DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Information Disclosure Statement
Since this application is a continuation of US Applications 17/737380, 16/792536, 15/293829, and 13/681766, 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 1-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 9,498,023 in view of Dua (US 2010/0154256), herein Dua ‘256 and Dua (US 2004/0118018), herein Dua ‘018.
Regarding claims 1-4, 7-8, 10, 13-17, 19-20, and 22-26, the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent, except for the knitted component having an underfoot portion, a thermoplastic material that is fused, and a polymer sheet bonded to the knitted component. Dua ‘256 teaches an upper (30) for footwear, comprising: a knitted component (40) that integrally extends from a collar portion (45), across an overfoot portion, across medial and lateral side portions (14, 15), across an underfoot portion (wherein the edges extend at least partially underfoot as in Fig. 5A, or fully underfoot as in Fig. 8B), and to a toe portion (Fig. 1), the knitted component comprising at least one knit layer formed from at least one yarn, a thermoplastic material (paragraph 0043) that is fused (47), and a polymer sheet (35) that is bonded to a surface of the knitted component (paragraphs 0017, 0020-0023, 0029, 0043; Fig. 1-7C). It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the knitted component with an underfoot portion, a thermoplastic material that is fused, and a polymer sheet bonded to the knitted component, as taught by Dua ‘256, in order to provide improved fit and comfort with the underfoot portion, and improved stability and abrasion resistance with the fused material and polymer layer.
Dua ‘256 further teaches the limitations of claims 9, 18, 21 (see 35 USC 102 rejections below). It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the knitted component with as stretch yarn, textile cover component, and/or layered cover component, as taught by Dua ‘256, in order to provide improved fit, comfort, stability, and/or abrasion resistance to the knitted component.
Regarding claims 5, 6, 11, and 12, Dua ‘018 teaches that a thermoplastic yarn utilized in a footwear upper may be a bi-component yarn and/or a sheath-core yarn. The bicomponent yarn includes materials with two different melting temperatures, allowing the degree of fusing of the yarn to be changed depending on the temperature applied to the yarn (paragraphs 0047-0048; Fig. 2B). It would have been obvious to one of ordinary skill in the art at the time of the invention to make the thermoplastic yarn a bi-component/sheath-core yarn, as taught by Dua ‘018, in order to allow the degree of fusing of the yarn to be changed depending on the temperature applied, depending on the needs of the individual user.
Claims 1-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 10,561,200 in view of Dua (US 2010/0154256), herein Dua ‘256 and Dua (US 2004/0118018), herein Dua ‘018.
Regarding claims 1-4, 7-8, 10, 13-17, 19-20, and 22-26, the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent, except for the knitted component having an underfoot portion, a thermoplastic material that is fused, and a cover component or polymer sheet bonded to the knitted component. Dua ‘256 teaches an upper (30) for footwear, comprising: a knitted component (40) that integrally extends from a collar portion (45), across an overfoot portion, across medial and lateral side portions (14, 15), across an underfoot portion (wherein the edges extend at least partially underfoot as in Fig. 5A, or fully underfoot as in Fig. 8B), and to a toe portion (Fig. 1), the knitted component comprising at least one knit layer formed from at least one yarn, a thermoplastic material (paragraph 0043) that is fused (47), and a polymer sheet/cover component (35) that is bonded to a surface of the knitted component (paragraphs 0017, 0020-0023, 0029, 0043; Fig. 1-7C). It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the knitted component with an underfoot portion, a thermoplastic material that is fused, and a polymer sheet bonded to the knitted component, as taught by Dua ‘256, in order to provide improved fit and comfort with the underfoot portion, and improved stability and abrasion resistance with the fused material and polymer layer.
Dua ‘256 further teaches the limitations of claims 9, 18, 21 (see 35 USC 102 rejections below). It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the knitted component with as stretch yarn, textile cover component, and/or layered cover component, as taught by Dua ‘256, in order to provide improved fit, comfort, stability, and/or abrasion resistance to the knitted component.
Regarding claims 5, 6, 11, and 12, Dua ‘018 teaches that a thermoplastic yarn utilized in a footwear upper may be a bi-component yarn and/or a sheath-core yarn. The bicomponent yarn includes materials with two different melting temperatures, allowing the degree of fusing of the yarn to be changed depending on the temperature applied to the yarn (paragraphs 0047-0048; Fig. 2B). It would have been obvious to one of ordinary skill in the art at the time of the invention to make the thermoplastic yarn a bi-component/sheath-core yarn, as taught by Dua ‘018, in order to allow the degree of fusing of the yarn to be changed depending on the temperature applied, depending on the needs of the individual user.
Claims 1-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,129,443 in view of Dua (US 2010/0154256), herein Dua ‘256 and Dua (US 2004/0118018), herein Dua ‘018.
Regarding claims 1-4, 7-8, 10, 13-17, 19-20, and 22-26, the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent, except for the knitted component having an underfoot portion, a thermoplastic material that is fused, a sole structure, and a cover component or polymer sheet bonded to the knitted component. Dua ‘256 teaches an upper (30) for footwear, comprising: a knitted component (40) that integrally extends from a collar portion (45), across an overfoot portion, across medial and lateral side portions (14, 15), across an underfoot portion (wherein the edges extend at least partially underfoot as in Fig. 5A, or fully underfoot as in Fig. 8B), and to a toe portion (Fig. 1), the knitted component comprising at least one knit layer formed from at least one yarn, a thermoplastic material (paragraph 0043) that is fused (47), a sole structure (20), and a polymer sheet/cover component (35) that is bonded to a surface of the knitted component (paragraphs 0017, 0020-0023, 0029, 0043; Fig. 1-7C). It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the knitted component with an underfoot portion, a thermoplastic material that is fused, a sole structure, and a polymer sheet bonded to the knitted component, as taught by Dua ‘256, in order to provide improved fit and comfort with the underfoot portion, a fully completed shoe with a sole structure, and improved stability and abrasion resistance with the fused material and polymer layer.
Dua ‘256 further teaches the limitations of claims 9, 18, 21 (see 35 USC 102 rejections below). It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the knitted component with as stretch yarn, textile cover component, and/or layered cover component, as taught by Dua ‘256, in order to provide improved fit, comfort, stability, and/or abrasion resistance to the knitted component.
Regarding claims 5, 6, 11, and 12, Dua ‘018 teaches that a thermoplastic yarn utilized in a footwear upper may be a bi-component yarn and/or a sheath-core yarn. The bicomponent yarn includes materials with two different melting temperatures, allowing the degree of fusing of the yarn to be changed depending on the temperature applied to the yarn (paragraphs 0047-0048; Fig. 2B). It would have been obvious to one of ordinary skill in the art at the time of the invention to make the thermoplastic yarn a bi-component/sheath-core yarn, as taught by Dua ‘018, in order to allow the degree of fusing of the yarn to be changed depending on the temperature applied, depending on the needs of the individual user.
Claims 1-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,363,854 in view of Dua (US 2010/0154256), herein Dua ‘256 and Dua (US 2004/0118018), herein Dua ‘018.
Regarding claims 1-4, 7-8, 10, 13-17, 19-20, and 22-26, the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent, except for the knitted component having a thermoplastic material that is fused, a sole structure, and a cover component or polymer sheet bonded to the knitted component. Dua ‘256 teaches an upper (30) for footwear, comprising: a knitted component (40) that integrally extends from a collar portion (45), across an overfoot portion, across medial and lateral side portions (14, 15), across an underfoot portion (wherein the edges extend at least partially underfoot as in Fig. 5A, or fully underfoot as in Fig. 8B), and to a toe portion (Fig. 1), the knitted component comprising at least one knit layer formed from at least one yarn, a thermoplastic material (paragraph 0043) that is fused (47), a sole structure (20), and a polymer sheet/cover component (35) that is bonded to a surface of the knitted component (paragraphs 0017, 0020-0023, 0029, 0043; Fig. 1-7C). It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the knitted component with a thermoplastic material that is fused, a sole structure, and a polymer sheet bonded to the knitted component, as taught by Dua ‘256, in order to provide a fully completed shoe with a sole structure, and improved stability and abrasion resistance with the fused material and polymer layer.
Dua ‘256 further teaches the limitations of claims 9, 18, 21 (see 35 USC 102 rejections below). It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the knitted component with as stretch yarn, textile cover component, and/or layered cover component, as taught by Dua ‘256, in order to provide improved fit, comfort, stability, and/or abrasion resistance to the knitted component.
Regarding claims 5, 6, 11, and 12, Dua ‘018 teaches that a thermoplastic yarn utilized in a footwear upper may be a bi-component yarn and/or a sheath-core yarn. The bicomponent yarn includes materials with two different melting temperatures, allowing the degree of fusing of the yarn to be changed depending on the temperature applied to the yarn (paragraphs 0047-0048; Fig. 2B). It would have been obvious to one of ordinary skill in the art at the time of the invention to make the thermoplastic yarn a bi-component/sheath-core yarn, as taught by Dua ‘018, in order to allow the degree of fusing of the yarn to be changed depending on the temperature applied, depending on the needs of the individual user.
Claims 1-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,433,371 in view of Dua (US 2010/0154256), herein Dua ‘256 and Dua (US 2004/0118018), herein Dua ‘018.
Regarding claims 1-4, 7-8, 10, 13-17, 19-20, and 22-26, the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent, except for the knitted component having a thermoplastic material that is fused, and a polymer sheet bonded to the knitted component. Dua ‘256 teaches an upper (30) for footwear, comprising: a knitted component (40) that integrally extends from a collar portion (45), across an overfoot portion, across medial and lateral side portions (14, 15), across an underfoot portion (wherein the edges extend at least partially underfoot as in Fig. 5A, or fully underfoot as in Fig. 8B), and to a toe portion (Fig. 1), the knitted component comprising at least one knit layer formed from at least one yarn, a thermoplastic material (paragraph 0043) that is fused (47), and a polymer sheet (35) that is bonded to a surface of the knitted component (paragraphs 0017, 0020-0023, 0029, 0043; Fig. 1-7C). It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the knitted component with a thermoplastic material that is fused, and a polymer sheet bonded to the knitted component, as taught by Dua ‘256, in order to provide improved stability and abrasion resistance with the fused material and polymer layer.
Dua ‘256 further teaches the limitations of claims 9, 18, 21 (see 35 USC 102 rejections below). It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the knitted component with as stretch yarn, textile cover component, and/or layered cover component, as taught by Dua ‘256, in order to provide improved fit, comfort, stability, and/or abrasion resistance to the knitted component.
Regarding claims 5, 6, 11, and 12, Dua ‘018 teaches that a thermoplastic yarn utilized in a footwear upper may be a bi-component yarn and/or a sheath-core yarn. The bicomponent yarn includes materials with two different melting temperatures, allowing the degree of fusing of the yarn to be changed depending on the temperature applied to the yarn (paragraphs 0047-0048; Fig. 2B). It would have been obvious to one of ordinary skill in the art at the time of the invention to make the thermoplastic yarn a bi-component/sheath-core yarn, as taught by Dua ‘018, in order to allow the degree of fusing of the yarn to be changed depending on the temperature applied, depending on the needs of the individual user.
Claims 1-4, 7-10, and 13-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of copending Application No. 19/229521 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 5, 6, 11, and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of copending Application No. 19/229521 in view of Dua (US 2004/0118018), herein Dua ‘018.
Dua ‘018 teaches that a thermoplastic yarn utilized in a footwear upper may be a bi-component yarn and/or a sheath-core yarn. The bicomponent yarn includes materials with two different melting temperatures, allowing the degree of fusing of the yarn to be changed depending on the temperature applied to the yarn (paragraphs 0047-0048; Fig. 2B). It would have been obvious to one of ordinary skill in the art at the time of the invention to make the thermoplastic yarn a bi-component/sheath-core yarn, as taught by Dua ‘018, in order to allow the degree of fusing of the yarn to be changed depending on the temperature applied, depending on the needs of the individual user.
This is a provisional nonstatutory double patenting rejection.
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 pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 1-4, 7-10, and 13-26 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Dua (US 2010/0154256), herein Dua ‘256.
Regarding claim 1, Dua ‘256 discloses an upper (30) for footwear, comprising: a knitted component (40) that integrally extends from a collar portion (45), across an overfoot portion, across medial and lateral side portions (14, 15), across an underfoot portion (wherein the edges extend at least partially underfoot as in Fig. 5A, or fully underfoot as in Fig. 8B), and to a toe portion (Fig. 1), the knitted component comprising at least one knit layer formed from at least one yarn, and a thermoplastic material (paragraph 0043) that is fused (47). (paragraphs 0017, 0020-0023, 0029, 0043; Fig. 1-7C)
Regarding claim 2, Dua ‘256 discloses that the at least one knit layer comprises a single knit layer (Fig. 5A).
Regarding claim 3, Dua ‘256 discloses that the at least one knit layer comprises multiple knit layers (such as at tubes 42 and collar 45; paragraphs 0029, 0035; Fig. 5B, 5D).
Regarding claim 4, Dua ‘256 discloses that the at least one yarn includes a yarn comprising the thermoplastic material (paragraph 0043).
Regarding claim 7, Dua ‘256 discloses that a polymer sheet (35) is bonded to a surface of the knitted component (paragraph 0045; Fig. 7E).
Regarding claim 8, Dua ‘256 discloses that the knitted component comprises a first knit layer and a second knit layer that transition into each other at an edge of the collar portion (Fig. 5D).
Regarding claim 9, Dua ‘256 discloses that a portion of the knitted component comprises a yarn that can stretch (paragraph 0023).
Regarding claim 10, Dua ‘256 discloses an article of footwear (10), comprising: an upper (30), comprising: a knitted component (40), comprising: a yarn comprising a thermoplastic material that is fused (47, paragraph 0043), wherein the knitted component forms a sock portion comprising a collar portion (45), an overfoot portion, an underfoot portion (wherein the edges extend at least partially underfoot as in Fig. 5A, or fully underfoot as in Fig. 8B), and a toe portion (Fig. 1), which are knitted together; and a sole structure (20) secured to the upper (paragraphs 0017, 0020-0023, 0029, 0043; Fig. 1-7C).
Regarding claim 13, Dua ‘256 discloses that the knitted component comprises a single knit layer (Fig. 5A).
Regarding claim 14, Dua ‘256 discloses that the knitted component comprises multiple knit layers (such as at tubes 42 and collar 45; paragraphs 0029, 0035; Fig. 5B, 5D).
Regarding claim 15, Dua ‘256 discloses that the knitted component includes different knit structures (paragraph 0022).
Regarding claim 16, Dua ‘256 discloses that the knitted component comprises a unitary knit construction from the collar portion to the toe portion (paragraph 0035).
Regarding claim 17, Dua ‘256 discloses a cover component (35) secured to the knitted component (paragraph 0045; Fig. 7E).
Regarding claim 19, Dua ‘256 discloses that the cover component comprises a polymer sheet (paragraph 0045).
Regarding claim 20, Dua ‘256 discloses that the polymer sheet is bonded to the knitted component (paragraph 0045).
Regarding claim 17, Dua ‘256 discloses a cover component (outer layer of tube 42, strand 43; which cover the inner knitted layer) secured to the knitted component (paragraph 0024-0026; Fig. 5B, 5C).
Regarding claim 18, Dua ‘256 discloses that the cover component comprises a textile (knitted material).
Regarding claim 21, Dua ‘256 discloses that the cover component comprises a layered structure formed of multiple materials (knitted material of tube and strand).
Regarding claim 22, Dua ‘256 discloses an article of footwear (10), comprising: an upper (30), comprising: a sock portion formed by a knitted component (40) that includes a collar portion (45), an overfoot portion, an underfoot portion (wherein the edges extend at least partially underfoot as in Fig. 5A, or fully underfoot as in Fig. 8B), and a toe portion (Fig. 1), which are knitted together, wherein the knitted component comprises at least one knit layer formed from at least one yarn (paragraph 0023), and a polymer sheet (35) that is bonded to a surface of the knitted component; and a sole structure (20) secured to the upper (paragraphs 0017, 0020-0023, 0029, 0043, 0045; Fig. 1-7E).
Regarding claim 23, Dua ‘256 discloses that the at least one yarn includes a yarn comprising a thermoplastic material that is fused (47; paragraph 0043; Fig. 7C).
Regarding claim 24, Dua ‘256 discloses that the at least one knit layer comprises a single knit layer (Fig. 5A).
Regarding claim 25, Dua ‘256 discloses that the at least one knit layer comprises multiple knit layers (such as at tubes 42 and collar 45; paragraphs 0029, 0035; Fig. 5B, 5D).
Regarding claim 26, Dua ‘256 discloses that a tongue portion (33) is secured to the knitted component (paragraph 0019; Fig. 1).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 5, 6, 11, and 12 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Dua ‘256, as applied to claims 1, 4, and 10, in view of Dua (US 2004/0118018), herein Dua ‘018.
Regarding claims 5, 6, 11, and 12, Dua ‘256 discloses that the yarn used in the knitted component may be a bi-component yarn and/or a sheath-core yarn (paragraph 0023), but does not explicitly disclose that the thermoplastic yarn is a bi-component yarn and/or a sheath-core yarn. Dua ‘018 teaches that a thermoplastic yarn utilized in a footwear upper may be a bi-component yarn and/or a sheath-core yarn. The bicomponent yarn includes materials with two different melting temperatures, allowing the degree of fusing of the yarn to be changed depending on the temperature applied to the yarn (paragraphs 0047-0048; Fig. 2B). It would have been obvious to one of ordinary skill in the art at the time of the invention to make the thermoplastic yarn of Dua ‘256 a bi-component/sheath-core yarn, as taught by Dua ‘018, in order to allow the degree of fusing of the yarn to be changed depending on the temperature applied, depending on the needs of the individual user.
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.
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/SHARON M PRANGE/Primary Examiner, Art Unit 3732