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 .
Claim Rejections - 35 USC § 102
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 1-4 and 6-14 are rejected under 35 U.S.C. 102(a)(1) & (a)(2) as being anticipated by Ambrose et al., U.S. Pre Grant Publication 2013/0122223.
Regarding claims 1-4, 8-12, 14, Ambrose discloses a substrate coated with a waterborne coating comprising a hydrogen-containing film-forming resin and a crosslinker [abstract and 0009]. See also reference claim 1. Paragraphs 0013 and 0019 disclose that the hydrogen-containing fil-forming resin can include polyurethane. Paragraph 0019 discloses polyester polyurethanes. Paragraphs 0031 and 0036 disclose that the composition can include a colorant in the form of discrete particles. Paragraph 0044 discloses that the substrate can include textiles, yarn, polymer fibers such as nylons, polyesters, polyethylene terephthalate, KEVLAR, polyamides, and nonwoven glass. Paragraph 0045 discloses an article of manufacture comprising footwear having components such as soles, midsole sand uppers. It is disclosed in paragraph 0046 that the coating can be on exterior surface and is visible on the exterior or outside of the final product. Paragraph 0048 discloses that the coating compositions can be applied to flexible substrates including textiles. Paragraph 0058 discloses that the composition is cured.
Regarding claim 6, paragraph 0033 discloses that the pigment can include carbon black.
Regarding claim 7, Ambrose discloses the same component of an article of footwear. The term “plate” in the claim does not limit the structure. The term “plate” is reciting purpose or intended use.
Regarding claim 13, paragraph 0044 discloses that the substrate can include nonwoven glass [bundle of fibers].
Claims 5 and 15-20 are rejected under 35 U.S.C. 102(a)(1) & (a)(2) as being anticipated by Ambrose et al., U.S. Pre Grant Publication 2013/0122223, as evidenced by Wikipedia, Thermoplastic Polyurethane.
Regarding claims 5 and 15-20, Ambrose discloses a substrate coated with a waterborne coating comprising a hydrogen-containing film-forming resin and a crosslinker [abstract and 0009]. Paragraphs 0013 and 0019 disclose that the hydrogen-containing fil-forming resin can include polyurethane. Paragraphs 0031 and 0036 disclose that the composition can include a colorant in the form of discrete particles. Paragraph 0044 discloses that the substrate can include textiles, yarn, polymer fibers such as nylons, polyesters, polyethylene terephthalate, KEVLAR, polyamides, and nonwoven glass. Paragraph 0045 discloses an article of manufacture comprising footwear having components such as soles, midsole sand uppers. It is disclosed in paragraph 0046 that the coating can be on exterior surface and is visible on the exterior or outside of the final product. Paragraph 0048 discloses that the coating compositions can be applied to flexible substrates including textiles. Paragraph 0058 discloses that the composition is cured. The abstract, [0010], [0043] and [0044] discloses that the article of manufacture includes at least two different flexible substrates coated with the waterborne coating composition. Paragraph 0044 discloses that the substrate can include thermoplastic urethane [TPU]. Paragraph 0044 also discloses that the substrate can include textiles, yarn, polymer fibers such as nylons, polyesters, polyethylene terephthalate, KEVLAR, polyamides, and nonwoven glass. Paragraph 0043 discloses first and second flexible substrates different from each other. Wikipedia, Thermoplastic Polyurethane discloses that TPU is transparent.
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 1-20 of U.S. Patent No. 11,723,429. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the present application and the patented reference recite
A component of an article of footwear comprising: one or more fiber(s); and a cured coating disposed on the one or more fiber(s) as at least one coated fiber, the cured coating including a plurality of pigment particles entrapped in a matrix of crosslinked polyurethane homopolymers or copolymers or both, wherein the cured coating is an elastomeric cured coating, and wherein the at least one coated fiber is visible on or through an externally-facing surface of the article of footwear as per instant claims 1, 7 and 9-10 and patented claims 1 and 15.
The claims in both the present application and the patented reference recite wherein the matrix of crosslinked polymers include crosslinked polyester polyurethane as per instant claims 2 and 11 and patented claim 2.
The claims in both the present application and the patented reference recite wherein the one or more coated fibers include thermoplastic polyurethane fibers, thermoplastic polyamide fibers, thermoplastic polyester fibers, thermoplastic polyether fibers, thermoplastic polyolefin fibers and any combination thereof as per instant claim 2, 9 and 11 and patented claims 3, 11 and 16.
The claims in both the present application and the patented reference recite wherein the at one coated fiber includes glass fiber, carbon fiber, boron fiber and any combinations thereof as per instant claim 3 and patented claim 3.
The claims in both the present application and the patented reference recite wherein the at least one coated fiber is present in a yarn and the coating is disposed on an outer surface of the yarn, or wherein the one or more coated fibers are present in a textile and the coating s disposed on the externally facing of the textile as per instant claims 4 and 8 and 18 and patented claim 4.
The claims in both the present application and the patented reference recite wherein the at least one coated fiber is attached to a composite component and consolidated with a substantially transparent resin material, wherein the substantially transparent resin material is a substantially transparent thermoplastic polyurethane resin material or a substantially transparent cured epoxy resin material as per instant claims 6 and 15 and patented claim 5
. The claims in both the present application and the patented reference recite wherein the pigment particles are selected from the group consisting of metal and metal oxide pigments, carbon pigments, clay earth pigments, ultramarine pigments and a combination thereof as per instant claim 6 and patented claim 10.
The claims in both the present application and the patented reference recite wherein the component is a plate as per instant claim 7 and patented claims 1 and 11.
The claims in both the present application and the patented reference recite wherein the at least one coated fiber is present in the form of a tow as per instant claim 13 and patented claim 15.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9-13 and 15-19 of U.S. Patent No..12,266,274.
A component of an article of footwear comprising: one or more fiber(s); and a cured coating disposed on the one or more fiber(s) as at least one coated fiber, the cured coating including a plurality of pigment particles entrapped in a matrix of crosslinked polyurethane homopolymers or copolymers or both, wherein the cured coating is an elastomeric cured coating, and wherein the at least one coated fiber is visible on or through an externally-facing surface of the article of footwear as per instant claims 1 10 and patented claims 1, 11 and 20.
The claims in both the present application and the patented reference recite wherein the matrix of crosslinked polymers include crosslinked polyester polyurethane as per instant claim 2 and patented claim 2.
The claims in both the present application and the patented reference recite wherein the one or more coated fibers include thermoplastic polyurethane fibers, thermoplastic polyamide fibers, thermoplastic polyester fibers, thermoplastic polyether fibers, thermoplastic polyolefin fibers and any combination thereof as per instant claim 2, 9, 11 and 16 and patented claim 3 and 12
The claims in both the present application and the patented reference recite wherein the at one coated fiber includes glass fiber, carbon fiber, boron fiber and any combinations thereof as per instant claim 3, 12 and 17 and patented claims 4 and 13.
The claims in both the present application and the patented reference recite wherein the at least one coated fiber is present in a yarn and the coating is disposed on an outer surface of the yarn, or wherein the one or more coated fibers are present in a textile and the coating s disposed on the externally facing of the textile as per instant claims 4, 8 and 18 and patented claims 5 and 6.
The claims in both the present application and the patented reference recite wherein the at least one coated fiber is attached to a composite component and consolidated with a substantially transparent resin material, wherein the substantially transparent resin material is a substantially transparent thermoplastic polyurethane resin material or a substantially transparent cured epoxy resin material as per instant claims 5, 15 and 19 and patented claims 7-9 and 20.
. The claims in both the present application and the patented reference recite wherein the pigment particles are selected from the group consisting of metal and metal oxide pigments, carbon pigments, clay earth pigments, ultramarine pigments and a combination thereof as per instant claim 6 and patented claim 10.
The claims in both the present application and the patented reference recite wherein the component is a plate as per instant claim 7 and patented claims 1 and 11.
The claims in both the present application and the patented reference recite wherein the at least one coated fiber is present in the form of a tow as per instant claim 13 and patented claim 15.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,464,281
A component of an article of footwear comprising: one or more fiber(s); and a cured coating disposed on the one or more fiber(s) as at least one coated fiber, the cured coating including a plurality of pigment particles entrapped in a matrix of crosslinked polyurethane homopolymers or copolymers or both, wherein the cured coating is an elastomeric cured coating, and wherein the at least one coated fiber is visible on or through an externally-facing surface of the article of footwear as per instant claims 1, 5 and 10 and patented claims 1, 11 and 20.
The claims in both the present application and the patented reference recite wherein the matrix of crosslinked polymers include crosslinked polyester polyurethane as per instant claim 2 and patented claim 2.
The claims in both the present application and the patented reference recite wherein the one or more coated fibers include thermoplastic polyurethane fibers, thermoplastic polyamide fibers, thermoplastic polyester fibers, thermoplastic polyether fibers, thermoplastic polyolefin fibers and any combination thereof as per instant claim 2, 9, 11 and 16 and patented claim 3 and 12
The claims in both the present application and the patented reference recite wherein the at one coated fiber includes glass fiber, carbon fiber, boron fiber and any combinations thereof as per instant claim 3, 12 and 17 and patented claims 4 and 13.
The claims in both the present application and the patented reference recite wherein the at least one coated fiber is present in a yarn and the coating is disposed on an outer surface of the yarn, or wherein the one or more coated fibers are present in a textile and the coating s disposed on the externally facing of the textile as per instant claims 4, 8 and 18 and patented claims 5 and 6.
The claims in both the present application and the patented reference recite wherein the at least one coated fiber is attached to a composite component and consolidated with a substantially transparent resin material, wherein the substantially transparent resin material is a substantially transparent thermoplastic polyurethane resin material or a substantially transparent cured epoxy resin material as per instant claims 5, 15 and 19 and patented claims 7-9 and 20.
. The claims in both the present application and the patented reference recite wherein the pigment particles are selected from the group consisting of metal and metal oxide pigments, carbon pigments, clay earth pigments, ultramarine pigments and a combination thereof as per instant claim 6 and patented claim 10.
The claims in both the present application and the patented reference recite wherein the component is a plate as per instant claim 7 and patented claims 1 and 11.
The claims in both the present application and the patented reference recite wherein the at least one coated fiber is present in the form of a tow as per instant claim 13 and patented claim 15.
Claims 1-5, 7-12, 14-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-9 of U.S. Patent No.. 10,980,310.
A component of an article of footwear comprising: one or more fiber(s); and a cured coating disposed on the one or more fiber(s) as at least one coated fiber, the cured coating including a plurality of pigment particles entrapped in a matrix of crosslinked polyurethane homopolymers or copolymers or both, wherein the cured coating is an elastomeric cured coating, and wherein the at least one coated fiber is visible on or through an externally-facing surface of the article of footwear as per instant claims 1 10 and patented claim 1.
The claims in both the present application and the patented reference recite wherein the matrix of crosslinked polymers include crosslinked polyester polyurethane as per instant claim 2 and patented claim 2.
The claims in both the present application and the patented reference recite wherein the one or more coated fibers include thermoplastic polyurethane fibers, thermoplastic polyamide fibers, thermoplastic polyester fibers, thermoplastic polyether fibers, thermoplastic polyolefin fibers and any combination thereof as per instant claim 2, 9, 11 and 16 and patented claim 3.
The claims in both the present application and the patented reference recite wherein the at one coated fiber includes glass fiber, carbon fiber, boron fiber and any combinations thereof as per instant claim 3, 12 and 17 and patented claim 4.
The claims in both the present application and the patented reference recite wherein the at least one coated fiber is present in a yarn and the coating is disposed on an outer surface of the yarn, or wherein the one or more coated fibers are present in a textile and the coating s disposed on the externally facing of the textile as per instant claims 4, 8 and 18 and patented claim 6.
The claims in both the present application and the patented reference recite wherein the at least one coated fiber is attached to a composite component and consolidated with a substantially transparent resin material, wherein the substantially transparent resin material is a substantially transparent thermoplastic polyurethane resin material or a substantially transparent cured epoxy resin material as per instant claims 5, 15 and 19 and patented claims 1 and 9.
The claims in both the present application and the patented reference recite wherein the component is a plate as per instant claim 7 and patented claim 9.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMIE S THOMPSON whose telephone number is (571)272-1530. The examiner can normally be reached 8:30 am - 5:30 pm.
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/CAMIE S THOMPSON/Primary Examiner, Art Unit 1786
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