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 .
DETAILED ACTION
Response to Amendment
Applicant’s amendment filed July 20, 2026 has been received, Claims 1-23 and 29-32 are currently pending, with Claims 4-6, 11-13, and 17-23 remaining withdrawn from prosecution at this time. Claim 32 is newly withdrawn, as seen below.
Election/Restrictions
Newly submitted claim 32 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claim 32 is drawn to non-elected Species 1: Fig.3.
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 Accordingly, claim 32 withdrawn from consideration as being directed to a non-elected invention.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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
1. Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 3 fails to further limit the subject matter of the claim upon which it depends, Claim 1, which claims “each strand segment is continuously exposed along a majority of its length”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
2. Claim(s) 1, 3, 7-8, 10, 14, and 29-31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dojan (US 2013/0219749).
Regarding Claims 1 and 3, Dojan discloses an upper (30) for footwear, comprising: a knitted component (40:41,42; para.40), comprising: a first portion (36) comprising an inner region of the upper; a second portion (37) comprising an outer region of the upper (as seen in Fig.1 & 4); and a plurality of strand segments (segments of 43) that are inlaid in the knitted component (para.34), the plurality of strand segments extending radially-outward from the first portion and into the second portion (as seen in Fig.1 & 4), wherein each strand segment is continuously exposed (at 44) along a majority of its length on an exterior surface of the upper between the first portion and the second portion (as seen in Fig.1 & 4).
Regarding Claim 7, Dojan discloses an upper of claim 1, wherein the first portion (37) comprises a throat edge of the upper, and wherein the plurality of strand segments (segments of 43) extend radially-outward around the throat edge (as seen in Fig.1 & 4).
Regarding Claim 8, Dojan discloses an article of footwear, comprising: an upper (30), comprising: a knitted component (40:41,42; para.40), comprising: a first portion (36) comprising an inner region of the upper; a second portion (37) comprising an outer region of the upper (as seen in Fig.1 & 4); and a plurality of strand segments (segments of 43) that are inlaid in the knitted component (para.34), the plurality of strand segments extending radially-outward from the first portion and into the second portion (as seen in Fig.1 & 4), wherein a spacing between adjacent strand segments increases continuously from the first portion (43 at top of 34) toward the second portion (37)(as seen in Fig.1 & 4, the spacing between 43 is narrower at the top of 34 than at 37).
Regarding Claim 10, Dojan discloses an article of footwear of claim 8, wherein the plurality of strand segments (segments of 43) are at least partially exposed (at 44) on the upper (as seen in Fig.1 & 4).
Regarding Claim 14, Dojan discloses an article of footwear of claim 8, wherein the first portion (36) comprises a throat edge of the upper, and wherein the plurality of strand segments (segments of 43) extend radially-outward around the throat edge (as seen in Fig.1 & 4).
Regarding Claim 29, Dojan discloses an article of footwear, comprising: an upper (30), comprising: a knitted component (40:41,42; para.40), comprising: a first portion (36) comprising an inner region of the upper; a second portion (37) comprising an outer region of the upper (as seen in Fig.1 & 4); and a plurality of strand segments (segments of 43) that are inlaid in the knitted component (para.34), the plurality of strand segments extending radially-outward from the first portion and into the second portion (as seen in Fig.1 & 4), wherein each strand segment is exposed (at 44) along a majority of its length, and remains continuously exposed along its corresponding knit course (i.e. knit courses around 44) of the knitted component, on an exterior surface of the upper between the first portion and the second portion (as seen in Fig.1 & 4).
Regarding Claim 30, Dojan discloses an article of footwear of claim 29, wherein adjacent strand segments of the plurality of strand segments increase in spacing from each other from the first portion toward the second portion (as seen in Fig.1 & 4, the spacing between 43 is narrower at the top of 34 than at 37).
Regarding Claim 31, Dojan discloses an article of footwear of claim 29, wherein each strand segment (segments of 43) exits the knitted component at the inner region and re-enters the knitted component at the outer region (para.36; as seen in Fig 1).
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.
3. Claim(s) 2, 9, and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dojan (US 2013/0219749) in view of Huffa (US 2012/0233882).
Regarding Claims 2 and 9, Dojan discloses an upper of claim 1/8, wherein the knitted component further comprises a plurality of knitted courses extending from the first portion and toward the second portion, and arranged continuously between opposite ends (i.e. toed & heel end) of the upper (para.40; i.e. knit materials 41 & 42 are formed of courses which would extend from the first portion toward the second portion, and be arranged continuously between opposite ends of the upper). Dojan does not explicitly disclose the knitted courses extending radially-outward from the first portion and toward the second portion. However, Huffa teaches a knit upper (120) having a first portion (i.e. throat portion at 135) and a second portion (i.e. peripheral portion at 133); a plurality of knitted courses extending radially-outward from the first portion and toward the second portion (para.44; as seen in Fig.6 & 8B).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the knit course orientation of Dojan for the knit course orientation of Huffa, as a simple substitution of one well known knit upper course orientation for another, in order to yield the predictable result of providing a knit upper with the desired aesthetic appearance.
Regarding Claim 15, Dojan discloses the invention substantially as claimed above. Dojan does not disclose wherein the upper comprises at least one fused area. However, Huffa teaches a knit upper (120) comprising at least one fused area (139; para.51-52).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Dojan to include a fused area, as taught by Huffa, in order to provide a durable upper that can withstand repeated wear-and-tear use by a wearer.
Regarding Claim 16, Dojan discloses the invention substantially as claimed above. Dojan does not disclose wherein the knitted component comprises one or more fusible yarns. However, Huffa teaches a knit upper (120) comprising one or more fusible yarns (139; para.51)(as seen in Fig.8B).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Dojan to include a fusible yarn, as taught by Huffa, in order to provide a durable upper that can withstand repeated wear-and-tear use by a wearer.
Response to Arguments
In view of Applicant's amendment, the search has been updated, and new prior art has been identified and applied. Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection.
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 MEGAN E LYNCH whose telephone number is (571)272-3267. The examiner can normally be reached Monday to Friday, 8:00am-4:00pm EST.
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, Alissa J. 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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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732
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