DETAILED ACTION
This office action is in response to the application filed April 3, 2025 in which claims 1-18 are presented for examination.
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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 18/028,199.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “the shaping carrier comprises one or more depressions on its surface” as recited in claim 18 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
Claim Objections
Claim 16 recites the limitation "the three-dimensional space" on line 3. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1-5 and 8-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPN 4,031,854 Sprague, Jr.
To claim 1, Sprague discloses a shoe upper manufacturing system (see Figures 1-4, reproduced below for convenience; col. 2, line 1 – col. 11, line 11) comprising:
a shaping carrier (56) (see Figures 1 and 3-4; col. 4, line 33 – col. 5, line 2); and
a dosing head in fluidic communication with a melting apparatus (see Figures 1-3; col. 2, line 63 – col. 3, line 11; col. 8, lines 13-56), wherein the dosing head includes a nozzle (28) comprising an outlet opening (38) (see especially Figure 2; col. 2, line 63 – col. 3, line 11), wherein the nozzle is configured such that a molten polymer composition (26) exiting the outlet opening exits the outlet opening as a helical filament (32) formed at least in a subregion between the outlet opening and the shaping carrier (see Figures 1-4; col. 2, lines 50-62).
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To claim 2, Sprague further discloses a shoe upper manufacturing system wherein the nozzle comprises a plurality of air exit openings (52) arranged around the outlet opening (see Figure 2; col. 2, line 63 – col. 3, line 11).
To claim 3, Sprague further discloses a shoe upper manufacturing system wherein the air exit openings are arranged such that air can be impinged on the molten polymer composition exiting the outlet opening such that the helical filament is formed by impingement of the compressed air from the air exit openings (see Figure 2; col. 2, line 41 – col. 4, line 25).
To claim 4, Sprague further discloses a shoe upper manufacturing system wherein the air exit openings are concentrically arranged around the outlet opening (see Figure 2; col. 2, line 63 – col. 3, line 11).
To claim 5, Sprague further discloses a shoe upper manufacturing system wherein the air exit openings are directed horizontally offset to an axis extending in discharge direction through a central point of the outlet opening by an angle α (see Figure 2; col. 2, line 41 – col. 4, line 25).
To claim 8, Sprague further discloses a shoe upper manufacturing system further comprising an air discharge apparatus which is configured to provide an airflow at a predetermined temperature to the helical filament (see Figure 2; col. 2, line 41 – col. 4, line 25).
To claim 9, Sprague further discloses a shoe upper manufacturing system further comprising a dosing pump (see Figures 1-2; col. 2, line 41 – col. 4, line 63; col. 5, line 25 – col. 7, line 58).
To claim 10, Sprague further discloses a shoe upper manufacturing system wherein the dosing pump is a gear pump (see Figures 1-2; col. 2, line 41 – col. 4, line 63; col. 5, line 25 – col. 7, line 58).
To claim 11, Sprague further discloses a shoe upper manufacturing system wherein the melting apparatus comprises an extruder (see Figures 1-2; col. 2, line 41 – col. 4, line 63; col. 5, line 25 – col. 7, line 58).
To claim 12, Sprague further discloses a shoe upper manufacturing system wherein the melting apparatus comprises a plurality of consecutively arranged temperature zones (Figures 1-2 and Figure 3; col. 2, line 63 – col. 3, line 11; col. 8, lines 13-56).
To claim 13, Sprague further discloses a shoe upper manufacturing system wherein the plurality of consecutively arranged temperature zones comprises a first temperature zone (see Figures 1-2) and a downstream second temperature zone (see Figure 3), the first temperature zone configured to provide a lower temperature than the second temperature zone (col. 2, line 63 – col. 3, line 11; col. 8, lines 13-56).
To claim 14, Sprague further discloses a shoe upper manufacturing system further comprising a last as the shaping carrier (see Figures 1 and 3-4; col. 4, line 33 – col. 5, line 2).
To claim 15, Sprague further discloses a shoe upper manufacturing system wherein the shaping carrier comprises one or more heating elements (see Figure 3; col. 8, lines 13-56).
To claim 16, Sprague further discloses a shoe upper manufacturing system further comprising a positioning unit, wherein the positioning unit is configured to move the shaping carrier in the three-dimensional space (see Figures 1-4; col. 4, lines 26-63).
To claim 17, Sprague further discloses a shoe upper manufacturing system further comprising a control unit being configured to control moving the shaping carrier in the three-dimensional space (see Figures 1-4; col. 4, lines 26-63).
To claim 18, Sprague further discloses a shoe upper manufacturing system wherein the shaping carrier comprises one or more depressions on its surface (see Figures 1 and 3-4; col. 4, line 33 – col. 5, line 2).
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Sprague.
To claim 6, Sprague discloses a shoe upper manufacturing system as recited in claims 1-2 and 5, above.
Sprague does explicitly disclose a shoe upper manufacturing system wherein the angle α is 5° to 35°.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the shoe upper manufacturing system of Sprague such that angle α is 5° to 35° as a matter of routine optimization. It is further respectfully noted that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art (see MPEP 2144.05).
To claim 7, Sprague further discloses a shoe upper manufacturing system further comprising a horizontal angle β between a horizontal plane perpendicular to the outlet opening and a discharge direction and one of the air exit openings in flow direction of compressed air exiting the air exit opening (see Figure 2; col. 2, line 41 – col. 4, line 25).
Sprague does explicitly disclose a shoe upper manufacturing system wherein the angle β is 40° to 60°.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the shoe upper manufacturing system of Sprague such that angle β is 40° to 60° as a matter of routine optimization. It is further respectfully noted that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art (see MPEP 2144.05).
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,342,903. Although the claims at issue are not identical, they are not patentably distinct from each other because they each disclose systems or methods of shoe upper manufacturing comprising substantially the same elements including a shaping carrier, a molten polymer composition, a nozzle comprising an outlet opening, with the molten polymer composition exiting the nozzle as a helical filament to be applied to the shaping carrier.
INSTANT APPLICATION
USPN 12,342,903
CLAIMS
1
1,15
2
1,17
3
1,17
4
1,17
5
1,17
6
1,17
7
1,17
8
9-10
9
9-10
10
1,15
11
1,15
12
9-10
13
9-10
14
14
15
14
16
3
17
4
18
14
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Manufacturing systems analogous to the instant invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRIFFIN HALL whose telephone number is (571)270-0546. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alissa Tompkins can be reached at (571) 272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/F Griffin Hall/Primary Examiner, Art Unit 3732