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 .
Election/Restrictions
Applicant's election of Species 3 (as depicted in Figs. 10, 11A, 11B, 12A, and 12C) in the reply filed on 12/01/2025 is acknowledged. Applicant timely traversed the species election requirement in the reply filed on 12/01/2025.
The traversal is on the ground(s) that the identified species 1-10 are not independent or distinct. Applicant asserts that the Office has not even attempted to explain why the species are "distinct"; and according to the MPEP, distinctness requires mutual exclusivity (i.e., two-way distinctness); in other words, both inventions must have mutually exclusive features that do not overlap in scope. However, Applicant's arguments are not persuasive as addressed below.
First, the instant figures clearly show the distinct structural features, including shape, size, number and location, of each shoe upper of the Species 1-10. As such, a full detailed explaining, at this point, does not appear necessary especially since this would be readily known to one of ordinary skill in the art.
Second, the restriction requirement clearly refers to "first configuration", "second configuration", etc., for the identified Species 1-10; and the term "configuration" includes both structural configuration and material configuration. Noting that the drawings clearly show the distinct structural features of Species 1-10, each of Species 1-10 being further materially different is another component of the distinctness in addition to the structural distinctness.
Third, the identified species 1-10 meet the requirements of the MPEP as to distinctness, i.e., mutual exclusivity. MPEP 806.04(b) has set forth: "species may be independent or related inventions." Further, MPEP 806.05 has set forth: "related inventions in the same statutory class are considered mutually exclusive, or not overlapping in scope, if a first invention would not infringe a second invention, and the second invention would not infringe the first invention." The identified Species 1-10 are each a species in the same statutory class and under a claimed genus, i.e., a shoe upper, and they are related inventions. The distinctness of the Species 1-10 is shown in different structural and material configurations of each of the shoe uppers, where a structural and material feature is in a species but not in other species. In other words, the different structural and material configurations are mutually exclusive features of the Species 1-10 because each invention comprises a distinct structural and material feature that is not in other invention, a first invention would not infringe a second invention, and the second invention would not infringe the first invention. Therefore, the identified species 1-10 are mutually exclusive therefore being distinct.
Applicant refers to the specification, which states "parameters may be varied in each zone to create zones having different predetermined properties" and "the connections between the various zones may vary to create different shaping and/or structures within the elongated hollow knit structure" (paras. 0028, 0524) as support for Applicant's argument that "the zone configurations are common or generic features capable of combination with each of Species 1-10". This is not found persuasive because the above statements do not even indicate that the structures shown in Species 1-10 are common or generic features capable of combination. Indeed, Species 1-10 as depicted each have distinct structural and material features, which cannot be considered as common or generic features and cannot be simply combined as they are shown.
Applicant cites para. 0069 of the original specification and further refers to paras. 0070-0071 and 0479 as further support for Applicant's argument "the various parameters and structures of the zone configurations disclosed throughout the specification could be combined, or that the layers with varying zones could be combined". This is not found persuasive because the cited paragraphs merely state "layers may differ in order to provide different properties to the shoe" (paras. 0069-0071) and "each layer may have a technical function, alone or in combination with the other layer" (para. 0479), which only indicate that the layers may be different and cannot be interpreted as the zonal features in Species 1-10 can be combined. Actually, the original disclosure even does not indicate that the zonal features in Species 1-10 can be combined, and does not provide any description or explanation how the zonal features in Species 1-10 can be combined.
As a summary, the entire application contains multiple species that are patentably distinct from one another and including divergent claimed subject matter that separate the species, and the potential of varying zonal properties does not change the fact that Species 1-10 are patentably distinct species. As each species requires a mutually exclusive characteristic not required for the other species and the species are not obvious variants of each other, searching and examining the divergent subject matter of Species 1-10 will impose serious burden to the examiner.
For the above reasons, the requirement is still deemed proper and is therefore made FINAL.
Claims 33-37 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Claims 21-32 are being treated on the merits.
Drawings
The drawings are objected to because: in Fig. 46, reference numeral 4604 is not associated with any yarn as described in the specification. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: "4702" in Fig. 47. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 31 is objected to because of the following informalities:
In claim 31, line 2, "low-melt temperature yarn" appears to read "a low-melt temperature yarn" for clarity.
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 28-29 and 31 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 pre-AIA the applicant regards as the invention.
Claims 28-29 each recite "the monofilament yarn". The claims each depend from claim 27, and claim 27 has set forth at least one monofilament yarn. In scenarios of two or more monofilament yarns, it is unclear which monofilament yarn is being referred to. For examination purposes, the limitation has been construed to be the at least one monofilament yarn.
Claim 31 recites the limitation "low-melt temperature yarn". The relative term "low" in the limitation is not defined in the claim, the specification does not provide a standard for ascertaining the requisite degree. It is unclear what is included within the metes and bounds of the term "low". For examination purposes, the limitation has been construed to be a meltable yarn.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 21-23, 25, 30 and 32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iuchi (US 2016/0174660 A1).
Regarding claim 21, Iuchi discloses a shoe upper (sock-shaped upper 21; fig. 6; para. 0035) knitted on a circular knitting machine (para. 0035), comprising:
an elongated hollow knit structure (as being sock-shaped; fig. 6; para. 0035), comprising:
a first zone (fiber reinforcement portion 25; fig. 6; para. 0035) comprising a first predetermined property (inherent feature);
a second zone (base knit portion 22; fig. 6; para. 0035) comprising a second predetermined property (inherent feature); and
lining yarns (a plurality of float stitch yarns 20 being provided on an inner side of the shoe; figs. 4-5; paras. 0027-0028) extending across the knit structure (figs. 4-6) and are secured to the knit structure at intervals (integrated with a base knitting fabric between float stitches, i.e., at intervals; see annotated fig. 4; paras. 0027-0028).
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Annotated Fig. 4
Regarding claim 22, Iuchi discloses the shoe upper of claim 21, and further discloses wherein the lining yarns are secured to the knit structure at regular intervals (floating over two loops of plain stitch 41 and the double back yam tuck stitch 42; fig. 5; para. 0028).
Regarding claim 23, Iuchi discloses the shoe upper of claim 21, and further discloses wherein the lining yarns are secured to the textile at irregular intervals (float stitch yarns 20 floats 1 to 10 loops to create a stitch; para. 0027).
Regarding claim 25, Iuchi discloses the shoe upper of claim 21, and further discloses wherein the lining yarns form a raised section on one side of the knit structure (form a raised section on the inner side of the knit structure, as floating at the inner side of the shoe; fig. 4; para. 0027).
Regarding claim 30, Iuchi discloses the shoe upper of claim 21, and Iuchi further discloses wherein the elongated hollow knit structure comprises less than ten distinct ply types of yarn (the face yarn and the back yarn comprising polyester and polyurethane; para. 0027; Example 1; Applicant, in para. 0576 of the specification, has defined that "distinct ply type(s) of yarn" refers to a ply made from a specific material) comprising less than five distinct materials (as discussed above; para. 0027; Example 1).
Regarding claim 32, Iuchi discloses the shoe upper of claim 21, and further discloses wherein a base yarn (face yarn 18; fig. 4; para. 0027) of the knit structure follows a first path (see fig. 4) through the knit structure (see fig. 4), and wherein a first lining yarn (see annotated fig. 4) of the lining yarns follows a second path (see annotated fig. 4) through the knit structure different from the first path (see annotated fig. 4).
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 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.
Claims 24, 26 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Iuchi (US 2016/0174660 A1).
Regarding claim 24, Iuchi discloses the shoe upper of claim 21, and further discloses wherein the elongated hollow knit structure comprises a knitted base yarn (para. 0027) and at least one lining yarn (float stitch yarns 20; fig. 4; para. 0027) of the lining yarns is floated through the knit structure and tucked at tuck stitches of the lining yarn (see annotated fig. 4; para. 0027) in the base yarn to secure the at least one lining yarn in the knit structure (see annotated fig. 4).
Iuchi does not explicitly disclose wherein the elongated hollow knit structure is a single jersey knit structure. However, Iuchi does disclose wherein the base knitted fabric of the elongated hollow knit structure may be formed by jersey stitches (para. 0027). As Iuchi does not disclose or indicate that the elongated hollow knit structure has a double jersey knit structure, one of ordinary skill of the art would recognize that the elongated hollow knit structure of Iuchi comprises a single jersey knit structure, which is the most commonly used knit structure in the knitting art. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have configured the elongated hollow knit structure as disclosed by Iuchi, with wherein the elongated hollow knit structure is a single jersey knit structure, in order to use a most commonly used knit structure for the base knitted fabric as an easy approach. Such a configuration is within the level of one of ordinary skill of the art.
Regarding claim 26, Iuchi discloses the shoe upper of claim 21, and further discloses wherein the lining yarns are positioned on an interior layer of the knit structure (at the inner side of the shoe; fig. 4; para. 0027).
Iuchi does not explicitly disclose wherein the elongated hollow knit structure is a single jersey knit structure. However, Iuchi does disclose wherein the base knitted fabric of the elongated hollow knit structure may be formed by jersey stitches (para. 0027). As Iuchi does not disclose or indicate that the elongated hollow knit structure has a double jersey knit structure, one of ordinary skill of the art would recognize that the elongated hollow knit structure of Iuchi comprises a single jersey knit structure, which is the most commonly used knit structure in the knitting art. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have configured the elongated hollow knit structure as disclosed by Iuchi, with wherein the elongated hollow knit structure is a single jersey knit structure, in order to use a most commonly used knit structure for the base knitted fabric as an easy approach. Such a configuration is within the level of one of ordinary skill of the art.
Regarding claim 31, Iuchi discloses the shoe upper of claim 30, and Iuchi further discloses wherein the less than ten distinct ply types of yarn comprise a polyester yarn (as the face yarn; paras. 0027, 0047, 0050), a low-melt temperature yarn (the back yarn comprising a polyurethane yarn single covered with a PET yarn; paras. 0027, 0044, 0051), and an elastic yarn (the back yarn comprising a polyurethane yarn double covered with a PET yarn; paras. 0027, 0044, 0052).
Iuchi does not explicitly disclose wherein the less than ten distinct ply types of yarn comprise a blended yarn. However, Iuchi does disclose wherein the fiber yarn used for the elongated hollow knit structure includes an elastic yarn comprising at least one selected from a polyurethane-based elastic yarn and a polyester-based elastic yarn, the elastic yarn may be used as a bare yarn arranged in parallel with a non-elastic yarn, and fiber material of the elongated hollow knit structure may comprise non-elastic wool or cotton yarns (para. 0030). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have configured the elongated hollow knit structure as disclosed by Iuchi, with wherein the less than ten distinct ply types of yarn further comprise an elastic bare yarn being arranged with a non-elastic cotton yarn, i.e., a blended yarn (Applicant has defined the term "blending" in para. 0314 of the specification), in order to include another suitable blended yarn in the elongated hollow knit structure for balancing the fitting properties and holding properties of the shoe upper (Iuchi; para. 0032).
Claims 27-29 are rejected under 35 U.S.C. 103 as being unpatentable over Iuchi (US 2016/0174660 A1) in view of Meir (US 2016/0302527 A1).
Regarding claim 27, Iuchi discloses the shoe upper of claim 21, except for wherein the elongated hollow knit structure comprises at least one monofilament yarn. However, Meir, in an analogous art, teaches a shoe upper (upper 104; figs. 1-2; para. 0047) comprising an elongated hollow knit structure (knitted component 130 for accommodating a foot; figs. 1-2; para. 0055) comprises at least one monofilament yarn (a yarn forming knitted component 130 may be a monofilament yarn; figs. 1-2; para. 0057). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected the yarns of the elongated hollow knit structure as disclosed by Iuchi, with wherein the elongated hollow knit structure comprises at least one monofilament yarn as taught by Meir, in order to use a light-weight monofilament yarn with high tensile strength for forming a shoe upper with desired properties.
Regarding claim 28, Iuchi and Meir, in combination, disclose the shoe upper of claim 27, except for wherein the monofilament yarn is formed from polyurethane. However, Iuchi does disclose wherein the knit structure comprising a polyurethane-based elastic yarn. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have configured the at least one monofilament yarn to be formed from polyurethane, in order to use a suitable yarn material for providing the shoe upper with desired elastic property.
Regarding claim 29, Iuchi and Meir, in combination, disclose the shoe upper of claim 27, except for wherein the monofilament yarn is formed from thermoplastic polyurethane. However, Iuchi does disclose wherein the knit structure comprises a polyurethane-based elastic yarn (para. 0030; Example 1). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have configured the at least one monofilament yarn to be formed from thermoplastic polyurethane, in order to use a suitable yarn material for providing the shoe upper with desired elastic property. In addition, such a configuration would be considered as a mere choice of preferred material that is on the basis of its suitability for the intended use. 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Additional relevant references cited on attached PTO-892 form(s) can be used to formulate a rejection if necessary. Meir (US 2016/0302527 A1) and Terai (US 2017 /0065025 A1) also disclose a shoe upper comprising a knitted structure, the knitted structure comprising first and second zones with predetermined properties and lining yarns extending across the knit structure and are secured to the knit structure at intervals.
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/AIYING ZHAO/Primary Examiner, Art Unit 3732