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 .
Information Disclosure Statement
Since this application is a continuation of US Applications 18/511958, 17/668499, 16/575961, and 14/873605, the Examiner has considered the information provided in the parent applications (per MPEP 609.02). Should Applicant desire the information to be printed in any patent issuing from these applications, a new listing of the information must be separately submitted.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 21-36) in the reply filed on 11/17/2025 is acknowledged.
Claims 37-41 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/17/2025.
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.
Claims 21-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 10,455,885 in view of Huffa et al. (US 2012/0234052), herein Huffa.
The claimed structure of the present invention may be derived from the claimed subject matter of the patent, except for the knitted element comprising at least one of a weft or filler yarn. Huffa teaches an upper for a shoe including a knitted component with a filler yarn (inlaid strand 132). The filler yarn assists with securing the upper around the foot, and limits deformation of areas of the upper by imparting stretch-resistance (paragraph 0040, 0044; Fig. 5). 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 filler yarn, as taught by Huffa, to the knitted component in order to assist with securing the upper around the foot, and limit deformation of areas of the upper by imparting stretch-resistance.
Claims 21-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,272,754 in view of Huffa et al. (US 2012/0234052), herein Huffa.
The claimed structure of the present invention may be derived from the claimed subject matter of the patent, except for the knitted element comprising at least one of a weft or filler yarn. Huffa teaches an upper for a shoe including a knitted component with a filler yarn (inlaid strand 132). The filler yarn assists with securing the upper around the foot, and limits deformation of areas of the upper by imparting stretch-resistance (paragraph 0040, 0044; Fig. 5). 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 filler yarn, as taught by Huffa, to the knitted component in order to assist with securing the upper around the foot, and limit deformation of areas of the upper by imparting stretch-resistance.
Claims 21-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,849,796 in view of Huffa et al. (US 2012/0234052), herein Huffa.
The claimed structure of the present invention may be derived from the claimed subject matter of the patent, except for the knitted element comprising at least one of a weft or filler yarn. Huffa teaches an upper for a shoe including a knitted component with a filler yarn (inlaid strand 132). The filler yarn assists with securing the upper around the foot, and limits deformation of areas of the upper by imparting stretch-resistance (paragraph 0040, 0044; Fig. 5). 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 filler yarn, as taught by Huffa, to the knitted component in order to assist with securing the upper around the foot, and limit deformation of areas of the upper by imparting stretch-resistance.
Claims 21-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,220,017 in view of Huffa et al. (US 2012/0234052), herein Huffa.
The claimed structure of the present invention may be derived from the claimed subject matter of the patent, except for the knitted element comprising at least one of a weft or filler yarn. Huffa teaches an upper for a shoe including a knitted component with a filler yarn (inlaid strand 132). The filler yarn assists with securing the upper around the foot, and limits deformation of areas of the upper by imparting stretch-resistance (paragraph 0040, 0044; Fig. 5). 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 filler yarn, as taught by Huffa, to the knitted component in order to assist with securing the upper around the foot, and limit deformation of areas of the upper by imparting stretch-resistance.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 21 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Craig (US 2014/0137434).
Regarding claim 21, Craig discloses an upper (120) for a sports shoe comprising: a knitted element (130) comprising: a top portion (151) comprising multi-ply knitwear (Fig. 14E); a bottom portion (152, 153, 132) comprising multi-ply knitwear (layers of tongue portion 132 and foot area 152 at the instep; Fig. 14E), wherein at least two plies are consistently connected to one another (wherein the plies are connected by drop yarns of spacer material: paragraph 0053; Fig. 14E) and cover at least a portion of at least one of a top, sides, or a heel of a foot of the wearer of the sports shoe when the sports shoe is worn; and wherein the knitted element comprises at least one of a weft or a filler yarn (drop yarns of spacer material: paragraph 0053; Fig. 14E) in the multi-ply knitwear of at least one of the top or bottom portion (paragraphs 0030, 0035-0039, 0045, 0053; Fig. 6, 14E).
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) 22-27 and 29-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Craig, as applied to claim 21.
Regarding claim 22, Craig discloses that the top portion comprises at least two plies joined at edges to form a tube that surrounds at least part of an ankle of a wearer of the sports shoe when the sport shoe is worn (Fig. 6, 14E).
Craig appears to show that the two plies are separated from each other (Fig. 14E), but does not explicitly disclose that they are separated. However, Craig teaches that two overlapping layers of the knitted component may be separated from each other and joined at the edges (paragraph 0039). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide plies in the top portion which are separated from each other centrally in order to provide a two layer collar which can easily stretch and flex to conform to the individual user’s ankle.
Regarding claim 23, Craig discloses that the at least one of a weft or a filler yarn in the multi-ply knitwear of at least one of the top or bottom portion reduces stretchability of at least one of the top or bottom portion (wherein the drop reduces stretch between the overlapping layers of the tongue portion).
Regarding claim 24, Craig discloses that the bottom portion substantially covers a top and sides of a foot of the wearer of the sport shoe when the sports shoe is worn (Fig. 6, 14E).
Regarding claim 25, Craig discloses that the top portion and the bottom portion are adjacent to one another below the ankle of the wearer of the sports shoe when worn (Fig. 14E).
Regarding claim 26, Craig discloses that the bottom portion and the top portion are unitarily knitted together in a single knitting process (paragraph 0030).
Regarding claim 27, Craig discloses that the knitted element comprises a single layer (wherein at least part of the bottom portion is a single layer; Fig. 14E).
Regarding claim 29, Craig discloses that the knitted element is flat knitted (paragraph 0056).
Regarding claim 30, Craig discloses that the knitted element is formed as a single-surface knitwear (wherein the top and bottom portion are knitted in one go and connected to one another in the process of knitting; paragraphs 0030, 0057).
Regarding claim 31, Craig discloses that the knitted element comprises a monofilament yarn (paragraph 0043).
Regarding claim 32, Craig discloses a front portion (front portion of cover component 140), wherein the knitted element excludes the front portion, and wherein the front portion comprises leather or artificial leather (paragraph 0030; Fig. 4C).
Regarding claim 33, Craig discloses that the top portion, at its upper edge, comprises an elastic cuff formed integrally with the knitted element (paragraph 0033).
Regarding claim 34, Craig discloses that the top portion is adjusted to anatomical conditions of the at least part of the ankle of the wearer of the sports shoe (paragraph 0033).
Regarding claim 35, Craig discloses that the top portion is elastic, and wherein the elastic is configured to exert pressure on the at least part of the ankle (paragraph 0033).
Regarding claim 36, Craig discloses that a configuration of the elastic results in the pressure being specific to a sport for which the sports shoe is used or being respective to the wearer (paragraph 0033).
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Craig, as applied to claims 21, 22, and 27, in view of Huffa et al. (US 2012/0234052), herein Huffa.
Regarding claim 28, Craig discloses that the knitted element is single layer knitted, but does not specifically disclose that it is weft-knitted. Huffa teaches that an upper for a shoe may be weft-knitted (paragraphs 0002-0003). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to weft knit, as taught by Huffa, the upper of Craig in order to use a well-known technique for knitting an upper which allows for differing knitting stitches to be used at different portions of the upper in a single unitary knitting process.
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 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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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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/SHARON M PRANGE/Primary Examiner, Art Unit 3732