Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Withdrawn claims
Claims 23, 26 and 33 are withdrawn. These claims contain improper status identifiers. The applicant is directed to correct this in any subsequently filed amendment.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21, 22, 24, 25, 27-29, 31, 32, 34, 35, 37, 38 and 40 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The above identified claims were added as a preliminary amendment on 3/17/25, which was AFTER the initial filing date of 1/17/25. Thus, the claims filed on 3/17/25 are not part of the original disclosure and require support in the original specification. Applicant is respectfully referred to MPEP 608.04(b) – “A preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application.”
Respectfully, significant portions of the independent claims do not have support in the original specification. With respect to claims 21 and 31, the specification does not support the recycling method wherein “the shoe comprising one or more components made from the same material with varying densities” is the shoe being recycled. The recycling process is only discussed in detail in para 0174-0175, fig 50 of the disclosure (citations refer to applicants PG Publication, US 2025/0163623). While there is support for the component being made from the same material, there no support for the components to be from same materials AND having varying densities. The claim 37 limitation reciting “the wearable article comprising one or more components made from the same material with varying densities” lacks support for the same reason.
Claims 21 and 37 recite “extracting material from the one or more components, the material having different material densities”. Claim 31 recites “extracting material from the one or more components, the material having different material properties”. While the specification as originally filed supports extracting material, it does not support the extracted material having different densities or different material properties (extracted material is disclosed in para 175).
The claim 21, 31 and 37 limitations requiring applying heat to the extracted material to form a melt and extruding the melt are not supported by the original specification. While portions of the specification do disclose forming a melt by heating, no portion discloses that the extracted material obtained from an article/shoe is heated to form a melt. With respect to extrusion, while portions of the original specification disclose extrusion, no portion discloses extruding an extracted material that has been melted via heat application.
Claims 21, 31 and 37 recite “the step of extruding comprises extruding a filament adapted for the manufacture of a new wearable article”. There is no support for the extruding step in the context of the extracted material as detailed above. Further, there is no support for the limitation requiring extruding a filament “adopted for the manufacture of a new wearable article”.
As to claims 22 and 32, there is no support for the limitation requiring “the filament is extruded in a melt-blowing process to manufacture a melt-blown non-woven fabric of the new wearable article”. Claims 22 and 32 appear to recite an extrusion step in addition to the extrusion step recited in claims 21 and 31 respectively. There is no support for this additional extrusion step.
As to claims 27 and 38, while the original specification supports the limitation requiring the new material to be a polymer material, it does not support the polymer material comprising a bi-component configuration.
As to claim 28, the original specification does not provide support for the method wherein “at least 70%, preferably at least 80%, more preferable at least 90%, and most preferably at least 95% of the weight of the shoe are made from the same material.”
As to claim 34, the specification as originally written does not support the limitation requiring the material properties to include one or more of a density, a tensile strength or modulus, a flexibility, a tenacity, or a durability.
As to claim 40, the specification does not support the limitation wherein at least 95% of the weight of the wearable article is made from the same material.
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 21, 22, 24, 25, 27-29, 31, 32, 34, 35, 37, 38 and 40 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.
Claims 21 and 37 recite “extracting material from the one or more components, the material having different material densities”. Claim 31 recites “extracting material from the one or more components, the material having different material properties”. It is entirely unclear how material from the same material can have varying densities. Additionally, it’s entirely unclear how material from the same material can have varying properties. The claim 21 and 37 limitations requiring the material to have “varying densities”, and the claim 31 limitation requiring “varying properties”, are indefinite for the same reasons.
As to claims 22 and 32, the limitation requiring “the filament is extruded in a melt-blowing process to manufacture a melt-blown non-woven fabric of the new wearable article” is indefinite. Does the limitation “extruded” refer to the previously recited extruding step or a different extruding step?
Response to Arguments
Applicant's arguments filed 1/29/26 have been fully considered but they are not persuasive. The examiner respectfully takes issue with the applicant’s assertion that the “remarks provided below are consistent with the issues discussed during the interview. In particular, for the reasons set forth below, the pending claims are clearly supported and definite in view of the originally filed application”. Respectfully, the examiner did NOT agree with the applicant’s arguments during the interview. Rather, the examiner expressly stated the pending claims are clearly not supported by the original specification. See Examiner’s interview summary dated 12/1/25.
Throughout the Remarks, the applicant insists the specification “directly and unambiguously” discloses each of the limitations at issue. The examiner asserts the specification in no way “directly and unambiguously” discloses each limitation, because the specification does not literally recite each limitation at issue. The recycling process generically described in para 174-175, fig 50 is NOT the same as the process described elsewhere in the disclosure.
The applicant asserts the specification as originally filed supports the limitation requiring the shoe/wearable article to comprise “one or more components made from the same material with varying densities”. Applicant citates para 149-151 and 86. At. Remarks p. 8-9. The portions citated by the applicant support a limitation requiring the article to have components made from the same material. It supports the article having an increased density during fusing. Neither discloses however, supports the limitation requiring “one or more components made from the same material with varying densities”. No portion of para 149-151, 86 discloses such. The applicant then emphasizes the “various configurations as discussed above” disclosure in para 174-175. At. p.9. This is no way provides support for the limitation requiring “one or more components made from the same material with varying densities”. Next, the applicant asserts “as is directly and unambiguously derived from the originally-filed specification”, the claims “clearly derive sufficient support for reciting a shoe that is recyclable and comprises components made from a same material with varying densities” This statement is not accurate, because “directly and unambiguously” would require the specifications to directly recite the limitation “one or more components made from the same material with varying densities”. The examiner asserts the specification does not recite said limitation, and the applicant has not provided evidence that the specification “directly and unambiguously” recites such. See above.
The applicant asserts that the specification “directly and unambiguously” discloses “extracting material from components of a shoe or wearable article that have different material densities or properties.” At p. 11. The specification in no way “directly and unambiguously” discloses such, because the specification does not literally say “extracting material from components of a shoe or wearable article that have different material densities or properties”. The ONLY disclosure of an extracting step in the original disclosure is in para 175 – “the thermoplastic polymer material from shirt 200 may be extracted, recycled, and incorporated into another product”. This portion does not recite what portion of the shirt material is extracted and it certainly does NOT “directly and unambiguously” recite the material extracted has different densities or material properties. The applicant cites para 86 and 149-150 as providing support for the limitation, but said paragraphs of the specification are not specific to the extracting step.
As detailed in the body of the rejection above, while the specification as originally filed supports extracting material, it does not support the extracted material having different densities or different material properties (extracted material is disclosed in para 175).
The applicant asserts the specification as originally filed supports the limitation requiring the extracted material to be heated to obtain a softened melt, and extruding said melt. At p. 12-13. While portions of the specification do disclose forming a melt by heating, no portion discloses that the extracted material obtained from an article/shoe is heated to form a melt. With respect to extrusion, while portions of the original specification disclose extrusion, no portion discloses extruding an extracted material. See section 5 above. No portion of the applicant’s arguments on p. 12 changes this fact, as there is NOT a nexus in the specification linking the extracted material disclosed in para 175 to the heating and extrusion process discussed elsewhere. Contrary to the applicant’s assertion, the examiner stated this during the interview. A statement that the extracted material can be incorporated into a product DOES NOT equate to support for the extracted material being subjected to the claimed heating and extruding process.
The applicant asserts:
the originally-filed specification discloses "[t]he thermoplastic polymer material from shirt 200 may be extracted, recycled, and incorporated into another product (e.g., apparel, container, upholstery) as a non-woven textile, a polymer foam, or a polymer sheet" and there are "various ways in which non-woven textile 100 may be incorporated into ... an article of footwear 400." (Para. [130] present application; emphasis added.)
At. p.12-13. Respectfully, this a serious mischaracterization of the specification. The first quotation above with respect to the extracted material is recited in para 175, NOT para 130. The applicant fails to properly cite the first part of the above quotation, and as such said argument fails to demonstrate support for the limitation at issue.
The applicant asserts that the specification originally filed provides support for the limitation requiring the filament to be extruded in a melt blown process. At. p. 15. For the reasons detailed in section 7 above, there is no support for this limitation in the context of the extracted material. The applicant cites para 97, 64-65, 69-70 as allegedly providing support for this limitation. These paragraphs are not in the context of the extracted and recycled material which is only disclosed in para 174-175, fig 50 as discussed above. For the reasons detailed in the body of the rejection above, there is no support for the limitation requiring the filament to be extruded in a melt blown process.
Applicant asserts that the specification provides support for the new material to comprise a bi-component configuration. Applicant citates para 65 of the application as support. This para is not in context the of the extracted and recycled material as detailed above. With respect to the weight percent of the shoe being made form the same material, the limitations lack support for the reasons detailed in the body of the rejection above. With respect to the material properties section on p. 17, the applicant’s arguments are not persuasive as they are not in the context of the extracted and recycled material disclosed in para 174-175.
With respect to the 35 U.S.C. 112(b) rejection the applicant’s arguments are not persuasive because they are not in the context of the extracted and recycled material disclosed in para 174-175. The indefiniteness rejections stand for the reasons detailed in the body of the rejection above.
Conclusion
THIS ACTION IS MADE FINAL. 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 CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
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, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746