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
Claims 1-14 recite subject matter first disclosed in parent Application No. 15/907677. Therefore ,the claims receive the benefit of the filing date of the prior application of 02/28/2018.
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4, 6, and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Taniguchi et al. (US2015/0013187 of record) hereinafter Taniguchi.
Regarding claim 1, Taniguchi teaches:
A method of forming an article of footwear, the method comprising:
depositing a fibrous material over a shoe last to form a fibrous material layer (Fig 9a-e: base member 1, core 50; [0008, 0117, 0124-0129]), wherein the fibrous material layer forms a portion of an upper of the article of footwear ([0115-0117, 0124-0129]); and
flowing a polymer material within a mold so as to conform with a lower portion of the upper comprising the fibrous material layer (Fig 10a-c: resin 72, mold 63; [0129]); and
drying the polymer material to form a sole structure for the article of footwear (Fig 10a-c; midsole 3; [0129]).
Regarding claim 2, Taniguchi teaches the method of claim 1.
Taniguchi further teaches wherein the polymer material is flowed within the mold against the lower portion of the upper prior to drying of the polymer material forming the sole structure ([0129]).
Regarding claim 3, Taniguchi teaches the method of claim 1.
Taniguchi further teaches wherein the flowing the polymer within the mold comprises: aligning the mold with the shoe last such that a mold cavity is located beneath a bottom surface of the shoe last; and injecting the polymer material into the mold cavity to form the sole structure (Fig 10a-c; [0129]).
Regarding claim 4, Taniguchi teaches the method of claim 3.
Taniguchi further teaches wherein the upper comprising the fibrous material layer is on the shoe last when the mold is aligned with the shoe last (Fig 10a-c; [0129]).
Regarding claim 6, Taniguchi teaches the method of claim 1.
Taniguchi further teaches depositing a second material over the shoe last to form a second material layer, wherein the second material layer forms a portion of the upper of the article of footwear (9a-e: resin 71; [0126]).
Regarding claim 8, Taniguchi teaches the method of claim 6.
Taniguchi further teaches wherein the second material comprises a polymer ([0138]), and the second material layer comprises a skin layer of the upper (Fig 9a-e: reinforcement member 2).
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 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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taniguchi as applied to claim 1 above, and further in view of Bohnsack et al. (US2017/0238659 of record) hereinafter Bohnsack and Breithaupt et al. (US2016/0168774 of record) hereinafter Breithaupt.
Regarding claim 5, Taniguchi teaches the method of claim 1.
Taniguchi does not teach wherein the fibrous material comprises a fibrous mixture of staple fibers combined with a binder material, and the fibrous mixture is spray formed onto the shoe last.
In the same field of endeavor regarding footwear, Bohnsack teaches forming a nonwoven fabric on a last by depositing a fibrous material comprising a fibrous mixture of fibers combined with a binder material, and the fibrous mixture is spray formed onto the shoe last ([0029, 0032]) for the motivation of providing low cost and minimal manual labor to manufacture ([0016]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the fabric as taught by Taniguchi to be spray formed as taught by Bohnsack in order to provide low cost and minimal manual labor to manufacture.
Taniguchi in view of Bohnsack does not teach staple fibers.
In the same field of endeavor regarding footwear, Breithaupt teaches using cut fibers of different lengths for the motivation of optimizing durability and porosity ([0076-0077]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the fibers as taught by Taniguchi in view of Bohnsack with the cut fibers as taught by Breithaupt in order to optimize durability and porosity.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taniguchi as applied to claim 6 above, and further in view of Hooper et al. (US2009/0071036) hereinafter Hooper.
Regarding claim 7, Taniguchi teaches the method of claim 6.
Taniguchi further teaches wherein the second material layer comprises a preformed fabric material ([0138]) selected from the group consisting of a knitted material, a woven material, a nonwoven material and an embroidered material.
Taniguchi does not teach a preformed fabric material selected from the group consisting of a knitted material, a woven material, a nonwoven material and an embroidered material.
In the same field of endeavor regarding footwear, Hooper teaches providing a carbon fiber weave for the motivation of providing increased flexibility of the upper ([0044]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the second material layer as taught by Taniguchi to include a carbon fiber weave as taught by Hooper in order to provide increased flexibility of the upper.
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taniguchi as applied to claim 8 above, and further in view of Bohnsack.
Regarding claim 9, Taniguchi teaches the method of claim 8.
Taniguchi does not teach wherein the second material is deposited over the shoe last prior to the fibrous material being deposited over the shoe last.
However, Taniguchi teaches the fibrous material is part of an inner layer of the upper and the second material is part of an outer layer of the upper (Fig 2a; [0087]).
In the same field of endeavor regarding footwear, Bohnsack teaches forming layers of an upper on a last by first applying and outer layer, then applying inner layer, and turning the upper inside out to form the completed upper ([0054-0059, 0062]) for the motivation of providing low cost and minimal manual labor to manufacture ([0016]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the upper as taught by Taniguchi to be spray formed as taught by Bohnsack in order to provide low cost and minimal manual labor to manufacture.
Regarding claim 10, Taniguchi in view of Bohnsack teaches the method of claim 9.
Bohnsack further teaches wherein the shoe last includes a plurality of structural features formed on an exterior surface of the last, and the depositing the second material over the shoe last comprises: spray forming the second material onto the exterior surface of the shoe last including the structural features; wherein, after removing the second material layer of the upper from the shoe last, a surface of the second material layer of the upper includes structural features that correspond with and are inverted in contour in relation to the structural features on the exterior surface of the shoe last ([0054-0059, 0062]).
Claim(s) 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taniguchi in view of Bohnsack as applied to claim 10 above, and further in view of Farris et al. (US2017/0035147 of record) hereinafter Farris.
Regarding claim 11, Taniguchi in view of Bohnsack teaches the method of claim 10.
Taniguchi in view of Bohnsack does not teach wherein the structural features are formed over at least 50% of the surface of the second material layer.
In the same field of endeavor regarding footwear, Farris teaches auxetic structural features over the outer surface of an upper for the motivation of allowing auxetic expansion of the upper (Fig 12: openings 720; [0003, 0066]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the structural features as taught by Taniguchi in view of Bohnsack with the auxetic pattern as taught by Farris in order to allow auxetic expansion of the upper.
Farris further teaches wherein the structural features are formed over at least 50% of the surface of the second material layer (Fig 12).
Regarding claim 12, Taniguchi in view of Bohnsack teaches the method of claim 10.
Taniguchi in view of Bohnsack does not teach wherein the structural features comprise at least one pattern unit that repeats over the surface of the second material layer.
In the same field of endeavor regarding footwear, Farris teaches auxetic structural features over the outer surface of an upper for the motivation of allowing auxetic expansion of the upper (Fig 12: openings 720; [0003, 0066]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the structural features as taught by Taniguchi in view of Bohnsack with the auxetic pattern as taught by Farris in order to allow auxetic expansion of the upper.
Farris further teaches wherein the structural features comprise at least one pattern unit that repeats over the surface of the second material layer (Fig 12).
Regarding claim 13, Taniguchi in view of Bohnsack and Farris teaches the method of claim 12.
Farris further teaches wherein the at least one pattern unit comprises an auxetic pattern (Fig 12; [0066]).
Regarding claim 14, Taniguchi in view of Bohnsack teaches the method of claim 10.
Taniguchi in view of Bohnsack does not teach wherein the structural features comprise a plurality of different pattern units located at different zonal areas of the upper.
In the same field of endeavor regarding footwear, Farris teaches auxetic structural features over the outer surface of an upper for the motivation of allowing auxetic expansion of the upper (Fig 12: openings 720; [0003, 0066]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the structural features as taught by Taniguchi in view of Bohnsack with the auxetic pattern as taught by Farris in order to allow auxetic expansion of the upper.
Farris further teaches wherein the structural features comprise a plurality of different pattern units located at different zonal areas of the upper (Fig 12; [0003]).
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 1-4, 6, and 8 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 of U.S. Patent No. 11284674 in view of Taniguchi.
Claim 5 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 of U.S. Patent No. 11284671 in view of Taniguchi, Bohnsack, and Breithaupt.
Claim 7 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 of U.S. Patent No. 11284671 in view of Taniguchi and Hooper.
Claims 9-10 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 of U.S. Patent No. 11284671 in view of Taniguchi and Bohnsack.
Claims 11-14 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 of U.S. Patent No. 11284671 in view of Taniguchi, Bohnsack, and Farris.
Claims 1-4, 6, and 8 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 of U.S. Patent No. 12232564 in view of Taniguchi.
Claim 5 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 of U.S. Patent No. 12232564 in view of Taniguchi, Bohnsack, and Breithaupt.
Claim 7 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 of U.S. Patent No. 12232564 in view of Taniguchi and Hooper.
Claims 9-10 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 of U.S. Patent No. 12232564 in view of Taniguchi and Bohnsack.
Claims 11-14 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 of U.S. Patent No. 12232564 in view of Taniguchi, Bohnsack, and Farris.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER A WANG whose telephone number is (571)272-5361. The examiner can normally be reached M-Th 8 am-4 pm EST.
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/ALEXANDER A WANG/ Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741
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