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 Species 11: Fig.3J in the reply filed on November 10, 2025 is acknowledged.
After a full review of Applicant’s disclosure, Claims 10 and 17-20 are withdrawn from prosecution at this time, as the elected embodiment does not contain partial knitting, a plurality of outer collars, an inner sock and an outer sock, or a tongue. Claim 10 is drawn to Species 5 and Species 7 which are non-elected inventions. Claim 17 is drawn to Species 2, Species 4, Species 5, or Species 10 which are non-elected inventions. Claims 18-20 are drawn to Species 12, Species 13, or Species 14, which are non-elected inventions. Claims 1-6, 8-9, 11-16, and 21 are currently pending examination.
Drawings
1. The drawings are objected to because the drawings improperly contain only black and white photographs. It is noted that black and white photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. In order for photographs to properly replace line drawings, the photographs or photomicrographs must show the invention more clearly than they can be done by India ink drawings and otherwise comply with the rules concerning such drawings. Black and white photographs submitted in lieu of ink drawings must comply with 37 CFR 1.84(b). There is no requirement for a petition or petition fee, and only one set of photographs is required. See 37 CFR 1.84(b)(1). To be acceptable, such photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent. If several photographs are used to make one sheet of drawings, the photographs must be contained on a single sheet.
Photographs or photomicrograph printed on sensitized paper are acceptable as drawings, in lieu of India ink drawings, as are photographic images submitted via EFS-Web, to illustrate inventions which are incapable of being accurately or adequately depicted by India ink drawings, e.g., electrophoresis gels, blots, (e.g., immunological, western, Southern, and northern), autoradiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, metallurgical microstructures, textile fabrics, grain structures and, in a design patent application, ornamental effects. See MPEP 608.02.
Examiner respectfully notes that the instant invention does not appear to fall under the above category.
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.
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) 1-5, 8-9, 11-16, and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kuo (US 2018/0042340).
Regarding Claim 1, Kuo discloses a knitted upper (103; para.44) for a shoe, comprising: a knitted inner collar (33,55/6,8) defining a circumferential first free edge of the upper and being adapted to completely surround a portion of a leg of a wearer of the shoe during use (see annotated Figure below); at least one knitted outer collar (35) at least partially surrounding the inner collar and defining a second free edge of the upper (see annotated Figure below), wherein the inner collar and the outer collar are a one-piece knitted construction (as seen in Fig.23 & 24; para.51).
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Regarding Claim 2, Kuo discloses a knitted upper of claim 1, wherein the inner collar and the outer collar have been knitted in a single knitting process (as seen in Fig.23 & 24; para.51).
Regarding Claim 3, Kuo discloses a knitted upper of claim 1, wherein the outer collar (35) is formed in the shape of a flap or a lamella (as seen in Fig.24, 35 is a flap).
Regarding Claim 4, Kuo discloses a knitted upper of claim 1, wherein the inner collar (33,55/6,8) and the outer collar (35) overlap in a heel region (5) of the upper (as seen in Fig.23 & 24; para.51).
Regarding Claim 5, Kuo discloses a knitted upper of claim 1, wherein the inner collar (33,55/6,8) comprises a first yarn (para.44; i.e. non-elastic yarn) and the outer collar (35) comprises a second yarn (para.51; i.e. elastic yarn), wherein the first yarn is different from the second yarn (para.44 & 51).
Regarding Claim 8, Kuo discloses a knitted upper of claim 1, wherein the inner collar (33,55/6,8) is arranged proximal (i.e. forward of the ankle) to a foot of a wearer wearing a shoe comprising the knitted upper and, wherein the outer collar (35) is arranged distal (i.e. rear of the ankle) to the foot during use (as seen in Fig.24).
Regarding Claim 9, Kuo discloses a knitted upper of claim 1, wherein at least one of the inner collar or the outer collar (35) comprises an elastic yarn (para.51; i.e. elastic yarn).
Regarding Claim 11, Kuo discloses a knitted upper of claim 1, wherein at least one of a yarn tension, a knitting structure, a shape of, or an amount of padding in the inner collar (33,55/6,8) differs from a yarn tension, a knitting structure, a shape of, or an amount of padding in the outer collar (35)(as seen in Fig.23 & 24, the knitting structure & shapes of the collars are different from each other).
Regarding Claim 12, Kuo discloses a knitted upper of claim 1, wherein the outer collar (35) defines a circumferential second free edge of the upper which is adapted to surround a portion of a leg of a wearer of the shoe during use (see annotated Figure above).
Regarding Claim 13, Kuo discloses a knitted upper of claim 1, wherein the inner collar and the outer collar each are formed by a single knitted layer folded onto itself (as seen in Fig.23 & 24; para.51).
Regarding Claim 14, Kuo discloses a knitted upper of claim 1, wherein the distance (i.e. height of 6 & 8) between the free edge of the inner collar (33,55/6,8) and a location where the inner collar and the outer collar are joined (i.e. junction of 35 & 33,55/6,8 at their respective bottom portions) is larger than a distance (i.e. height of 35) between the free edge of the outer collar (35) and the location where the inner collar and the outer collar are joined (as seen in Fig.24).
Regarding Claim 15, Kuo discloses a knitted upper of claim 1, wherein the inner collar (33,55/6,8) is thicker (i.e. taller height is “thicker”, insofar as has been claimed by Applicant) at (6 & 8) than the outer collar (35)(as seen in Fig.24).
Regarding Claim 16, Kuo discloses a knitted upper of claim 1, wherein the inner collar and the outer collar have been manufactured on at least one of a circular knitting machine (para.6 & 51), a small circular knitting machine, or an intarsia small circular knitting machine.
Regarding Claim 21, Kuo discloses a knitted upper (103; para.44) for a shoe, comprising: a first knitted collar element (33,55/6,8) defining a circumferential first free edge of the upper and being adapted to completely surround a first portion of a leg of a wearer of the shoe during use (see annotated Figure above); one or more second knitted collar elements (35) defining one or more second free edges of the upper proximate one or more second portions of the leg of the wearer and proximate the first collar element during use (see annotated Figure above); wherein the first collar element and the one or more second knitted collar elements are a one-piece knitted construction (as seen in Fig.23 & 24; para.51); and wherein at least one of the first knitted collar element (33,55/6,8) or the one or more second collar elements comprises a height that varies along the length of the collar element (as seen in Fig.24 & annotated Figure above; 6 & 8 are taller than the rest of the circumferential edge).
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) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kuo (US 2018/0042340) in view of Brier (US 5,319,807).
Regarding Claim 6, Kuo discloses the invention substantially as claimed above. Kuo does not disclose wherein the first yarn is at least one of more moisture wicking than the second yarn or less abrasion resistant than the second yarn. However, Brier teaches a knit sock upper which contains a moisture wicking yarn (Col.3, lines 8-14).
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 first yarn of Kuo to be a moisture wicking yarn, as taught by Brier, in order to provide an upper that promotes air circulation between the sock and the shoe, so a user’s foot remains comfortable and dry.
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.
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