DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 01/17/2025 are acknowledged. The submission is in compliance with the provision of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
The Non-Patent Literature document “Communication under Rule 71 (3) EPC in European Application No. 13724648.4, 5 pages” is not considered by the examiner because the NPL document does not include a date (with at least the year). It has been placed in the application file, but the information referred to therein has not been considered as to the merits.
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 pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Claims 1-4 are rejected under pre-AIA 35 U.S.C. 102(a) as being anticipated by Dua (US 2004/0118018).
Regarding claim 1, Dua teaches a knit textile (fig. 3D), comprising:
a plurality of yarn (fig. 3D, yarn 146) that is knitted together to form the knit textile, wherein the knit textile defines an upper of an article of footwear (fig. 1);
a pair of fused regions (fig. 1, regions 133, 135) formed along the upper, wherein the plurality of yarn knitted together to form the knit textile is fused to a predefined extent at the pair of fused regions (fig. 1, para. [0040], [0042], fused regions 133 and 135 are formed with predefined shapes to prevent stretch and limit movement at those regions);
wherein the article of footwear includes a midsole (fig. 1, midsole 111) coupled to the knit textile of the upper such that the midsole is positioned adjacent to the pair of fused regions (fig. 1); and
wherein the article of footwear includes an outsole (fig. 1, outsole 112) coupled to the midsole on an opposite side of the knit textile such that the outsole is separated from the pair of fused regions by the midsole (fig. 1).
Regarding claim 2, Dua teaches the predefined extent that the plurality of knitted yarn is fused along the upper at one of the pair of fused regions is relatively greater than at the other of the pair of fused regions (annotated fig. 1 below).
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Regarding claim 3, Dua teaches the plurality of knitted yarn is weaved or interlooped together via a knitting machine (para. [0054], by a circular knitting machine) to form the knit textile.
Regarding claim 4, Dua teaches each of the plurality of knitted yarn is defined by one or more filaments combined together to form the yarn that is knitted into the knit textile of the upper (figs. 4A-4D, para. [0051]).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 5 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Dua (US 2004/0118018), as applied to claim 1 above, and further in view of Dua (US 2010/0199406)(hereinafter Dua’406).
Regarding claim 5, Dua teaches the plurality of yarn that is knitted together to form the knit textile of the upper is made of a thermoplastic polymer material (para. [0046]).
Dua does not teach the upper, the midsole, and the outsole are formed of a first material such that the plurality of yarn that is knitted together to form the knit textile of the upper is made of the first material.
However, in the same field of endeavor, Dua’406 teaches the upper, the midsole, and the outsole are formed of a thermoplastic polymer material (para. [0159], [0160]).
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to combine Dua with the teaching that the upper, the midsole, and the outsole are formed of a thermoplastic polymer material as taught by Dua’406 for the benefit of facilitating in assembling the footwear parts by heat-bonding and in recycling by decreasing the number of elements and materials utilized in a product. Therefore, waste is decreased while increasing the manufacturing efficiency and recyclability (Dua’406, para. [0004]).
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 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of copending Application No. 18/353645 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the reference claim 18 and the instant claims are minor and obvious from each other. The instant claim 1 is a broader version of the reference claim 18. Therefore, the reference claim 18 would read on the instant claim 1. Furthermore, in the instant claim 1, the claimed limitations can be found in the reference claim 18. Any infringement over the reference claim 18 would also infringe over the instant claim 1. Hence, the instant claim does not differ from the scope of the reference claim 18.
For the same reasons, claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 24 of copending Application No. 18/353645.
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 24 of copending Application No. 18/353645.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of copending Application No. 18/353645.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 24 of copending Application No. 18/353645.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 23 of copending Application No. 18/624978 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the reference claim 23 and the instant claims are minor and obvious from each other. The instant claim 1 is a broader version of the reference claim 23. Therefore, the reference claim 23 would read on the instant claim 1. Furthermore, in the instant claim 1, the claimed limitations can be found in the reference claim 23. Any infringement over the reference claim 23 would also infringe over the instant claim 1. Hence, the instant claim does not differ from the scope of the reference claim 23.
For the same reasons, claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 29 of copending Application No. 18/624978.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 38 of copending Application No. 18/624978.
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 40 of copending Application No. 18/624978.
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 29 of copending Application No. 18/624978.
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 38 of copending Application No. 18/624978.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 23 of copending Application No. 18/624978.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 29 of copending Application No. 18/624978.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 38 of copending Application No. 18/624978.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See form PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to UYEN THI THAO NGUYEN whose telephone number is (571)272-8370. The examiner can normally be reached Monday-Friday 7:30 AM-4:30 PM EST.
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/UYEN T NGUYEN/Examiner, Art Unit 3732