Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12383028. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim footwear having a knitted upper with medial, lateral, and overfoot panels, a plurality of lace tunnel in the overfoot panel and a sole component extending on the medial and lateral panels including a plurality of lace openings.
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 1-14, 30, and 33 are 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.
In claim 1 the phrases “recycled from another knitted upper that no longer exists in its original form” and “thermoplastic polymer material component recycled from another midsole component that no longer exists in its original form” and in claim 33 the phrase “recyclable material” are confusing, vague, and indefinite because they rely on unclaimed and unknown elements and it is not clear what structural limitations applicant intends to encompass with such language. It is noted that these claims are article claims and it is not clear what structural limitations would be encompassed by these phrases, i.e. when looking at a particular article of footwear one of ordinary skill would not be able to know if the yarns/thermoplastic material was from a “another knitted upper that no longer exists in its original form” or “another midsole component that no longer exists in its original form”. These phrases also appear to be product by process limitations and it is noted that a comparison of the recited process with the prior art processes does NOT serve to resolve the issue concerning patentability of the product. In re Fessman, 489 F2d 742, 180 U.S.P.Q. 324 (CCPA 1974). Whether a product is patentable depends on whether it is known in the art or it is obvious, and is not governed by whether the process by which it is made is patentable. In re Klug, 333 F2d 905, 142 U.S.P.Q. 161 (CCPA 1964). In an ex parte case, product-by-process claims are not construed as being limited to the product formed by the specific process recited. In re Hirao et al., 535 F2d 67, 190 U.S.P.Q. 15, see footnote 3 (CCPA 1976).
In reference to claim 9 the phrase “the first knitted upper component removed from the first article of footwear” is confusing, vague, and indefinite because it is not clear what structural limitations applicant intends to encompass with such language. This phrase appears to recite a method limitation in an article claim which is confusing.
In reference to claim 30, the phrase “protrusions of the midsole component extend through…” is confusing, vague, and indefinite because there are no previously claimed midsole component protrusions.
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) 1-5, 9-16, 18, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson (2016/0324264) in view of Durrell (2020/0046078) and Gross (5367791).
Johnson shows An article of footwear comprising:
a first upper (12) component comprising a set of yarns recycled from
another knitted upper at least partially defining an interior chamber configured to receive a
wearer's foot and having a lower portion with strips defining a first plurality
of openings (42);
a first midsole component (16) comprising a first thermoplastic polymer material
component (see paragraph [0033]), the first midsole component received in the interior chamber of the
first upper component and having a plurality of protrusions (48) extending through the first plurality of openings in the first knitted upper component;
an exterior sole component (14) positioned below the first upper component (12) and the first midsole component (16) substantially as claimed except for the upper being knitted and the exterior sole component at least partially wrapping around the medial and lateral upper. Durrell teaches knitting uppers (see paragraph [0019] and throughout the specification). It would have been obvious to use a knitted upper as taught by Durrell for the upper materials in the footwear of Johnson to provide a breathable and snug upper. Gross teaches attaching an upper (10) to an exterior sole (14) by the exterior sole wrapping around the upper (see figures 1-4). It would have been obvious to attach the exterior sole to the upper by wrapping the sole around the upper as taught by Gross in the footwear of Johnson as modified by Durrell to provide a more secure and durable attachment between the upper and the exterior sole.
In reference to the method of obtaining the materials, i.e. “recycled from another knitted upper that no longer exists in its original form” and “thermoplastic polymer material component recycled from another midsole component that no longer exists in its original form” to form the upper and midsoles a comparison of the recited process with the prior art processes does NOT serve to resolve the issue concerning patentability of the product. In re Fessman, 489 F2d 742, 180 U.S.P.Q. 324 (CCPA 1974). Whether a product is patentable depends on whether it is known in the art or it is obvious, and is not governed by whether the process by which it is made is patentable. In re Klug, 333 F2d 905, 142 U.S.P.Q. 161 (CCPA 1964). In an ex parte case, product-by-process claims are not construed as being limited to the product formed by the specific process recited. In re Hirao et al., 535 F2d 67, 190 U.S.P.Q. 15, see footnote 3 (CCPA 1976). Also, it would have been obvious to one having ordinary skill in the art at the time the invention was made to use recycled materials, since 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.
In reference to claim 2, see figure 1 of Johnson.
In reference to claims 3 and 4, see Johnson paragraph [0033].
In reference to claim 5 see Johnson paragraph [0025].
In reference to claim 9, Johnson shows A sustainable system for an article of footwear, comprising:
a first article of footwear comprising:
a first upper (12) component at least partially defining an interior
chamber configured to receive a wearer's foot, the first upper
component comprising a lower portion configured to extend under the
wearer's foot and comprising strips defining a plurality of openings (42);
a first midsole component (16) received in the interior chamber of the
first upper component and comprising a first plurality of protrusions (48)
extending through the plurality of openings in the first upper component; and
a first exterior sole component (14) positioned below the first
upper component (12) and the first midsole component (16); and
a second article of footwear (see paragraph [0035]), comprising:
the first upper component (12, see paragraph [0035]) removed from the first article of
footwear;
a second (see paragraph [0035]) midsole component (16) received in the interior chamber of the
first upper component and having a second plurality of protrusions (48) extending through the plurality of openings in the first knitted upper component; and
a second (see paragraph [0035]) exterior sole component (14) positioned below the first upper component and the second midsole component substantially as claimed except for the upper being knitted and the exterior sole component at least partially wrapping around the medial and lateral upper. Durrell teaches knitting uppers (see paragraph [0019] and throughout the specification). It would have been obvious to use a knitted upper as taught by Durrell for the upper materials in the footwear of Johnson to provide a breathable and snug upper. Gross teaches attaching an upper (10) to an exterior sole (14) by the exterior sole wrapping around the upper (see figures 1-4). It would have been obvious to attach the exterior sole to the upper by wrapping the sole around the upper as taught by Gross in the footwear of Johnson as modified by Durrell to provide a more secure and durable attachment between the upper and the exterior sole.
In reference to claims 10 and 11, Johnson teaches TPU materials (see paragraph [0033]) and in reference to the phrase “recycled”, a comparison of the recited process with the prior art processes does NOT serve to resolve the issue concerning patentability of the product. In re Fessman, 489 F2d 742, 180 U.S.P.Q. 324 (CCPA 1974). Whether a product is patentable depends on whether it is known in the art or it is obvious, and is not governed by whether the process by which it is made is patentable. In re Klug, 333 F2d 905, 142 U.S.P.Q. 161 (CCPA 1964). In an ex parte case, product-by-process claims are not construed as being limited to the product formed by the specific process recited. In re Hirao et al., 535 F2d 67, 190 U.S.P.Q. 15, see footnote 3 (CCPA 1976). Also, it would have been obvious to one having ordinary skill in the art at the time the invention was made to use recycled materials, since 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.
In reference to claim 12, Johnson shows openings (42) and protrusions (48) as claimed.
In reference to claim 13, the exterior sole (14) of Johnson extends under a toe region as shown.
In reference to claim 14, see Johnson paragraph [0025].
In reference to claim 15 Johnson shows An array of articles of footwear (see paragraph [0035]), each article of footwear in the array comprising:
an upper component (12) comprising an underfoot portion defining a
plurality of openings (42), the plurality of openings comprising: a first opening and a
second opening (see figure 1) separated from the first opening by a strip (40) of upper component
material, wherein the upper component at least partially defines an interior
chamber configured to receive a wearer's foot;
a midsole component (16) received in the interior chamber of the upper
component, the midsole component having a plurality of protrusions (48) including a
first protrusion extending through the first opening and a second protrusion
extending through the second opening (see figure 1), wherein the strip (40) of upper component
material covers a portion of the midsole component located in a recess between the
first protrusion and the second protrusion (see figure 6), and
an exterior sole component (14) positioned below the upper component
and the midsole component (16) substantially as claimed except for the upper being knitted and the exterior sole component at least partially wrapping around the medial and lateral upper. Durrell teaches knitting uppers (see paragraph [0019] and throughout the specification). It would have been obvious to use a knitted upper as taught by Durrell for the upper materials in the footwear of Johnson to provide a breathable and snug upper. Gross teaches attaching an upper (10) to an exterior sole (14) by the exterior sole wrapping around the upper (see figures 1-4). It would have been obvious to attach the exterior sole to the upper by wrapping the sole around the upper as taught by Gross in the footwear of Johnson as modified by Durrell to provide a more secure and durable attachment between the upper and the exterior sole. In reference to the width of the strips, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make deviation of the width of the strips to be less than 1.2mm since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
In reference to claim 16, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make deviation of the upper panels to be as claimed, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
In reference to claim 18, see Johnson paragraph [0025].
In reference to claim 19, see Johnson figures 1-4.
Claim(s) 6-8, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claims 1-5, 9-16, 18, and 19 above, and further in view of Little (2013/0269212).
Johnson as modified above shows footwear substantially as claimed except for the exterior sole having medial and lateral side portions with lace engaging components/apertures. Little teaches providing medial and lateral sole extensions (1402) or (1603) which are made from polymeric materials (see paragraphs [0131] and [0133]) with lace openings (see figures 14 and 16). It would have been obvious to provide the extensions as taught by Little in figures 14 and 16 in the footwear of Johnson as modified above to provide increased securement of the footwear on a foot.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claims 1-5, 9-16, 18, and 19 above, and further in view of Liles (9192204).
Johnson as modified above shows footwear substantially as claimed except for the upper having lace tunnels. Liles teaches providing tunnels (see figure 7) for laces (132). It would have been obvious to provide tunnels as taught by Liles in the footwear of Johnson as modified above to allow laces to easily be incorporated.
Claim(s) 21-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claims 17 above, and further in view of Little (2013/0269212).
Johnson as modified above shows footwear substantially as claimed except for the exterior sole having medial and lateral side portions with lace engaging components/apertures. Little teaches providing medial and lateral sole extensions (1402) or (1603) which are made from polymeric materials (see paragraphs [0131] and [0133]) with lace openings (see figures 14 and 16). It would have been obvious to provide the extensions as taught by Little in figures 14 and 16 in the footwear of Johnson as modified above to provide increased securement of the footwear on a foot.
In reference to claim 22, Liles teaches element 132 which is considered to be a lace inasmuch as applicant has defined such.
In reference to claim 23, see paragraph 7 above.
In reference to claim 24, see Johnson paragraph [0025].
In reference to claims 25 and 26, Liles teaches and shows all portions of the upper as integrally knit.
Claim(s) 21, 22, 25, and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liles (9192204)in view of Little (2013/0269212).
Liles shows An article of footwear, comprising:
a knitted upper component (130) comprising:
a medial knit panel forming at least part of a medial side of the
knitted upper component (see figure 7);
a lateral knit panel forming at least part of a lateral side of the knitted upper component (see figure 7);
an overfoot knit panel positioned between the medial knit panel and the lateral knit panel (see figure 7); and
a plurality of lace tunnels (162) positioned on the overfoot knit panel, the medial knit panel, and the lateral knit panel (see figure 7); and
a sole component (110 or similar) substantially as claimed except for the sole component that extends onto the medial side and onto the lateral side, and that includes a plurality of lace openings.
Little teaches providing medial and lateral sole extensions (1402) or (1603) which are made from polymeric materials (see paragraphs [0131] and [0133]) with lace openings (see figures 14 and 16). It would have been obvious to provide the extensions as taught by Little in figures 14 and 16 in the footwear of Liles to provide increased securement of the footwear on a foot.
In reference to claim 22, element 132 is considered to be a lace inasmuch as applicant has defined such.
In reference to claims 25 and 26, Liles teaches and shows all portions of the upper as integrally knit.
Claim(s) 27, 30, and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claims 1-5, 9-16, 18, and 19 above, and further in view of Rich (7900380).
Johnson as modified above shows footwear substantially as claimed except for a removable insole component. Rich teaches providing a removable insole component (12) positioned on top of a midsole component (14) the insole component comprising a top surface configured to face a wearer's foot when the article of footwear is worn, and a bottom surface facing the midsole component, the insole component comprising one or more insole engagement protrusions (26) extending downward from the bottom surface of the insole component to engage with one or more openings (see column 3 lines 37-42 and shown in figure 2) in the midsole component. It would have been obvious to provide a top insole component which is removable with removable connecting means as taught by Rich in the footwear of Johnson as modified above to provide customization of the foot contacting surface.
In reference to claim 31, single jersey knit and double jersey knit are well known and conventional knit types in the art of footwear and it would have been obvious to use single and double jersey knit types in the footwear of Johnson as modified above to provide desired looks, styles, stretch, etc..
Claim(s) 27, and 31-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Little (2013/0269212) in view of Rich (7900380).
Little shows An article of footwear, comprising:
a knitted (see paragraph [0132]) upper (1502) component comprising:
a medial side (see figures 15A-B);
a lateral side (see figures 15A-B);
a toe region (see figures 15A-B); and
an overfoot region between the medial side and the lateral side and
extending from the toe region to an ankle opening (see figures 15A-B);
a midsole component (1503) positioned within an interior void formed by the
knitted upper component; substantially as claimed except for a removable insole component. Rich teaches providing a removable insole component (12) positioned on top of a midsole component (14) the insole component comprising a top surface configured to face a wearer's foot when the article of
footwear is worn, and a bottom surface facing the midsole component, the insole component comprising one or more insole engagement protrusions (26) extending downward from the bottom surface of the insole component to engage with one or more openings (see column 3 lines 37-42 and shown in figure 2) in the midsole component. It would have been obvious to provide a top insole component which is removable with removable connecting means as taught by Rich in the footwear of Little to provide customization of the foot contacting surface.
In reference to claim 31, single jersey knit and double jersey knit are well known and conventional knit types in the art of footwear and it would have been obvious to use single and double jersey knit types in the footwear of Little as modified above to provide desired looks, styles, stretch, etc..
In reference to claim 32, Little teaches providing medial and lateral sole extensions (1402) or (1603) which are made from polymeric materials (see paragraphs [0131] and [0133]) with lace openings (see figures 14 and 16). It would have been obvious to provide the extensions as taught by Little in figures 14 and 16 in the footwear of Little as shown in figures 15A-B modified above to provide increased securement of the footwear on a foot.
In reference to claim 33, in reference to the phrase “recyclable”, a comparison of the recited process with the prior art processes does NOT serve to resolve the issue concerning patentability of the product. In re Fessman, 489 F2d 742, 180 U.S.P.Q. 324 (CCPA 1974). Whether a product is patentable depends on whether it is known in the art or it is obvious, and is not governed by whether the process by which it is made is patentable. In re Klug, 333 F2d 905, 142 U.S.P.Q. 161 (CCPA 1964). In an ex parte case, product-by-process claims are not construed as being limited to the product formed by the specific process recited. In re Hirao et al., 535 F2d 67, 190 U.S.P.Q. 15, see footnote 3 (CCPA 1976). Also, it would have been obvious to one having ordinary skill in the art at the time the invention was made to use recycled materials, since 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.
Claim(s) 28 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claim 27 above, and further in view of Driskill (5289644).
Little as modified above shows footwear substantially as claimed except for pleats. Driskill teaches providing pleats (41) in the toe portion of footwear. It would have been obvious to provide pleats as taught by Driskill in the footwear of Little as modified above to contour the upper around the toe portion.
In reference to claim 29, see location shown in Driskill which would inherently be located as claimed when used in the footwear of Little as modified above.
The prior art cited and not relied upon by the Examiner for the above rejections are considered to be pertinent in that the references cited are considered to be the nearest prior art to the subject matter defined in the claims as required by MPEP707.05.
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/MARIE D BAYS/Primary Examiner, Art Unit 3732
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