe comprising a knit textile upper (1) attached to a sole (3). The sole provides resistance to wear and high comfort to the knit textile upper (column 5, lines 20-25; Fig. 1-2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a sole, as taught by Guille, to the knit textile upper of Dunlap in order to provide resistance to wear and high comfort to the knit textile upper.
Regarding claim 2, Dunlap discloses that the knit textile upper is a continuous knit textile upper (Fig. 1).
Regarding claim 3, Dunlap discloses that the elastic region extends completely around the opening to the cavity (Fig. 1).
Regarding claim 6, Dunlap discloses that the first set of ribs extend from the boundary to a perimeter of the opening to the cavity (Fig. 1, 3).
Regarding claim 8, Dunlap discloses a shoe, comprising: a knit textile upper (10), wherein the upper defines an opening (14) to a cavity of the shoe, the knit textile upper comprising: an elastic region (12) configured to exert a compressive force to assist in maintaining the shoe on a wearer’s foot, the elastic region extending at least partially around the opening to the cavity and comprising at least a first knit pattern (18) and a second knit pattern (16), a structural region (foot of sock) coupled to the elastic region, wherein the first knit pattern is located in a first portion within and along the elastic region, and the second knit pattern is located in a second portion within and along the elastic region, the first portion laterally adjacent to the second portion around the elastic region, wherein the first knit pattern is different than the second knit pattern (column 2, line 42-column 3, line 4; column 4, lines 4-11; Fig. 1-3).
Dunlap does not disclose a sole. Guille teaches a shoe comprising a knit textile upper (1) attached to a sole (3). The sole provides resistance to wear and high comfort to the knit textile upper (column 5, lines 20-25; Fig. 1-2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a sole, as taught by Guille, to the knit textile upper of Dunlap in order to provide resistance to wear and high comfort to the knit textile upper.
Regarding claim 11, Dunlap discloses that the first knit pattern imparts a first elasticity to the first portion that is greater than a second elasticity imparted to the second portion by the second knit pattern.
Regarding claim 12, Dunlap discloses that the knit textile upper is a continuous knit textile upper (Fig. 1).
Regarding claim 13, Dunlap discloses that the elastic region extends completely around the opening to the cavity (Fig. 1).
Claim(s) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dunlap and Guille, as applied to claim 1, further in view of Zavala (US 2014/0338226).
Regarding claim 4, Dunlap and Guille do not disclose the relative elasticities of the structural and elastic regions. Zavala teaches a knitted upper having an elastic region (zones 218, 232) in the collar area having a first elasticity, and a structural region (zones 214, 228) having a second elasticity that is less than the first elasticity (paragraphs 0048, 0054, 0056; Fig. 1, 6). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the structural region with an elasticity less than that of the elastic region, as taught by Zavala, in order to provide stretch in the collar region to allow a passage of wearer’s foot, while providing support to a wearer’s foot in the structural region.
Regarding claim 5, Dunlap and Guille do not disclose the relative compressive forces of the structural and elastic regions. Zavala teaches a knitted upper having an elastic region (zones 218, 232) in the collar area having a first elasticity, and a structural region (zones 214, 228) having a second elasticity that is less than the first elasticity (paragraphs 0048, 0054, 0056; Fig. 1, 6). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the structural region with an elasticity less than that of the elastic region (and which therefore exerts a lesser compressive force), as taught by Zavala, in order to provide stretch in the collar region to allow a passage of wearer’s foot, while providing support to a wearer’s foot in the structural region.
Allowable Subject Matter
Claim 14 is allowed.
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.
Response to Arguments
Applicant's arguments filed 11/24/2025 have been fully considered but they are not persuasive.
Applicant argues that there is no disclosure in Zavala of the elastic region itself having different knit patterns. However, Zavala discloses that “portions of the internal boundary 361 may be spaced apart from the upper peripheral edge 320 by varying distances” (paragraph 0064), creating portions with a curved boundary, as seen in Fig. 9. Zavala further discloses at least one portion with a straight boundary, as seen in Fig. 9. A first knit pattern forms the curved bottom edge, and a second knit pattern forms the straight bottom edge. Different patterns are necessary to form the different shapes, inasmuch as Applicant has defined different knit patterns within the claims.
Applicant further argues that Zavala does not teach or suggest “the first portion laterally adjacent to the second portion.” However, this limitation is clearly illustrated in Fig. 9, see especially annotated Fig. 9 above.
Applicant argues that Dunlap is directed specifically to a sock. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The combination of Dunlap and Guille clearly teaches an upper with a sole, and therefore teaches a shoe.
Applicant further argues that there is nothing in Dunlap to suggest a combination with Guille. However, Guille clearly teaches adding a sole to a sock (therefore forming a shoe), to provide resistance to wear and high comfort to the knit textile upper (column 5, lines 20-25). The motivation for modifying a primary reference need not come from the primary reference itself, but may come from a secondary reference. In re Laskowski, 10 USPQ2d 1397 (Fed. Cir. 1989).
Applicant argues that the alternating regions of Dunlap are regions that are more or less raised from the surface of the sock, not ribs which extend different distances vertically along the elastic region. However, Dunlap clearly shows in Fig. 3 that the ribs 22 are vertically shorter than ribs 20 (see the vertical height of knit stitches at wales W-1, W-2, W-5, W-6 versus the shorter height of floated stitches at wales W-3, W-4, W-7, W-8).
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 SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 EST.
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/SHARON M PRANGE/Primary Examiner, Art Unit 3732