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 .
Response to Amendment
In accordance with Applicant’s amendment filed 7/2/2026, claims 1-3, 5-8, 11-14, 17-18 are amended. Claims 4, 10, 15, and 19 are canceled. Claims 21-24 are new. Claims 1-3, 5-9, 11-14, 16-18, and 20-24 are currently pending and presented for examination on the merits.
Applicant’s amendment has overcome the previously presented objections to the drawings and it has introduced new ones.
Applicant’s amendment has overcome some of the previously presented rejections under 35 USC 112(b).
Applicant’s amendment has overcome the previously presented objections to the specification.
Response to Arguments
Applicant’s arguments filed 7/2/2026 with respect to the 35 USC 102(a)(1) rejections of claim(s) 1 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. In light of Applicant’s amendment, which has introduced new limitations into the claims that have not been previously searched or considered, the search and interpretation of the prior art has been updated, as described in the rejections below.
Applicant submits that the dependent claims are allowable based on their dependency from independent claim 1; however, as described in the arguments above and rejections below, claim 1 is not allowable over the prior art. The dependent claims remain rejected.
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 “inner layer at least partially overlapped by an inner surface of the first membrane and coupled to an inner surface of the second membrane” as required by claim 24 must be shown or the feature(s) canceled from the claim(s). There is currently no structure that is labeled as the “inner layer” on the figures, not even on figure 1 which is described as showing the inside of the upper (paragraph 103), and no description of such a feature in conjunction with the description of the figures.
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 9 is objected to because of the following informalities: “stiches” should likely be “stitches”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12-14 17, 23 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 12, the claim recites “the first membrane is inserted into the second membrane”. It is unclear what it means for the first membrane to be “inserted into” the second membrane. The first membrane does not appear to be shown or described as inside of the second membrane (such as in a pocket or between two layers), as the specification and drawings appear to merely show that the first membrane and second membrane are attached to each other and that the first membrane may be interior to the second membrane when the upper is fully assembly, so the Examiner has interpreted this term as best can be understood and if the prior art teaches a first membrane and second membrane being attached to each other or the first membrane being interior to the second membrane, it will be held to read on the limitation of the first membrane being “inserted into” the second membrane insofar as understood by the Examiner.
Regarding claim 17, the claim recites “the plurality of eyestay elements are coupled to a join disposed between the first membrane and the second membrane”. It is unclear what it means for the eyestay elements to be “coupled to a join”. As described in paragraph 50 of the instant application, “The eyestay consists of a series of reinforced holes, loops, or eyelets through which the shoelaces are passed to secure the shoe onto the foot.” How would holes or eyelets be coupled to a join, such as a seam or weld? For the purposes of examination, the coupling has been interpreted broadly to include indirect coupling.
Regarding claim 23, the claim recites “the first membrane defines another portion on the inner surface of the upper”. This limitation is confusing because the term “another” implies that a portion of the inner surface of the upper was already defined; however, no such portion has been defined in the claim or the claims from which it depends. It is therefore unclear why the term “another” is used, and for the purposes of examination, the claim has been interpreted as requiring the first membrane to define a portion on the inner surface of the upper.
Dependent claims inherit the deficiencies by way of dependency.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-2, 5, 7-9, 11-14, 16, 18, 20-24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ruban (US 2008/0016717).
Regarding claim 1, Ruban discloses: An upper for an article of footwear comprising: a first membrane (13b and 13c) having a first characteristic; and a second membrane (16) having a second characteristic; an outer layer (13a) at least partially overlapping an outer surface of the first membrane (see figure 5 showing that 13a at least partially overlaps an outer surface of the collective 13b and 13c) and coupled to an inner surface of the second membrane (see figure 2 showing that 13a is coupled to an inner surface of 16), wherein the second membrane defines a portion of an outer surface of the upper and the outer layer defines another portion of the outer surface of the upper (see figure 2 showing that 16 defines a portion of the outer surface of the upper closer to the sole and 13a defines a different portion of the outer surface of the upper farther from the sole), and wherein a value of the first characteristic is different from a value of the second characteristic (“the reinforcement 16 is made of waterproof and abrasion-proof material, in any case more resistant than the material of the upper 10. It can be made, for example, of a laminated PU layer/non-woven layer such as PU/PVC, non-woven polyester” paragraph 65, vamp 13 is part of upper, para. 0036).
Regarding claim 2, Ruban discloses: The upper according to claim 1, wherein the first characteristic is an elasticity of the first membrane and the second characteristic is an elasticity of the second membrane, wherein the first characteristic is a vapor permeability of the first membrane and the second characteristic is a vapor permeability of the second membrane, or wherein the first characteristic is a waterproofness of the first membrane and the second characteristic is a waterproofness of the second membrane (“the reinforcement 16 is made of waterproof and abrasion-proof material, in any case more resistant than the material of the upper 10. It can be made, for example, of a laminated PU layer/non-woven layer such as PU/PVC, non-woven polyester” paragraph 65).
Regarding claim 5, Ruban discloses: The upper according to claim 2, wherein the first characteristic is the waterproofness of the first membrane and the second characteristic is the waterproofness of the second membrane, wherein the value of the waterproofness of the second membrane is greater than the value of the waterproofness of the first membrane (“the reinforcement 16 is made of waterproof and abrasion-proof material, in any case more resistant than the material of the upper 10. It can be made, for example, of a laminated PU layer/non-woven layer such as PU/PVC, non-woven polyester” paragraph 65), and wherein the second membrane is located closer to a lower surface of the upper than the first membrane of the upper, the lower surface of the upper being configured to form a bite line with a sole when coupled thereto (see figure 1a and figure 2, showing the region 16 is located closer to the lower surface of the upper than the region 13).
Regarding claim 7, Ruban discloses: The upper according to claim 1, further comprising a connecting region (17) disposed between the first membrane and the second membrane (see figure 2 showing the seam 17 goes through both the first membrane and the second membrane, so it is disposed between them).
Regarding claim 8, Ruban discloses: The upper according to claim 7, wherein the connecting region comprises a join (17 is a seam) assembling the first membrane and the second membrane (see figure 2 showing the seam 17 goes through both the first membrane and the second membrane).
Regarding claim 9, Ruban discloses: The upper according to claim 8, wherein the join comprises at least one of an adhesive, a tape, a welded laser connection, a vibration connection, an infrared connection, a supersonic connection, a hot bar or hot pressing connection, or a seam with stiches (17 is a seam).
Regarding claim 11, Ruban discloses: The upper according to claim 1, wherein the first membrane or the second membrane includes a laminated structure (“vamp 13 […] made of breathable-waterproof material constituted of three laminated layers” paragraph 39) having a carrier (13c) and a membrane layer (13b), wherein the carrier is formed from at least one of an engineered mesh, a weft or warp knitted fabric, or a woven fabric (a third layer 13c made of a mesh of polyester or polyamide” paragraphs 39-42).
Regarding claim 12, as best understood by Examiner, Ruban discloses: The upper according to claim 1, wherein the first membrane is inserted into the second membrane (the first membrane is inserted into the second membrane insofar as understood as it is located inside of the second membrane and they are attached via the seam 17, see figure 2).
Regarding claim 13, Ruban discloses: The upper according to claim 12, wherein the first membrane is U-shaped, rectangular shaped, trapezoid shaped, triangular shaped, or V-shaped (the first membrane is rectangular shaped as it resembles a rectangle, see annotated figure 1a below).
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Regarding claim 14, Ruban discloses: The upper according to claim 13, wherein the outer layer at least partially overlaps a join disposed between the first membrane and the second membrane (the outer layer at least partially overlaps the join 17 between the first membrane and the second membrane because there are parts of the seam 17 that extend below the outer layer, since a stitch goes all the way through the material and is present on both sides, as can be seen in figure 2).
Regarding claim 16, Ruban discloses: The upper according to claim 1, wherein the upper further comprises a shoelace (26), wherein the shoelace is coupled to a plurality of eyestay elements (25), and wherein each eyestay element holds a loop of the shoelace at a respective point of fixation (“keepers 25 adapted to receive a tightening lace 26 are fixed by stitching and/or gluing on the vamp 13 along the edges of the opening 14” paragraph 54; see figure 1a annotated above).
Regarding claim 18, Ruban discloses: The upper according to claim 16, wherein the plurality of eyestay elements are coupled to an edge of the outer layer of the upper (“these keepers 24, constituted by folded straps, are fixed by stitching and/or gluing on the vamp 13, and the assembly is reinforced by means of a strip 30 made of waterproof material” paragraph 54; see figure 1 showing the eyestay elements are coupled to an edge of the outer layer (13a)).
Regarding claim 20, Ruban discloses: A shoe (1) comprising the upper according to claim 1 (see figure 1a; see 35 USC 102(a)(1) rejection of claim 1 above).
Regarding claim 21, Ruban discloses: The upper according to claim 1, further comprising a join (17) coupled to an inner surface of the first membrane and the inner surface of the second membrane, wherein the join defines at least a portion of an inner surface of the upper (a stitch of the seam 17 goes all the way through the material, as shown in figure 2, so it is coupled to all surfaces of the first membrane and the second membrane and also defines a portion of the inner surface of the upper as there is part of the stitch that will be on the inside of the upper).
Regarding claim 22, Ruban discloses: The upper according to claim 1, wherein the first membrane defines a first zone within the upper (see annotated figure 1a below), wherein the second membrane defines a second zone within the upper (see annotated figure 1a below), and wherein at least one of a thickness, a density, or a material of the first zone is different from a thickness, a density, or a material of the second zone (the material in the first zone is different than the material in the second zone; the material in the first zone is “a third layer 13c made of a mesh of polyester or polyamide” paragraph 42 and “a breathable-waterproof membrane such as a PU film” paragraph 41; the second zone is made of “the reinforcement 16 is made of waterproof and abrasion-proof material, in any case more resistant than the material of the upper 10. It can be made, for example, of a laminated PU layer/non-woven layer such as PU/PVC, non-woven polyester” paragraph 65).
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Regarding claim 23, as best understood by Examiner, Ruban discloses: The upper according to claim 22, wherein the first membrane defines another portion of the inner surface of the upper (see annotated figure 1a below; Examiner notes that the first membrane (13b and 13c) is on the inner surface of the upper, see figure 5, so the portion it defines is on the inner surface even though the figure shows the exterior).
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Regarding claim 24, Ruban discloses: An upper for an article of footwear comprising: a first membrane (13a and 13b) having a first characteristic; a second membrane (16) having a second characteristic; and an inner layer (13c) at least partially overlapped by an inner surface of the first membrane and coupled to an inner surface of the second membrane (see figures 2 and 5), wherein the first membrane defines a portion of an outer surface of the upper and the second membrane defines another portion of the outer surface of the upper (see figure 2), and wherein a value of the first characteristic is different from a value of the second characteristic (“the reinforcement 16 is made of waterproof and abrasion-proof material, in any case more resistant than the material of the upper 10. It can be made, for example, of a laminated PU layer/non-woven layer such as PU/PVC, non-woven polyester” paragraph 65).
Claim(s) 1-2, 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jessiman (US 2011/0179677).
Regarding claim 1, Jessiman discloses: An upper for an article of footwear comprising: a first membrane (21) having a first characteristic; and a second membrane (11) having a second characteristic; an outer layer (50) at least partially overlapping an outer surface of the first membrane and coupled to an inner surface of the second membrane (see figure 1; connection 40 is described as a stitch in paragraph 13, which would go all the way through the material and therefore include a coupling to the inner surface of the second membrane), wherein the second membrane defines a portion of an outer surface of the upper and the outer layer defines another portion of the outer surface of the upper (see figure 1), and wherein a value of the first characteristic is different from a value of the second characteristic (“the laminate of the superior compartment has a moisture vapor transmission rate greater than 1100 g/m2/24 hours and the laminate of the inferior compartment has a moisture vapor transmission rate greater than 2200 g/m2/24 hours” paragraph 12).
Regarding claim 2, Jessiman discloses: The upper according to claim 1, wherein the first characteristic is an elasticity of the first membrane and the second characteristic is an elasticity of the second membrane, wherein the first characteristic is a vapor permeability of the first membrane and the second characteristic is a vapor permeability of the second membrane (“the laminate of the superior compartment has a moisture vapor transmission rate greater than 1100 g/m2/24 hours and the laminate of the inferior compartment has a moisture vapor transmission rate greater than 2200 g/m2/24 hours” paragraph 12), or wherein the first characteristic is a waterproofness of the first membrane and the second characteristic is a waterproofness of the second membrane.
Regarding claim 6, Jessiman discloses: The upper according to claim 2, wherein the first characteristic is the vapor permeability of the first membrane and the second characteristic is the vapor permeability of the second membrane (“the laminate of the superior compartment has a moisture vapor transmission rate greater than 1100 g/m2/24 hours and the laminate of the inferior compartment has a moisture vapor transmission rate greater than 2200 g/m2/24 hours” paragraph 12), wherein the value of the vapor permeability of the first membrane ranges from 3 RET to 15 RET (“the film includes ePTFE having a microstructure characterized by nodes interconnected by fibrils, wherein the pores of the porous film are sufficiently tight so as to provide liquidproofness and sufficiently open to provide properties such as moisture vapor transmission” paragraph 22; since Applicant indicated ePTFE as a material having the claimed vapor permeability in RET in paragraph 71 of the instant specification, it is understood that the vapor permeability in RET of the film in Jessiman is also in the claimed range because it is also made of ePTFE), and wherein the value of the vapor permeability of the second membrane ranges from 3 RET to 15 RET (“the film of the inferior compartment utilizes the same material described above for the superior compartment” paragraph 29; the materials of the superior compartment were described as follows, “the film includes ePTFE having a microstructure characterized by nodes interconnected by fibrils, wherein the pores of the porous film are sufficiently tight so as to provide liquidproofness and sufficiently open to provide properties such as moisture vapor transmission” paragraph 22; since Applicant indicated ePTFE as a material having the claimed vapor permeability in RET in paragraph 71 of the instant specification, it is understood that the vapor permeability in RET of the film in Jessiman is also in the claimed range because it is also made of ePTFE).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3, 12-13, 16-17, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hess (US 5797200).
Regarding claim 1, Hess discloses: An upper for an article of footwear comprising: a first membrane (24) having a first characteristic; and a second membrane (side/rear portion of upper 20, see figure 1 below) having a second characteristic; an outer layer (22) at least partially overlapping an outer surface of the first membrane and coupled to an inner surface of the second membrane (see annotated figure 1 below; see figure 4 showing that the outer layer 22 partially overlaps an outer surface of the first membrane 24; see figure 1 showing that the side part of upper 20 overlaps and is coupled to an inner surface (i.e., it overlaps) of the second membrane 22), wherein the second membrane defines a portion of an outer surface of the upper and the outer layer defines another portion of the outer surface of the upper (see figure 1 annotated below).
Hess teaches that vamp section of the upper is a leather material (“side wall 23 of the vamp section 22 is constructed of a substantially inelastic material—in this case, leather—while the top portion 24 of the vamp is constructed of an elastic material” column 3, lines 28-34) but is not specific about any material for the rest of the upper 20, and therefore does not explicitly disclose: and wherein a value of the first characteristic is different from a value of the second characteristic.
Hess teaches analogous art to the instant application in the field of footwear. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make both the vamp portion 23 and the portion about the sides and rear of the upper out of the same leather material disclosed for the vamp portion in Hess (see column 3, lines 28-34), in order to give the shoe a cohesive look from front to back, which would increase the aesthetic appeal of the footwear. Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See MPEP 2144.07.
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Regarding claim 2, Hess discloses: The upper according to claim 1, wherein the first characteristic is an elasticity of the first membrane and the second characteristic is an elasticity of the second membrane (“side wall 23 of the vamp section 22 is constructed of a substantially inelastic material—in this case, leather—while the top portion 24 of the vamp is constructed of an elastic material” column 3, lines 28-34; as modified, the side/rear part of the upper 20 is also made of leather), wherein the first characteristic is a vapor permeability of the first membrane and the second characteristic is a vapor permeability of the second membrane, or wherein the first characteristic is a waterproofness of the first membrane and the second characteristic is a waterproofness of the second membrane.
Regarding claim 3, Hess discloses: The upper according to claim 2, wherein the first characteristic is the elasticity of the first membrane and the second characteristic is the elasticity of the second membrane, wherein the value of the elasticity of the first membrane is greater than the value of the elasticity of the second membrane (“side wall 23 of the vamp section 22 is constructed of a substantially inelastic material—in this case, leather—while the top portion 24 of the vamp is constructed of an elastic material” column 3, lines 28-34; as modified, the side/rear part of the upper 20 is also made of leather) and wherein the first membrane is located at an ankle region, a heel region, or a tongue region of the upper (see figure 1 showing the top portion 24 is located in a tongue region of the upper).
Regarding claim 12, as best understood by Examiner, Hess discloses: The upper according to claim 1, wherein the first membrane is inserted into the second membrane (see figure 1; the first membrane is interior of the second membrane, so it is considered to be “inserted” into the second membrane insofar as can be understood).
Regarding claim 13, Hess discloses: The upper according to claim 12, wherein the first membrane is U-shaped, rectangular shaped, trapezoid shaped, triangular shaped, or V-shaped (“U-shaped elastic top portion 24” column 4, line 20).
Regarding claim 16, Hess discloses: The upper according to claim 1, wherein the upper further comprises a shoelace (38), wherein the shoelace is coupled to a plurality of eyestay elements (40), and wherein each eyestay element holds a loop of the shoelace at a respective point of fixation (“laces 38 are looped through eyes 40 positioned along the sides of the upper 20” column 3, lines 40-41; see figures 1 and 2).
Regarding claim 17, Hess discloses: The upper according to claim 16, wherein the plurality of eyestay elements are coupled to a join disposed between the first membrane and the second membrane (the eyestay elements are at least indirectly coupled to a join between the first membrane and the second membrane as they are located on the second membrane, see annotated figure 1 provided above with the rejection of claim 1).
Regarding claim 20, Hess discloses: A shoe (1) comprising the upper according to claim 1 (see 35 USC 103 rejection of claim 1 above; see also figures 1-2 which show the full shoe 1).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIANNA T DUCKWORTH whose telephone number is (571)272-1458. The examiner can normally be reached M-F 9:00 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Ostrup can be reached at 571-272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIANNA T. DUCKWORTH/Examiner, Art Unit 3732
/PATRICK J. LYNCH/Primary Examiner, Art Unit 3732
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