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 .
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 the claims of U.S. Patent No. 11219273 or 11812820. Although the claims at issue are not identical, they are not patentably distinct from each other because all claim an upper formed from a plurality of layers with at least one stretch/nonstretch zone as claimed.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Antonelli (2013/0174446).
Antonelli shows An upper for an article of footwear, comprising: a sheet of layered material including:
a first outer layer (first layer or 360) and a second outer layer (third layer as discussed in paragraphs [0051]-[0055]) opposite the first outer layer;
one or more intermediate layer (second layer or 350) disposed between and in direct contact with the first outer layer and the second outer layer, wherein the one or more intermediate layer is configured to confine or limit one or more stretch characteristics of the first outer layer and the second outer layer; and
a plurality of stretch zones (see paragraphs [0104]-[0106]) within the sheet of layered material, wherein characteristics of the plurality of stretch zones are defined by the presence or absence of the one or more intermediate layer between the first outer layer and the second outer layer, and the plurality of stretch zones (see paragraphs [0094]-[0098]) include at least one of:
a first stretch zone (see paragraphs [0033]-[0034]), wherein the first stretch zone is a two-way stretch zone configured to stretch along one stretch axis and to stretch to little or no extent along another axis orthogonal to the one stretch axis,
a second stretch zone (see paragraphs [0033]-[0034]), wherein the second stretch zone is a four- way stretch zone configured to stretch along a first axis and along a second axis orthogonal to the first axis, and
a third stretch zone (see paragraphs [0037]-[0042]), wherein the third stretch zone is a non-stretch zone configured to remain substantially undeformed and having little to no elasticity along any axis under normal use conditions;
wherein the upper comprises at least one other piece (340) coupled to the sheet of layered material as claimed.
It is noted that throughout Antonelli different elasticity zones are described and discussed.
In reference to claim 2, Antonelli teaches multiple stretch zones see paragraphs [0136]-[0137] as well as other paragraphs.
In reference to claim 3, Antonelli teaches the claimed material, see paragraphs [0105]-[0106].
In reference to claims 4, 5, and 9-16, Antonelli teaches different perforations/patterns (see paragraphs [0136]-[0137]).
In reference to claims 6-8, Antonelli teaches different materials see paragraph [0055] which inherently have different densities.
In reference to claim 17, Antonelli teaches a second outer layer (third layer) see paragraph [0053] to cover the first outer layer and intermediate layers (functional second layer) completely.
In reference to claim 18, Antonelli teaches the intermediate layer (second layer) to be a meltable material which is cured see paragraph [0124] discusses curing the second layer/intermediate layer or paragraph [0125] the second layer is melted and therefore is considered to be “an adhesive” as claimed.
In reference to claims 19 and 20, Antonelli teaches different perforations/patterns (see paragraphs [0136]-[0137]).
The prior art cited and not relied upon by the Examiner for the above rejections are considered to be pertinent in that the references cited are considered to be the nearest prior art to the subject matter defined in the claims as required by MPEP707.05.
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In order to avoid potential delays, Technology Center 3700 is encouraging FAXing of responses to Office Actions directly into the Center at (571)273-8300 (FORMAL FAXES ONLY). Please identify Examiner Marie Bays of Art Unit 3732 at the top of your cover sheet.
Any inquiry concerning the MERITS of this examination from the examiner should be directed to Marie Bays whose telephone number is (571) 272-4559. The examiner can normally be reached from Mon-Thurs 6-4. Alternatively if the Examiner cannot be reached, please contact the Examiners SPE Alissa Tompkins at 571-272-3425.
/MARIE D BAYS/Primary Examiner, Art Unit 3732