DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 of U.S. Patent No. 10,378,130. Although the claims at issue are not identical, they are not patentably distinct from each other because in applicant’s claim 1, the tongue formed of unitary knit construction with the knit element is inherent within the claims of US 10,378,130 given the claimed common yarn between the knit element and knit tongue. Even if not considered inherent, it would have been obvious to one of ordinary skill in the art to provide a unitary knit construction for the purpose of having a singular knit process thus avoiding additional joining steps. Regarding claims 2-6, 10 and 12-16, while U.S. Patent No. 10,378,130 claims at least one raised lace aperture, it does not set forth a plurality of apertures and a lace extending across the throat. It would have been obvious to one of ordinary skill in the art provide additional apertures and a lace extending across the throat for the purpose binding and tying the shoe on a wearer’s foot. Regarding claims 8, 11 and 17, it would have been obvious to one of ordinary skill in the art provide the tongue comprising a mesh with a plurality of openings for the purpose of providing ventilation to the throat region of the upper.
Claim Rejections - 35 USC § 102
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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 16 and 18 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Sokolowski et al. (US 2008/0110049).
Sokolowski teaches the article of footwear (Figure 1) including an upper (Figure 8A), comprising: a knitted component, comprising: a tongue (60) that extends along a throat of the upper, wherein the tongue is integrally knit with the knitted component at a forward end of the tongue, and wherein the knitted component extends from the forward end of the tongue along a lateral side of the upper and along a medial side of the upper; and a lace (32) that extends through a first lace aperture (35 formed by 33) on the lateral side of the throat, then extends across an exterior surface of the throat, and then extends through a second lace aperture on the medial side of the throat, and then extends back across the exterior surface of the throat, and then extends through a third lace aperture on the lateral side of the throat, wherein the first lace aperture, the second lace aperture, and the third lace aperture each extend entirely through a corresponding part of the knitted component; and a sole structure secured to the upper. Regarding claim 18, the first lace aperture and the third lace aperture extend through a first raised element (44) located on the lateral side of the throat, and wherein the second lace aperture extends through a second raised element located on the medial side of the throat.
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.
Claim 17 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Sokolowski et al. (US 2008/0110049).
Sokolowski teaches the invention substantially as claimed except for the tongue comprising a mesh that includes a plurality of openings. It would have been obvious to one of ordinary skill in the art provide the tongue comprising a mesh with a plurality of openings for the purpose of providing ventilation to the throat region of the upper.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Applicant is reminded that all business with the Patent and Trademark Office should be transacted in writing. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt. 37 C.F.R. 1.2
Further it is noted that a complete response must satisfy the requirements of 37 C.F.R. 1.111, including:
-The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.
-A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
-Moreover, The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 2163.06, MPEP 714.02. The "disclosure" includes the claims, the specification and the drawings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANNY WORRELL whose telephone number is (571)272-4997. The examiner can normally be reached on M, W-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached at 571-272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANNY WORRELL/Primary Examiner, Art Unit 3732
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