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 .
Response to Amendment
The amendment filed 12/15/25 has been entered. Claims 1-10, 14 remain pending in the application. The Non-Final Office Action was mailed 9/16/25.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-4, 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Portzline et al (US Publication 2011/0283560) in view of Guenoun (US Publication 2016/0073725), Townsend (USPN 7490416), and Yuen et al (US Publication 2017/0245570), herein Yuen.
Regarding Claim 1, Portzline teaches an article (it is noted that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations; however, see Figs. 1G, 1H; [0031] "Figs. 1G and 1H illustrate…footwear…where the multiple response property materials comprise not only the midsole, but also portions of, for example, the heel cup 70 and/or upper 80") comprising:
a layer (100g) disposed on the article.
Portzline Fig. 1G, 1H embodiment does not explicitly teach wherein the layer includes a plurality of materials each having a different hardness than an adjacent material,
wherein the layer has a continuous and even gradation that extends along the entire length of the article.
However, Portzline Fig. 1F embodiment teaches wherein the layer includes a plurality of materials each having a different hardness than an adjacent material ([0027] "Fig. 1F illustrates...midsole 100f"; [0021] "blended transition 16 may be disposed between the first and second response property materials"; [0027] "second blended transition 18 may be disposed between second response property material 12 and third response property material 14...such as arrangement may provide a balance of cushioning (...14 is a lower...durometer foam)...and stability (material 10 is a higher...durometer foam)"; [0026] "lower durometer (e.g., softer) third response property material 14 may be used as the upper layer to provide comfort, whereas second 12 and first 10 response property materials may have higher...durometers, for instance to provide durability, support, and resilience"; [0029] "low , medium, and high identifiers may correspond to 55, 60, and 65 Asker C; or 55, 65, and 75 Asker C"; [0022] "first response property material 10 may have a higher...durometer, with second response property material 12 having a ...durometer that is less than that of first response property material 10, but greater than that of third response property material 14", such that 14<12<10; wherein durometer is hardness),
wherein the layer has a continuous and even gradation that extends along the entire length of the article (see Fig. 1F for continuous along entire length with an even gradation).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Portzline’s Figs. 1G, 1H’s midsole with the arrangement of Fig. 1F’s midsole based on where softness/cushioning and stability/support/durability is required based on user needs, footstrike pattern, running style, or terrain ([0028]), herein in Fig. 1F for lateral stability ([0027]).
Portzline Figs. 1G, 1H embodiment also does not explicitly teach wherein the plurality of materials is arranged on the article such that a stiffness of the article is gradated along a length of the article from a first portion to a second portion of the article,
wherein a stiffness of the second portion is greater than a stiffness of the first portion.
However, Portzline Fig. 1F embodiment teaches the aforementioned for hardness (see aforementioned rejection with Fig. 1F, where first/second portions are toe/heel, wherein there is a portion at the second/heel that is greater than a portion of a stiffness of the first/toe portion, as 14 < 12 < 10).
Guenoun teaches that hardness and stiffness are related ([0077] "according to the hardness of the chosen material, it is thus possible to adjust the…stiffness of the insole").
As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that modified Portzline teaches the aforementioned for stiffness in light of Guenoun as modified Portzline teaches the recitations for hardness.
Portzline Figs. 1G, 1H embodiment also does not explicitly teach and wherein the article comprises a fabric on which the layer is disposed.
Townsend teaches and wherein the article comprises a fabric on which the layer is disposed (see Fig. 1; Col. 3 Lines 53-57 "An insole 3, sometimes called a sock liner and constructed from conventional thin, flexible material such as fabric conventionally bonded to foam PU or EVA, preferably is interposed between the bottom of the runner's foot and the midsole upper surface 5 for enhanced comfort"; Col. 3 Line 60 "midsole 6”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Portzline’s midsole with the fabric insole as taught by Townsend to provide enhanced comfort (Col. 3 Lines 53-57).
Portzline does not explicitly teach wherein the article is an undergarment.
Yuen teaches wherein article can be shoes or undergarments ([0035] "personalized and/or custom-fitted clothing and/or alteration of existing patterns or clothing includes…undergarments…shoes").
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Portzline’s article to be an undergarment instead as it is known in the art how to apply patterns in an article of footwear to an undergarment article ([0035]), depending on the desired functional use.
Regarding Claim 2, modified Portzline teaches all the claimed limitations as discussed above in Claim 1.
Modified Portzline further teaches wherein the layer is a second layer (see Portzline Figs. 1G, 1H),
and the undergarment further comprises a first layer (Portzline 80) on which the second layer is disposed (see Portzline Figs. 1G, 1H).
Regarding Claim 3, modified Portzline teaches all the claimed limitations as discussed above in Claim 1.
Modified Portzline further teaches wherein the undergarment further comprises first and second side portions (see Portzline Fig. 1F; wherein first/second side portions are on the midsole 100f which is of the article; wherein first, second side portions are on the same side of the midsole, between the first/second toe/heel portions),
wherein the plurality of materials is arranged on the undergarment such that stiffnesses of either or both of the first and second side portions is less than the stiffness of the second portion and greater than the stiffness of the first portion (see Portzline wherein there are portions that meet the range, as 14 < 12 < 10 , as these portions exist in the recited areas).
Regarding Claim 4, modified Portzline teaches all the claimed limitations as discussed above in Claim 3.
Modified Portzline further teaches wherein the plurality of materials includes (Portzline 14 < 18 < 12 < 16 < 10):
a first material disposed on the first portion of the undergarment, wherein the first material has a first hardness (Portzline--there is a portion of 14 at the toe area);
a second material disposed on the first side portion of the undergarment, wherein the second material has a second hardness (Portzline--there is a portion of 18 at the first side portion);
a third material disposed on the second side portion of the undergarment, wherein the third material has a third hardness (Portzline--there is a portion of 16 at the second side portion); and
a fourth material disposed on the second portion of the undergarment, wherein the fourth material has a fourth hardness (Portzline--there is a portion of 10 at the second portion),
wherein the first hardness is less than the second hardness, the third hardness, and the fourth hardness (Portzline--14 < 18, 16, 10),
wherein the second hardness is less than the third hardness and the fourth hardness (Portzline--18 < 16, 10),
and wherein the third hardness is less than the fourth hardness (Portzline--16 < 10).
Regarding Claim 14, modified Portzline teaches all the claimed limitations as discussed above in Claim 1. Modified Portzline further teaches wherein the layer is deposited directly on the fabric of the undergarment (see Portzline Figs. 1G, 1H which already teaches that the layer is deposited directly on the article, wherein the article was made fabric by Townsend and made an undergarment by Yuen).
Claim(s) 5, 6, 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Portzline et al (US Publication 2011/0283560) in view of Guenoun (US Publication 2016/0073725), Townsend (USPN 7490416), and Yuen et al (US Publication 2017/0245570), herein Yuen, further in view of Webster (USPN 11284674).
Regarding Claim 5, modified Portzline teaches all the claimed limitations as discussed above in Claim 4.
Portzline does not explicitly teach wherein the first, second, third, and fourth materials have a uniform thickness.
However, Portzline Fig. 1F shows that the materials are of a same layer.
Webster at least suggests wherein materials of a same layer have a uniform thickness (Col. 19 Lines 53-56 “spraying of the first (i.e. upper exterior) layer as well as subsequent layers onto the last…can be performed as to provide a substantially uniform thickness over the last, or alternatively to vary the thickness”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Portzline’s material thicknesses to be uniform as taught by Webster for uniform structural support (Col. 19 Lines 53-65) in a shoe.
Regarding Claim 6, modified Portzline teaches all the claimed limitations as discussed above in Claim 5.
Modified Portzline further teaches wherein the first hardness of the first portion is within a range of 15A-49A on a Shore A durometer scale ([0029] low, medium, and high identifiers may correspond to…55, 65, and 75 Asker C", wherein 14 < 12 < 10, wherein first portion is Portzline toe 14 and therefore 55 Asker C, wherein it is known in the art that 55 Asker C is about 32 Shore A, see extrinsic evidence Worldwide Foam NPL),
and wherein the fourth hardness of the second portion is within a range of 50A-100A on the Shore A durometer scale (wherein second portion is Portzline heel 10 and therefore 75 Asker C, wherein it is known in the art that 75 Asker C is about 53 Shore A, see extrinsic evidence Worldwide Foam NPL).
Regarding Claim 9, modified Portzline teaches all the claimed limitations as discussed above in Claim 1.
Portzline does not explicitly teach wherein the layer has a uniform thickness.
However, Portzline Fig. 1F shows that the materials are of a same layer.
Webster at least suggests wherein materials of a same layer have a uniform thickness (Col. 19 Lines 53-56 “spraying of the first (i.e. upper exterior) layer as well as subsequent layers onto the last…can be performed as to provide a substantially uniform thickness over the last, or alternatively to vary the thickness”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Portzline’s layer to be of uniform thickness as taught by Webster for uniform structural support (Col. 19 Lines 53-65) in a shoe.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Portzline et al (US Publication 2011/0283560) in view of Guenoun (US Publication 2016/0073725), Townsend (USPN 7490416), and Yuen et al (US Publication 2017/0245570), herein Yuen, further in view of Luedecke (US Publication 2018/0192736).
Regarding Claim 7, modified Portzline teaches all the claimed limitations as discussed above in Claim 1.
Portzline does not explicitly teach wherein the layer has a uniform color.
Luedecke teaches wherein the layer has a uniform color ([0059] “beads with differing properties such as hardness…may be colored in similar ways”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Portzline’s layer to be of a uniform color as taught by Luedecke for aesthetic design choice, especially as Luedecke is also referring to pellets of varying hardness.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Portzline et al (US Publication 2011/0283560) in view of Guenoun (US Publication 2016/0073725), Townsend (USPN 7490416), and Yuen et al (US Publication 2017/0245570), herein Yuen, further in view of Luedecke (US Publication 2018/0192736) and Ji (CN 107914409).
Regarding Claim 8, modified Portzline teaches all the claimed limitations as discussed above in Claim 1.
Portzline does not explicitly teach wherein the layer has one or more of a uniform color and uniform texture.
Luedecke teaches wherein the layer has a uniform color ([0059] “beads with differing properties such as hardness…may be colored in similar ways”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Portzline’s layer to be of a uniform color as taught by Luedecke for aesthetic design choice, especially as Luedecke is also referring to pellets of varying hardness.
Ji teaches wherein the layer has uniform texture ([0016] "present invention utilizes injection molding to precisely control…a finished sole with uniform texture").
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Portzline’s layer to be of a uniform texture as taught by Ji as a known characteristic of a sole made with injection molding, which Portzline is too ([0036]), in order to have consistent sole characteristics, such as for grip ([0002]).
Allowable Subject Matter
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Claim(s) 10 is/are objected to as being dependent upon a rejected base claim, but may be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and after the double patenting rejection has been overcome.
The following is a statement of reasons for the indication of allowable subject matter:
See page 14 of office action 9/16/25.
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.
Claim(s) 1-10, 14 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-7, 9, 10 of U.S. Patent No. 11925237, herein Larson, in view of Chen (US Publication 2017/0095036) and Yuen et al (US Publication 2017/0245570), herein Yuen.
The claims of the instant application and the claims of the reference patent are compared in the table below.
Instant Application 19/018,840
US Patent 11925237
1. An undergarment comprising:
1. An article of footwear comprising: a sole structure; an upper coupled to the sole structure; and
a layer disposed on the undergarment,
a layer disposed only on the upper,
wherein the layer includes a plurality of materials each having a different hardness than an adjacent material,
wherein the layer includes a plurality of materials each having a different hardness than an adjacent material,
wherein the plurality of materials is arranged on the undergarment such that a stiffness of the undergarment is gradated along a length of the undergarment from a first portion to a second portion of the undergarment,
wherein the plurality of materials is arranged on the upper such that a stiffness of the upper is gradated from a toe portion of the upper to a heel portion of the upper,
wherein a stiffness of the second portion is greater than a stiffness of the first portion,
wherein a stiffness of the heel portion is greater than a stiffness of the toe portion,
wherein the layer has a continuous and even gradation that extends along the entire length of the undergarment,
and wherein the layer has a continuous and even gradation that extends along the entire length of the upper.
and wherein the undergarment comprises a fabric on which the layer is disposed
2. The undergarment of claim 1, wherein the layer is a second layer,
2. The article of footwear of claim 1, wherein the layer is a second layer,
and the undergarment further comprises a first layer on which the second layer is disposed
and the article of footwear further comprises a first layer on which the second layer is disposed
3. The undergarment of claim 1, wherein the undergarment further first and second side portions,
3. The article of footwear of claim 1, wherein the plurality wherein the article further first and second side portions,
wherein the plurality of materials is arranged on the undergarment such that stiffnesses of either or both of the first and second side portions is less than the stiffness of the second portion and greater than the stiffness of the first portion
wherein the plurality of materials is arranged on the article of footwear such that stiffnesses of either or both of the first and second side portions is less than the stiffness of the heel portion and greater than the stiffness of the toe portion
4. The undergarment of claim 3, wherein the plurality of materials includes:
4. The article of footwear of claim 3, wherein the plurality of materials includes:
a first material disposed on the first portion of the undergarment, wherein the first material has a first hardness;
a first material disposed on the toe portion of the article, wherein the first material has a first hardness;
a second material disposed on the first side portion of the undergarment, wherein the second material has a second hardness;
a second material disposed on the first side portion of the article, wherein the second material has a second hardness;
a third material disposed on the second side portion of the undergarment, wherein the third material has a third hardness; and
a third material disposed on the second side portion of the article, wherein the third material has a third hardness; and
a fourth material disposed on the second portion of the undergarment, wherein the fourth material has a fourth hardness,
a fourth material disposed on the heel portion of the article, wherein the fourth material has a fourth hardness,
wherein the first hardness is less than the second hardness, the third hardness, and the fourth hardness,
wherein the first hardness is less than the second hardness, the third hardness, and the fourth hardness,
wherein the second hardness is less than the third hardness and the fourth hardness,
wherein the second hardness is less than the third hardness and the fourth hardness,
and wherein the thirdness is less than the fourth hardness
and wherein the thirdness is less than the fourth hardness
5. The undergarment of claim 4, wherein the first, second, third, and fourth materials have a uniform thickness
5. The article of footwear claim 4, wherein the first, second, third, and fourth materials have a uniform thickness
6. The undergarment of claim 5, wherein the first hardness of the first portion is within a range of 15A-49A on a Shore A durometer scale,
6. The article of footwear of claim 5, wherein the first hardness of the first portion is within a range of 15A-49A on a Shore A durometer scale,
and wherein the fourth hardness of the second portion is within a range of 50A-100A on the Shore A durometer scale
and wherein the fourth hardness of the second portion is within a range of 50A-100A on the Shore A durometer scale
7. The undergarment of claim 1, wherein the layer has a uniform color
7. The article of footwear of claim 1, wherein the layer has a uniform color
8. The undergarment of claim 1, wherein the layer has one or more of a uniform color and uniform texture
8. The article of footwear of claim 1, wherein the layer has a uniform appearance
9. The undergarment of claim 1, wherein the layer has a uniform thickness
9. The article of footwear of claim 1, wherein the layer has a uniform thickness
10. The undergarment of claim 1, wherein the plurality of materials includes a first material and a second material disposed on the first portion of the undergarment,
10. The article of footwear of claim 1, wherein the plurality of materials includes a first material and a second material disposed on the first portion of the article,
wherein the first material has a plurality of spaced-apart first segments and a first hardness,
wherein the first material has a plurality of spaced-apart first segments and a first hardness,
wherein the second material has a plurality of spaced-apart second segments and a second hardness,
wherein the second material has a plurality of spaced-apart second segments and a second hardness,
wherein the second hardness is greater than the first hardness,
wherein the second hardness is greater than the first hardness,
wherein the first segments and the second segments are arranged in an alternating pattern from a first side of the undergarment to a second side of the undergarment,
wherein the first segments and the second segments are arranged in an alternating pattern from a first side of the article to a second side of the article,
and wherein each adjacent pair of second segments comprises a first segment disposed therebetween
and wherein each adjacent pair of second segments comprises a first segment disposed therebetween
14. The undergarment of claim 1, wherein the layer is deposited directly on the fabric of the undergarment.
1. An article of footwear comprising: a sole structure; an upper coupled to the sole structure; and a layer disposed only on the upper
Claim 1 of the reference patent recites all of the broader limitations of claim 1 of the instant application except that the article is “an undergarment” and “wherein the article comprises a fabric on which the layer is disposed”.
However, Chen discloses another article comprising a layer and specifically teaches wherein the article comprises a fabric on which the layer is disposed (see Fig. 5; [0024] "a layer of insole fabric 124 is first securely attached to upper 12", wherein 12 is the layer).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have an article comprising a fabric on which the layer is disposed as taught by Chen, within the article of claim 1 of the reference patent, as a known material arrangement to effectively attach an upper to a sole ([0033]).
Furthermore, Yuen teaches another article that can be undergarment or shoes ([035] "personalized and/or custom-fitted clothing and/or alteration of existing patterns or clothing includes…undergarments…shoes").
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the article be an undergarment apparel as taught by Yuen as the article of claim 1 of the reference patent, as it is known in the art to apply patterns from shoes to undergarments in light of Yuen, depending on the desired use.
Claim 2, 3 of the reference patent recites all of the broader limitations as Claims 2, 3 of the instant application.
Claim 4 of the reference patent depends from and requires all of the limitations of claim 3. Claims 3, 4 of the reference patent recite all of the broader limitations as claim 4 in the instant application.
Claim 5 of the reference patent depends from and requires all of the limitations of claim 4. Claims 3-5 of the reference patent recite all of the broader limitations as claim 5 in the instant application.
Claim 6 of the reference patent depends from and requires all of the limitations of claim 5. Claims 3-6 of the reference patent recite all of the broader limitations as claim 6 in the instant application.
Claim 7 of the reference patent recites all of the same limitations as Claims 7 of the instant application.
Claim 7 of the reference patent also teaches the limitations of Claim 8 of the instant application.
Claims 9, 10 of the reference patents recites all of the same limitations as Claims 9, 10 of the instant application.
Claim 1 of the reference patent, in light of Chen and Yuen, at least suggests all of the limitations of Claim 14 of the instant application (Claim 1 already teaches the layer is coupled to the article, wherein the article was made fabric by Townsend and made an undergarment by Yuen; It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify that the coupling be direct, especially as there is no other intervening structure recited, for ease of manufacturing).
Response to Arguments
Applicant's arguments filed 12/15/25 pertaining to amended Claim 1 (which was previously Claim 12) have been fully considered but they are not persuasive. More specifically--
Pertaining to remarks on pages 6-7 that modified Portzline does not teach an article that is an undergarment because Portzline is compression molded and none of the references disclose how the method of Portzline could be applied to an undergarment (in other words, none of the references are directed to a compression molding method for an undergarment)—examiner respectfully disagrees. The claims do not recite compression molding, and therefore compression molding does not have to be taught (furthermore, the disclosure of the application does not recite compression molding). To argue that no reference indicates that Portzline’s compression molding can be applied to an undergarment is to argue that compression molding cannot be applied to an undergarment; on the contrary, compression molding is well known for undergarments (see extrinsic evidence Su US Publication 2018/0132540). Especially as such, it is well within the skill of one of ordinary skill in the art to know how to apply a (compression molded) pattern that was in a shoe to instead be in an undergarment.
Next, the remarks inadvertently misconstrue the rejection. As indicated in the previous rejection of Claim 12 on page 13 of the office action 9/16/25, the modification is not directed to the method of making, but to the fact that it is well known that articles can interchangeably be shoes (Portzline) or undergarments (Yuen) depending on the desired functional use. The actual motivation has not been addressed.
Furthermore, the current claims are product claims, not method claims. As such, remarks directed to how methods may differ are not persuasive.
Furthermore, in response to such an argument, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981) and/or MPEP 707.07(f). One of ordinary skill in the art would know how to apply only the feature of an article being an undergarment instead of a shoe to Portzline without modifying the method of Portzline.
Applicant’s arguments with respect to claims 2-10, 14 have been considered but are moot because of the new grounds of rejection necessitated by amendment. Therefore, see aforementioned rejections for the argued missing limitations. Nevertheless, for clarification—
Pertaining to remarks on page 7 regarding Claim 9, that Portzline modified by Webster does not teach a layer with uniform thickness because Portzline is compression molded while Webster’s method is via spraying—examiner respectfully disagrees, for reasons similarly aforementioned. For example, the only modification is the layer thickness, not the method of making. There is no evidence presented that compression molding could not result in a uniform layer thickness. It is well within the skill of one of ordinary skill in the art to know how to use compression molding to result in a uniform layer thickness (see extrinsic evidence Campbell et al 11604206). See bodily incorporation aforementioned—one of ordinary skill in the art would understand how to utilize the teaching of a uniform thickness of Webster and apply it to Portzline without applying the method of Webster as well. The remarks inadvertently misconstrue the rejection. The actual motivation provided (Col. 19 Lines 53-65) on page 11 of the office action 9/16/25 has not been addressed.
Conclusion
The prior art made of record and not relied upon but is considered pertinent to applicant's disclosure and can be used to formulate a rejection if necessary: Bee et al (USPN 11994649) directed to the same pattern applied to a variety of articles.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Grace Huang whose telephone number is (571)270-5969. The examiner can normally be reached M-Th 8:30am-5:30pm EST.
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/GRACE HUANG/Primary Examiner, Art Unit 3732