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 .
Information Disclosure Statement
Since this application is a continuation of US Applications 16/516699 and 17/951618, the Examiner has considered the information provided in the parent application (per MPEP 609.02). Should Applicant desire the information to be printed in any patent issuing from this application, a new listing of the information must be separately submitted.
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 claims 1-16 of U.S. Patent No. 11,457,688 in view of Follet et al. (US 2017/0071291), herein Follet.
The claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent, except for the knitted component comprising a plurality of protrusions, and the throat region extending at an angle relative to a longitudinal axis of the upper.
Follet teaches an upper (520) for an article of footwear formed of a knitted component (1000) and comprising a plurality of protrusions (551) extending outward from the outer surface. The protrusions provide a textured area for controlling a ball and improved tactile sensation, distribute pressure evenly across the upper, provide resilient deformation to dampen and dissipate impact energy, and/or direct drainage of rainwater off of the upper (paragraphs 0055, 0059-0061, 0072-0073, 0105-0107, 0119-0121; Fig. 1, 4, 15-17). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a knitted component having a plurality of protrusions, as taught by Follet, in order to provide a knitted component having textured area for controlling a ball and improved tactile sensation, distribute pressure evenly across the upper, provide resilient deformation to dampen and dissipate impact energy, and/or direct drainage of rainwater off of the upper.
Follet further teaches that at least part of an inner throat region can extend at an angle to a longitudinal axis of the upper (Fig. 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to extend the inner throat region at an angle to a longitudinal axis of the upper, as taught by Follet, in order to provide improved ball contact area at the outer lateral side of the upper.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,324,484 in view of Follet et al. (US 2017/0071291), herein Follet.
Follet teaches an upper (520) for an article of footwear formed of a knitted component (1000) and comprising a plurality of protrusions (551) extending outward from the outer surface. The protrusions provide a textured area for controlling a ball and improved tactile sensation, distribute pressure evenly across the upper, provide resilient deformation to dampen and dissipate impact energy, and/or direct drainage of rainwater off of the upper (paragraphs 0055, 0059-0061, 0072-0073, 0105-0107, 0119-0121; Fig. 1, 4, 15-17). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a knitted component having a plurality of protrusions, as taught by Follet, in order to provide a knitted component having textured area for controlling a ball and improved tactile sensation, distribute pressure evenly across the upper, provide resilient deformation to dampen and dissipate impact energy, and/or direct drainage of rainwater off of the upper.
Follet further teaches that at least part of an inner throat region can extend at an angle to a longitudinal axis of the upper (Fig. 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to extend the inner throat region at an angle to a longitudinal axis of the upper, as taught by Follet, in order to provide improved ball contact area at the outer lateral side of the upper.
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) 16, 17, 19, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Follet et al. (US 2017/0071291), herein Follet.
Regarding claim 16, Follet discloses an article of footwear (100), comprising: a sole structure (110); and an upper (520) secured to the sole structure, the upper comprising: a knitted component (1000) at least partially forming: a lateral side of the upper, a medial side of the upper, and a throat region (1119) extending between the medial side and the lateral side, wherein at least part of the throat region extends at an angle relative to a longitudinal axis of the upper (Fig. 1), and towards one of the medial side and the lateral side (paragraphs 0055, 0059-0061, 0105-0107, 0119-0121; Fig. 1, 16, 17).
Regarding claim 17, Follet discloses that the knitted component comprises a multi-layer knit structure (knitted component 1000 with skin layers 1600, 1700) extending on the medial side, on the lateral side, and in the throat region (paragraphs 0157-0158; Fig. 15-16).
Regarding claim 19, Follet discloses that the knitted component includes a plurality of protrusions (551) extending from an outer surface of the throat region (paragraphs 0106-0107; Fig. 1).
Regarding claim 20, Follet discloses that an outer shroud (1700) is attached over the throat region (wherein the skin layer 1700 covers at least the outer edges of the throat region), and wherein the plurality of protrusions extend outward from an outer-facing surface of the outer shroud (paragraphs 0149; Fig. 15, 19, 20).
Claim(s) 1, 3, 5, 7, 9, 10, and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Klug et al. (US 2017/0202311), herein Klug.
Regarding claim 1, Klug discloses an upper for an article of footwear (100), the upper comprising: an inner knit component (310); and an outer shroud (210) forming at least part of an outer surface of the upper and at least partially covering a throat region (wherein the outer shroud covers at least the outer edges of the throat region) formed by the inner knit component, wherein the outer shroud is at least partially formed of a knitted component (212) and comprises a plurality of protrusions (ridges of ridged tread) extending outward from the outer surface (paragraphs 0021, 0026; Fig. 1-5).
Regarding claim 3, Klug discloses that the plurality of protrusions are each formed of a thermoplastic material (paragraph 0026).
Regarding claim 5, Klug discloses that the outer shroud comprises a plurality of openings (216) for receiving a fastening element (paragraph 0024; Fig. 2).
Regarding claim 7, Klug discloses that the outer shroud is attached to the inner knit component (Fig. 5).
Regarding claim 9, Klug discloses an article of footwear (100), comprising: a sole structure (510); and an upper secured to the sole structure, the upper comprising: an inner knit component (310); and an outer shroud (210) comprising a knitted component (212), the outer shroud extending over a throat region formed by the inner knit component (wherein the outer shroud covers at least the outer edges of the throat region), the outer shroud comprising a plurality of protrusions (ridges of ridged tread) extending outward from an outer surface of the outer shroud (paragraphs 0021, 0026; Fig. 1-5).
Regarding claim 10, Klug discloses that the plurality of protrusions are located on a knitted portion of the outer shroud (paragraph 0026).
Regarding claim 14, Klug discloses that the inner knit component includes at least one tensile strand (322) extending through a throat portion of the inner knit component (paragraphs 0030-0031; Fig. 3, 5).
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.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Follet, as applied to claim 16, in view of Podhajny et al. (US 2014/0237856), herein Podhajny.
Regarding claim 18, Follet discloses that the knitted component comprises a tensile strand (1003) that forms a loop (579) defining an opening for receiving a fastening element (paragraphs 0111-0112, 0126-0127; Fig. 10, 17).
Follet does not disclose that the loop is two overlapping loops. Podhajny teaches an upper for an article of footwear including a fastening element (lace 126) which extend through an opening of the upper. The opening is formed from a loop (lace loop 141) of a tensile strand (inlaid strand 140) extending through the upper. The loops may comprise two loops which overlap to form a single opening for receipt of the fastening element. The pair of loops minimizes the effect of breakage of the inlaid strand, leaving a lace loop in case one loop breaks or fails (paragraph 0052; Fig. 7). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a pair of overlapping loops, as taught by Podhajny, as the tensile strand loops of Follet in order to minimizes the effect of breakage of the inlaid strand, leaving a lace loop in case one loop breaks or fails.
Claim(s) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klug et al. (US 2017/0202311), herein Klug, in view of Follet et al. (US 2017/0071291), herein Follet.
Regarding claim 1, Klug discloses an upper for an article of footwear (100), the upper comprising: an inner knit component (310); and an outer shroud (210) forming at least part of an outer surface of the upper and at least partially covering a throat region (wherein the outer shroud covers at least the outer edges of the throat region) formed by the inner knit component, wherein the outer shroud is at least partially formed of a knitted component (212) (paragraphs 0021; Fig. 1-5).
Follet teaches an upper (520) for an article of footwear formed of a knitted component (1000) and comprising a plurality of protrusions (551) extending outward from the outer surface. The protrusions provide a textured area for controlling a ball and improved tactile sensation, distribute pressure evenly across the upper, provide resilient deformation to dampen and dissipate impact energy, and/or direct drainage of rainwater off of the upper (paragraphs 0055, 0059-0061, 0072-0073, 0105-0107, 0119-0121; Fig. 1, 4, 15-17). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a knitted component having a plurality of protrusions, as taught by Follet, as the outer shroud of Klug, in order to provide a knitted component having textured area for controlling a ball and improved tactile sensation, distribute pressure evenly across the upper, provide resilient deformation to dampen and dissipate impact energy, and/or direct drainage of rainwater off of the upper.
Regarding claim 2, Follet teaches that the plurality of protrusions comprise knit-formed protrusions (wherein the protrusions are formed with the knitted material of the knitted component).
Regarding claim 3, Follet teaches that the plurality of protrusions are each formed of a thermoplastic material (paragraph 0129, 0151).
Regarding claim 4, Follet teaches that a thermoplastic material (1700) is adhered to the outer surface of the outer shroud (paragraphs 0151, 0200).
Regarding claim 5, Klug discloses that the outer shroud comprises a plurality of openings (216) for receiving a fastening element (paragraph 0024; Fig. 2).
Regarding claim 6, Follet teaches that the knitted component comprises a multi-layer knit structure (knitted component 1000 with skin layers 1600, 1700) (paragraphs 0157-0158; Fig. 15-16).
Regarding claim 7, Klug discloses that the outer shroud is attached to the inner knit component (Fig. 5).
Regarding claim 8, Klug does not disclose that at least part of the inner throat region extends at an angle to a longitudinal axis of the upper. Follet teaches that at least part of an inner throat region can extend at an angle to a longitudinal axis of the upper (Fig. 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to extend the inner throat region of Klug at an angle to a longitudinal axis of the upper, as taught by Follet, in order to provide improved ball contact area at the outer lateral side of the upper.
Regarding claim 9, Klug discloses an article of footwear (100), comprising: a sole structure (114); and an upper secured to the sole structure, the upper comprising: an inner knit component (310); and an outer shroud (210) comprising a knitted component (212), the outer shroud extending over a throat region formed by the inner knit component (wherein the outer shroud covers at least the outer edges of the throat region) (paragraphs 0021; Fig. 1-5).
Follet teaches an upper (520) for an article of footwear formed of a knitted component (1000) and comprising a plurality of protrusions (551) extending outward from the outer surface. The protrusions provide a textured area for controlling a ball and improved tactile sensation, distribute pressure evenly across the upper, provide resilient deformation to dampen and dissipate impact energy, and/or direct drainage of rainwater off of the upper (paragraphs 0055, 0059-0061, 0072-0073, 0105-0107, 0119-0121; Fig. 1, 4, 15-17). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a knitted component having a plurality of protrusions, as taught by Follet, as the outer shroud of Klug, in order to provide a knitted component having textured area for controlling a ball and improved tactile sensation, distribute pressure evenly across the upper, provide resilient deformation to dampen and dissipate impact energy, and/or direct drainage of rainwater off of the upper.
Regarding claim 10, Follet teaches that the plurality of protrusions are located on a knitted portion of the outer shroud.
Regarding claim 11, Klug does not disclose that the outer shroud comprises regions of different elasticities. Follet teaches that the knitted component can have regions (1022, 1024) of different elasticities, including increased stretch around the collar and throat regions (paragraphs 0139-0143; Fig. 17). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide regions of different elasticities, as taught by Follet, to the outer shroud of Klug in order to provide increased elasticity in the collar and throat regions, allowing the shoe upper stretch to allow entry and exit of the foot into the shoe, and to better conform to the shape of the foot when worn.
Regarding claim 12, Follet teaches that the plurality of protrusions are secured to the outer shroud using a thermoplastic adhesive (paragraphs 0151, paragraph 0200).
Regarding claim 13, Follet teaches that the plurality of protrusions comprise a laminated structure (knitted component 1000 with skin layers 1600, 1700) (paragraphs 0157-0158; Fig. 15-16).
Regarding claim 14, Klug discloses that the inner knit component includes at least one tensile strand (322) extending through a throat portion of the inner knit component (paragraphs 0030-0031; Fig. 3, 5).
Regarding claim 15, Follet teaches that the plurality of protrusions are positioned at least on one of a medial side or lateral side of the outer shroud (Fig. 1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 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, Khoa Huynh can be reached at (571) 272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHARON M PRANGE/ Primary Examiner, Art Unit 3732