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 .
This is in response to Applicant’s amendment in which claims 21 and 37 have been amended, claims 42-44 have been added, claims 21-44 are pending, and claims 37-41 are withdrawn from consideration.
Terminal Disclaimer
The terminal disclaimer filed on 05/20/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Patent Numbers 10,455,885; 11,272,754; 11,849,796; and 12,220,017 has been reviewed and is NOT accepted.
The terminal disclaimer does not comply with 37 CFR 1.321 because:
The terminal disclaimer is missing a word on line 2: "of" is missing from line 2.
It should read "of" prior at the end of the line.
Please correct and resubmit the TD. (The forms should not be altered)
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 and 42-44 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 and 42-44 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 and 42-44 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 and 42-44 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 § 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 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) 21-27, 29-36, and 42-44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Craig (US 2014/0137434) in view of Dua et al. (US 2013/0260104), herein Dua.
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 a ply of the multi-ply knitwear of the bottom portion comprises at least one of a weft or a filler yarn (161) (paragraphs 0030, 0035-0039, 0045, 0050, 0053; Fig. 6, 12A, 14E).
Craig does not disclose how the weft or filler yarn extends through the ply. Panian teaches an upper for a shoe comprising a knitted element (400) having a weft or filler yarn (402) extending between other weave elements of the ply and held by transverse threads of the ply (paragraph 0089; Fig. 11). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to extend the weft or filler yarn of Craig between the weave elements of the knitted ply such that it is held by transverse threads of the ply, as taught by Dua, in order to provide a weft/filler yarn which is securely held within the knitted ply without adding additional bulk, and which provides support, stability, and structure to the knitted element.
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, Dua teaches 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 (paragraph 0089).
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).
Regarding claim 42, Dua teaches that the weft or filler yarn reduces stretchability in a direction of wales of the ply of the multi-ply knitwear (wherein the weft/filler yarn may extend along a course or along a wale; paragraph 0089).
Regarding claim 43, the combination of Craig and Dua teaches that the weft or filler yarn is a monofilament yarn (wherein Craig teaches a monofilament yarn; paragraph 0043, and Dua teaches that weft/filler yarn may be similar to the yarn of the knitted component; paragraph 0089).
Regarding claim 44, Craig discloses that areas of the knitted component may be fused (paragraph 0043), and Dua teaches that the monofilament yarn (weft/filler yarn) may be at least partially fused with the ply of the multi-ply knitwear (paragraph 0102).
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Craig and Dua, 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 and Dua 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.
Response to Arguments
Applicant’s arguments with respect to claim(s) 21-36 and 42-44 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732
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