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 .
Newly discovered prior art reference Waatti (USP 2016/0219982) has prompted withdrawal of the previously indicated allowable subject matter.
Newly submitted claims 24-27 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the product as claimed can be made by another and materially different process such as manually adhering the segments onto the upper instead of printing while leaving portions of the segments not connected to the upper.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 24-27 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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) 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Waatti (USP2016/0219982).
21. (New) A method of manufacturing an article of footwear, the method comprising:
applying a release agent to an external surface of the footwear (Waatti: paras. 0026 and 0071-0078; and figs 14-21);
printing a plurality of segments of a framework onto the release agent (Waatti: paras. 0026 and 0071-0078; and figs 14-21); and
removing the release agent (Waatti: paras. 0026 and 0071-0078; and figs 14-21).
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) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Davis et al (USP2015/0040428) in view of Waatti (USP 2016/0219982)
Regarding claim 1, Davis et al teach:
1. A method of manufacturing an article of footwear, the method comprising:
forming an upper that includes a bottom portion, an external medial side, an external lateral side, and an internal cavity, wherein the bottom portion is configured to extend underneath a user's foot (Davis et al: paras. 0017, 0095, and 0110; figs 21 and 28; upper 830 constitutes the claimed upper);
inserting a last into the internal cavity of the upper (Davis et al: para. 0110; fig 28);
printing a framework onto the bottom portion, wherein the framework includes a plurality of segments extending along the bottom portion and between the external medial side and the external lateral side of the upper (Davis et al: paras. 0008, 0095 and 0110; figs 1-3, 12, 28, and 30; the extruded member, which can be a midsole and/or outsole, constitutes the claimed framework); and
removing the last from the internal cavity (Davis et al: fig 21 shows an article of footwear without a last, thus a step of removing the last from the internal cavity of the upper is taught by Davis et al).
However, Davis et al do not teach applying a release agent to an external surface of the upper; printing the plurality of segments onto the release agent; and removing the release agent, wherein removing the release agent enables the framework to be moved relative to the upper. Waatti teaches 3D printing segments onto a shoe upper comprising applying a release agent to an external surface of the upper; printing the plurality of segments onto the release agent; and removing the release agent, wherein removing the release agent enables the framework to be moved relative to the upper (Waatti: paras. 0026 and 0071-0078; and figs 14-21). Since Davis et al and Waatti are analogous with respect to 3D segments onto a shoe upper, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate the release agent, the plurality of segments on the external medial and lateral sides, and removal of the release agents taught by Waatti in order to further customize uppers with easier lacing shoe lace holes.
Regarding claim 2, such is taught by Davis et al (Davis et al: paras. 0068-0071, and 0079; figs 1-3, 12, and 30).
Regarding claim 3, such is taught by Davis et al (Davis et al: paras. 0068-0071, and 0079; figs 1-3, 12, and 30).
Regarding claim 4, such is taught by the above combination of Davis et al and Waatti.
Regarding claim 5, such is taught by Davis et al (Davis et al: paras. 0068-0071, and 0079; figs 1-3, 12, and 30).
Regarding claim 6, such is taught by Davis et al (Davis et al: paras. 0008, 0010, and 0058).
Claim(s) 8-13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Davis et al (USP2015/0040428) in view of Waatti (USP 2016/0219982)
Regarding claim 8, Davis et al teach:
8. A method of manufacturing an article of footwear, the method comprising:
forming an upper that includes a bottom portion, an external medial side, an external lateral side, and an internal cavity, wherein the bottom portion is configured to extend underneath a user's foot (Davis et al: paras. 0017, 0095, and 0110; figs 21 and 28; upper 830 constitutes the claimed upper);
inserting a last into the internal cavity of the upper (Davis et al: para. 0110; fig 28);
printing a framework onto the bottom portion, wherein the framework includes a plurality of segments extending along the bottom portion and between a front distal end and a rear distal end of the upper (Davis et al: paras. 0008, 0095 and 0110; figs 1-3, 12, 28, and 30; the extruded member, which can be a midsole, constitutes the claimed framework);
printing an outsole on the bottom portion of the upper (Davis et al: paras. 0008, 0014; 0058; the second extruded member that is printed onto the firsts extruded member constitutes the claimed outsole); and
removing the last from the internal cavity (Davis et al: fig 21 shows an article of footwear without a last, thus a step of removing the last from the internal cavity of the upper is taught by Davis et al).
However, Davis et al do not teach applying a release agent to an external surface of the upper; printing the plurality of segments onto the release agent; and removing the release agent, wherein removing the release agent enables the framework to be moved relative to the upper. Waatti teaches 3D printing segments onto a shoe upper comprising applying a release agent to an external surface of the upper; printing the plurality of segments onto the release agent; and removing the release agent, wherein removing the release agent enables the framework to be moved relative to the upper (Waatti: paras. 0026 and 0071-0078; and figs 14-21). Since Davis et al and Waatti are analogous with respect to 3D segments onto a shoe upper, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate the release agent, the plurality of segments on the external medial and lateral sides, and removal of the release agents taught by Waatti in order to further customize uppers with easier lacing shoe lace holes.
Regarding claim 9, such is taught by Davis et al (Davis et al: paras. 0008, 0014; 0058).
Regarding claim 10, such is taught by Davis et al (Davis et al: para. 0008, and 0055-0057; figs 1 and 28; sole 100 can be made of layers of a single extruded material, wherein the outer most layer constitutes the outsole).
Regarding claim 11, such is taught by Davis et al (Davis et al: paras. 0008, 0014; 0058).
Regarding claim 12, such is taught by Davis et al (Davis et al: figs 1-3, 12, and 30).
Regarding claim 13, such is taught by the above combination of Davis et al and Waatti.
Regarding claim 15, such is taught by the above combination of Davis et al and Waatti since Waatti teaches the release agent being paper or a coating (Waatti: paras. 0026 and 0071-0078; and figs 14-21).
Claim(s) 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Waatti (USP 2016/0219982) as applied to claim 21 above, and further in view of Davis et al (USP2015/0040428). The above teachings of Waatti are incorporated hereinafter.
Waatti also teaches forming an upper including an internal cavity (Waatti: paras. 0026 and 0071-0078; and figs 14-21), but does not teach positioning the upper on a last within the internal cavity, and removing the last from the internal cavity. Davis et al teach 3D printing segments onto a shoe upper, wherein the upper is placed on a last and then removed from the last after printing (Davis et al: para. 0110; fig 28). Since Davis et al and Waatti are analogous with respect to 3D segments onto a shoe upper, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to position the upper of Waatti on a last before printing and then removing the upper from last after printing as taught by Davis et al in order to better precisely print the segments onto the upper.
Regarding claim 23, Waatti does not teach inserting a midsole into the internal cavity after removing the last. Since it is well-known in the shoe art to insert a midsole into an upper to improve comfort or performance, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to insert a midsole into the upper of Waatti in order to improve the comfort or performance of the shoe.
Applicant’s arguments with respect to claim(s) 1-6,8-13,15 and 21-23 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following references teaches 3D printing patterns onto a part of a shoe: US2014/0020192; USPN 9005710; DE2017103049; and CN107205516.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDMUND H LEE whose telephone number is (571)272-1204. The examiner can normally be reached M-Th 9AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao (Sam) Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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EHL
/EDMUND H LEE/Primary Examiner, Art Unit 1744
