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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 121 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/833,510, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. In particular, Claim 13 of the present application recites the abrasion-resistant material, “comprising a first region and a second region, wherein the first layer comprises the first material in the first region, and wherein in the second region the first layer is constructed of a different material that does not exhibit the first shrinkability.” However, there is no disclosure of this limitation in the parent application, i.e., the ‘510 Application. As such, the filing date of Claim 13 is considered to be the filing date of the present application, i.e., January 15, 2025. Given that there are claims and subject matter present in this application that was not present in the parent application, the designation of this application should be changed to a “continuation-in-part” application of the parent application, instead of a divisional application. Alternatively, to maintain the status of a divisional application, the newly added subject matter can be deleted.
Specification
The disclosure is objected to because of the following informalities: in the CROSS-REFERENCE TO RELATED APPLICATIONS section of the Specification, Applicant does not provide the status of parent application Serial No. 16/883,510 as an issued patent, i.e., as U.S. Patent No. 12,226,989. Moreover, there is an issue set forth in paragraph 2 regarding whether the present application qualifies as a divisional application of its parent, or is in fact a continuation-in-part application. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites that “the second layer comprises a mesh having a mesh size, wherein the mesh is arranged in a lattice structure defining openings that are larger than the mesh size.” What is the physical structure of the mesh size? How is it defined? On first read, it would seem that “mesh size” would be defined the size of the openings of the mesh. However, Claim 1 requires that the openings of the mesh are larger than the mesh size. So, that definition of mesh size does not work. As such, it is unclear what the mesh size is. The Specification does not provide sufficient clarity. Referring to Figure 1a, paragraph [0033] states that “second layer 120 on top includes a second textile material and may be composed of openings 123 larger than an average mesh size (not shown) of this layer.” What is the mesh size if it is not shown in Figure 1a? Clearly, mesh size cannot be equated to the dimensions of the polymeric material, e.g., the polymer strand, as that is visible and shown. Dependent Claim 10 contains similar language. Moreover, independent Claim 14 recites “the second layer comprises a mesh having a mesh size, wherein the mesh is arranged in a lattice structure defining openings that are larger than the mesh size,” which raises the same indefiniteness issue given that the parameter of a mesh size is not established. As such, Claims 1, 10, and 14, along with their dependent claims, are indefinite.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2013/0312284 to Berend et al. (“Berend”) in view of U.S. Patent Application Publication No. 2020/0022456 to Brinkman et al. (“Brinkman”) or U.S. Patent Application Publication No. 2018/0135213 to Bell et al. (“Bell”).
With regard to Claims 1, 14, and 15, Berend discloses an article of footwear that includes a shoe upper comprising a reinforcement layer, corresponding to the claimed first layer, located internal and adjacent to portions of a skin layer, corresponding to the claimed second layer. See, e.g., Abstract, entire document. Berend teaches that the shoe upper provides an abrasion resistant material. Paragraph [0051]. Berend discloses that the reinforcement layer comprises a first textile material, such as a woven or knitted fabric. Paragraph [0086]. Berend discloses that the skin layer comprises a second textile material, such as woven or knitted fabric, wherein the skin layer also possesses a plurality of mesh openings. Id. Berend shows that the skin layer mesh can be provided in a lattice structure. Figure 6 and paragraph [0085]. Berend discloses that the mesh material can have more than 50% open area, paragraph [0083], which means that the openings of the mesh in the skin layer can be larger in scope than any other defining portion of the mesh, e.g., the non-openings or the mesh size. Berend discloses that the reinforcement layer and the skin layer are bonded to one another by welding to melt at least portions of the reinforcement layer, the skin layer, or both layers. Paragraphs [0086], [0090], and [0098]. Berend does not disclose that the fibers of the reinforcement layer exhibit a greater shrinkability compared to the fibers of the skin layer, such that the shrinkability of those layers is activatable by heat. Brinkman is also related to textile constructions for use in footwear, including multilayer textiles used in shoe uppers. See, e.g., Abstract, paragraphs [0002] to [0004], entire document. Brinkman teaches that a multi-layer construction for a shoe upper comprising one or more knitted fabrics can be provided with a greater shrinkage rate in the first layer compared to the second layer. Paragraphs [0034] and [0035]. Brinkman teaches that such a modification provides a three-dimensional texture to the shoe upper by varying the shrinkage properties of the first and the second knitted layers, paragraph [0046] and claim 1, and applying a heat treatment. Paragraph [0039]. Bell is also related to multi-layer textile constructions for use in footwear, such as shoe uppers. See, e.g., Abstract, paragraphs [0002] to [0004], entire document. Bell teaches that a woven fabric in one layer of the composite material can be provided with different shrinkage features to create a textured surface, which can be induced with the presence of a heat treatment. Paragraph [0081]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a greater shrinkage rate to the reinforcement textile layer compared to the skin textile layer in the shoe upper disclosed by Berend in order to provide an additional visually textured surface to the shoe product, as shown to be known in the related art by Brinkman and Bell. With regard to Claims 2 and 3, Berend discloses that the skin layer can be provided via warp knitting, and further discloses that reinforcing layer can be provided, generally, by knitting. Paragraph [0086]. Berend does not specify whether the knit construction of the reinforcing layer is warp knit or weft knit, nor does Berend specify the knit construction of the skin layer is provided via weft knitting. However, Brinkman teaches that both weft knitting processes and warp knitting processes are suitable for use in providing textile layers for the shoe upper. Paragraph [0020]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to utilize warp or weft knitting to provide the knitted fabric layer disclosed by Berend, since Brinkman teaches the person having ordinary skill in the art that both methods are well known to be employed without any undue burden, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960). With regard to Claims 4 to 8 and 12, Berend discloses that the fabric layers are formed from fibers or filaments, i.e., monofilament yarns, paragraph [0090], that comprise nylon, polyester, nylon/polyester blends, or recycled polyethylene terephthalate for the skin layer, and nylons or polyesters for the reinforcing layer. Paragraph [0086]. With regard to Claim 9, Berend shows that the skin layer yarn is larger in diameter compared to the reinforcing layer yarn. Figure 6. With regard to Claim 10, Berend shows that the openings of the skin layer are much larger compared to the mesh size of the reinforcing layer. Id. With regard to Claim 11, Brinkman discloses that the yarn of the first layer can further be provided with greater elasticity than the yarn of the second layer. Paragraphs [0034] and [0035]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a yarn of the reinforcement layer of Berend with greater elasticity compared to a yarn of the skin layer in order to provide a varied texture effect, as shown to be known in the art by Brinkman. With regard to Claim 13, Berend discloses that the reinforcement layer can be selectively located relative to the skin layer to provide reinforced portions and unreinforced portions. Paragraphs [0049], [0083], and [0091]. The unreinforced portions comprise air, which does not possess the same shrinkability as the thermoplastic fiber of the reinforcing layer. With regard to Claims 16 and 17, Berend discloses that the skin layer is arranged externally to the surface of the reinforcement layer and that the reinforcement layer is exposed through the openings of the lattice of the skin layer. Figure 6 and Abstract. With regard to Claims 18 and 19, Berend discloses that the abrasion resistant material is attached to the upper of a shoe, placed over the medial or lateral side. Figures 3 and 4. With regard to Claim 20, Berend discloses that the abrasion resistant material is bonded to other shoe portions to provide the upper. Paragraph [0052].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: International Patent Application Publication No. WO 98/43506 to McDonald and U.S. Patent Application Publication No. 2006/0048413 to Sokolowski et al.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMY R PIERCE whose telephone number is (571)270-1787. The examiner can normally be reached Monday - Friday, 9 am to 5 pm.
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/ Primary Examiner, Art Unit 1789
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