DETAILED ACTION
This office action is in response to the application filed January 17, 2025 in which claims 1-20 are presented for examination.
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 .
Claim Objections
Claim 7 recites the limitation "both sides" of the knitted material on line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claims 1-16 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 0,997,657 Drake in view of US Pub No. 2016/0206040 Cross et al.
To claim 1, Drake discloses an article of footwear (see Figures 1-4, reproduced below for convenience; lines 1-95) comprising:
a material (1) that extends below a foot of a wearer when the article of footwear is worn (see Figures 1-4; lines 44-93);
an insert (3) (see Figures 1-4; lines 44-93);
wherein the material comprises at least one opening (2) (see Figures 1-4; lines 44-93);
wherein the insert is formed separately from the material and positioned so that at least a portion (4) of the insert extends through the at least one opening without overlapping an outer surface of the material (see Figures 1-4; lines 44-93); and
wherein at least the portion of the insert that extends through the at least one opening forms at least a part of an outer sole of the article of footwear that contacts the ground when the article of footwear is worn (see Figures 1-4; lines 44-93).
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Drake is silent as to the composition of material (1), which forms at least a part of an outer sole of the article of footwear.
However, Cross teaches an article of footwear (100,1100) (see especially Figures 1-7 and 17-28; paras. 0042-0063 and 0110-0111) comprising an outer sole (112) wherein a material of the outer sole is a knitted material (paras. 0046-0047).
Drake and Cross teach analogous inventions in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the material of Drake to be a knitted material as taught by Cross because Cross teaches that this configuration is known in the art and may be provided in configurations which provide durability and wear resistance for the outer sole of the footwear (para. 0115).
To claim 2, the modified invention of Drake (i.e., Drake in view of Cross, as detailed above) further teaches an article of footwear wherein the insert has a profile with at least one protrusion (4 of Drake) extending away from a bottom surface of the insert and wherein the at least one protrusion increases traction of the outer sole (see Figures 1-4 and lines 44-93 of Drake).
To claim 3, the modified invention of Drake (i.e., Drake in view of Cross, as detailed above) further teaches an article of footwear wherein the insert and the at least one protrusion are integrally formed (see Figures 1-4 and lines 44-93 of Drake). It is further respectfully noted that it has been held that forming in one piece an article which has formerly been formed in two pieces involves only routine skill in the art (see MPEP 2144.04).
To claim 4, the modified invention of Drake (i.e., Drake in view of Cross, as detailed above) further teaches an article of footwear wherein the knitted material is reinforced with a polymer material (161 of Cross) (paras. 0068 and 0115-0125 of Cross).
To claim 5, the modified invention of Drake (i.e., Drake in view of Cross, as detailed above) further teaches an article of footwear wherein the polymer material is fused with a yarn of the knitted material (para. 0120 of Cross).
To claim 6, the modified invention of Drake (i.e., Drake in view of Cross, as detailed above) further teaches an article of footwear wherein the polymer material comprises a polymer layer applied to at least one surface of the knitted material (paras. 0115-0125 of Cross).
To claim 7, the modified invention of Drake (i.e., Drake in view of Cross, as detailed above) further teaches an article of footwear wherein the polymer layer is applied to both sides of the knitted material (paras. 0115-0125 of Cross).
To claim 8, the modified invention of Drake (i.e., Drake in view of Cross, as detailed above) further teaches an article of footwear wherein the polymer material is a polyurethane based material (paras. 0054, 0057, and 0115-0125 of Cross). It is further respectfully noted that 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 for the intended use as a matter of obvious design choice (see MPEP 2144.07).
To claim 9, the modified invention of Drake (i.e., Drake in view of Cross, as detailed above) further teaches an article of footwear wherein the polymer material is thermoplastic polyurethane (paras. 0054, 0057, and 0115-0125 of Cross). It is further respectfully noted that 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 for the intended use as a matter of obvious design choice (see MPEP 2144.07).
To claim 10, the modified invention of Drake (i.e., Drake in view of Cross, as detailed above) further teaches an article of footwear wherein the knitted material is pressed into a three-dimensional shape in a machine for compression molding (para. 0091 of Cross).
To claim 11, the modified invention of Drake (i.e., Drake in view of Cross, as detailed above) further teaches an article of footwear wherein the knitted material comprises a thermoplastic yarn (para. 0057 of Cross).
To claim 12, the modified invention of Drake (i.e., Drake in view of Cross, as detailed above) further teaches an article of footwear wherein the knitted material further comprises a melt yarn capable of fusing to the insert (paras. 0057 and 0120 of Cross).
To claim 13, the modified invention of Drake (i.e., Drake in view of Cross, as detailed above) further teaches an article of footwear wherein the knitted material comprises a rubberized yarn (paras. 0057 and 0120-0124 of Cross).
To claim 14, the modified invention of Drake (i.e., Drake in view of Cross, as detailed above) further teaches an article of footwear wherein the rubberized yarn is a full-rubber yarn, a rubber-coated yarn, or a non-rubber yarn having qualities similar to rubber (paras. 0057 and 0120-0124 of Cross).
To claim 15, the modified invention of Drake (i.e., Drake in view of Cross, as detailed above) further teaches an article of footwear wherein the knitted material comprises a monofilament configured to reinforce the outer sole and reduce stretchability of the outer sole (paras. 0057 and 0120-0124 of Cross).
To claim 16, the modified invention of Drake (i.e., Drake in view of Cross, as detailed above) further teaches an article of footwear wherein the knitted material is weft-knitted or warp-knitted (para. 0083 of Cross).
To claim 19, the modified invention of Drake (i.e., Drake in view of Cross, as detailed above) further teaches an article of footwear wherein the insert is positioned between layers of the knitted material (see especially Figures 22-27 of Cross).
To claim 20, the modified invention of Drake (i.e., Drake in view of Cross, as detailed above) further teaches an article of footwear wherein the knitted material comprises a weft-knitted pocket or a warp-knitted pocket into which a midsole is inserted (see especially Figures 22-27 of Cross).
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Drake in view of Cross (as applied to claim 1, above) and in further view of USPN 5,896,758 Rock et al.
To claims 17-18, the modified invention of Drake (i.e., Drake in view of Cross, as detailed above) teaches an article of footwear as recited in claim 1, above.
The modified invention of Drake does not expressly teach an article of footwear wherein the knitted material is a spacer weft-knitted fabric or a spacer warp-knitted fabric and wherein layers of the spacer weft-knitted fabric or the spacer warp-knitted fabric comprise different yarns.
However, Rock teaches a knitted material wherein the knitted material is a spacer weft-knitted fabric or a spacer warp-knitted fabric and wherein layers of the spacer weft-knitted fabric or the spacer warp-knitted fabric comprise different yarns (Abstract; col. 1, lines 64-67).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the modified invention of Drake such that the knitted material is a spacer weft-knitted fabric or a spacer warp-knitted fabric and wherein layers of the spacer weft-knitted fabric or a spacer warp-knitted fabric comprise different yarns as taught by Rock because Rock teaches that this configuration is known in the art and beneficial for providing cushioning (col. 1, lines 32-34).
ALTERNATE REJECTION: Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Drake in view of USPN 7,353,626 Otis et al.
To claim 1, Drake discloses an article of footwear (see Figures 1-4, reproduced above for convenience; lines 1-95) comprising:
a material (1) that extends below a foot of a wearer when the article of footwear is worn (see Figures 1-4; lines 44-93);
an insert (3) (see Figures 1-4; lines 44-93);
wherein the material comprises at least one opening (2) (see Figures 1-4; lines 44-93);
wherein the insert is formed separately from the material and positioned so that at least a portion (4) of the insert extends through the at least one opening without overlapping an outer surface of the material (see Figures 1-4; lines 44-93); and
wherein at least the portion of the insert that extends through the at least one opening forms at least a part of an outer sole of the article of footwear that contacts the ground when the article of footwear is worn (see Figures 1-4; lines 44-93).
Drake is silent as to the composition of material (1), which forms at least a part of an outer sole of the article of footwear.
However, Otis teaches an article of footwear (10) (see Figures 1-6; col. 2, line 20 – col. 3, line 24) comprising an outer sole (38) wherein a material of the outer sole is a knitted material (see especially Figure 1; col. 2, lines 47-54).
Drake and Otis teach analogous inventions in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the material of Drake to be a knitted material as taught by Otis because Otis teaches that this configuration is known in the art and beneficial for providing slip-resistance (col. 1, lines 18-20).
This ALTERNATE REJECTION over Drake in view of Otis has been limited to independent claim 1 in the interest of brevity. It is respectfully noted however that this ALTERNATE REJECTION may be relied upon to reject additional claim(s) in future office action(s).
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,250,994.
Although the claims at issue are not identical, they are not patentably distinct from each other because they each recite articles of footwear comprising substantially the same elements including knitted materials, inserts, openings, and protrusions.
PRESENT APPLICATION
USPN 12,250,994
CLAIMS
1
1
2
2
3
3
4
7-10
5
7-10
6
7-10
7
7-10
8
7-10
9
7-10
10
5
11
7-10
12
7-10
13
7-10
14
7-10
15
7-10
16
11
17
13
18
14
19
4, 15-18
20
4, 15-18
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 11,666,113.
Although the claims at issue are not identical, they are not patentably distinct from each other because they each recite articles of footwear comprising substantially the same elements including knitted material outsoles, inserts, knobs/protrusions, and openings/recesses.
PRESENT APPLICATION
USPN 11,666,113
CLAIMS
1
1, 2, 5
2
1, 2, 5
3
1, 2, 5
4
20
5
20-21
6
20-22
7
20-22
8
20-22
9
6 and 20-22
10
6
11
6 and 20-22
12
6 and 20-22
13
6 and 20-22
14
6 and 20-22
15
6 and 20-22
16
18-19
17
23
18
24
19
9
20
9
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,834,992.
Although the claims at issue are not identical, they are not patentably distinct from each other because they each recite shoes/articles of footwear comprising substantially the same elements including knitted materials/fabrics, inserts, knobs/protrusions, and openings/recesses.
PRESENT APPLICATION
USPN 10,834,992
CLAIMS
1
1
2
1
3
1
4
3
5
3-7
6
10
7
3-7
8
3-7
9
3-7
10
1
11
10
12
10
13
12
14
12
15
13
16
1
17
14
18
14
19
9
20
9
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 10,834,991.
Although the claims at issue are not identical, they are not patentably distinct from each other because they each recite shoes/articles of footwear comprising substantially the same elements including knitted materials/fabrics, inserts, knobs/protrusions, and openings/recesses.
PRESENT APPLICATION
USPN 10,834,991
CLAIMS
1
1
2
1
3
1
4
14
5
15, 24
6
14, 16
7
14, 16
8
14
9
14
10
1
11
15, 24
12
15, 24
13
16, 25
14
16, 25
15
23
16
12-13
17
17
18
18
19
1, 19
20
1, 19
Conclusion
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/F Griffin Hall/Primary Examiner, Art Unit 3732