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 1-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-15 of U.S. Patent No. 9,078,488. Although the claims at issue are not identical, they are not patentably distinct from each other because claims of the current application are broader than those of US 9,078,488.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6, 8-9 and 20-28 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Dua et al. (US 2012/0318026).
Dua teaches the footwear (10) as claimed including an upper (30), comprising: a knitted component (40), comprising: a plurality of non-planar knit structures (42), and a plurality of base portions (figure 5C, portions between non-planar knit structures 42) interposed between the plurality of non-planar knit structures, wherein each base portion is elastic (knitted structures are inherently elastic give their knit-loop structure) and are capable of shifting from an unstretched configuration to a stretched configuration in response to a stretching force; and a sole structure (20) attached to the upper. Regarding claim 2, each non-planar knit structure is tubular. Regarding claim 3, non-planar knit structure is formed from co- extensive layers of the knitted component that are separated to form a tubular shape as seen at least in figure 5C. Regarding claim 4, the knitted component (40) extends continuously across an instep area between a lateral side of the upper and a medial side of the upper. Regarding claim 5, each non-planar knit structure (42) comprises an elongated shape oriented vertically and towards a collar of the upper as seen at least in the embodiment of figure 7F. Regarding claim 6, inherently for each base portion, in a unstretched configuration, a surface of the base portion would obscured be adjacent non-planar knit structures, and wherein, in the stretched configuration, the surface of the base portion would be exposed between the adjacent non-planar knit structures. Regarding claim 8, a polymer sheet (35) is bonded to the upper. Regarding claim 9, a polymer sheet (35) is applied to a surface of the knitted component with an adhesive (paragraph [0042], lines 8-10). Concerning independent claim 20, Dua teaches the article of footwear (10) as claimed including an upper (30), comprising: a knitted component (40), comprising: a plurality of tubular rib structures (42), and a plurality of base portions (figure 5C, portions between non-planar knit structures 42) interposed between the plurality of tubular rib structures (42), wherein each base portion is elastic (knitted structures are inherently elastic give their knit-loop structure), and are capable of shifting from an unstretched configuration to a stretched configuration in response to a stretching force; and a sole structure (20) attached to the upper. Regarding claim 21, the plurality of tubular rib structures are oriented to extend towards a collar area a seen at least in the embodiment of figure 7F. Regarding claim 22, wherein at least a portion of the plurality of tubular rib structures are located in a throat area. Regarding claim 23, the knitted component extends continuously across an instep area between a lateral side of the upper and a medial side of the upper. Regarding claim 24, a polymer sheet (35) is bonded to the upper. Regarding claim 25, a polymer sheet (35) is applied to a surface of the knitted component with an adhesive paragraph ([0042], lines 8-10). Regarding claim 26, the knitted component integrally extends from an instep area to a collar area. Regarding claim 27, a tensile element (43) is inlaid through at least one of the plurality of tubular rib structures (42). Regarding claim 28, the knitted component comprises multiple layers that are overlapping as seen at least the embodiment of figures 5A and 5B.
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.
Claims 7 is rejected under 35 U.S.C. 103 as being unpatentable over Dua.
Dua teaches the invention substantially as claimed as previously indicated. However, Dua does not expressly teach the surface comprises a different color than the adjacent non-planar knit structures. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the surface as a different color than the adjacent non-planar knit structures for the purpose of optimizing the aesthetic appeal of the footwear.
Claims 10-19 are rejected under 35 U.S.C. 103 as being unpatentable over Dua in view of Ballery (French patent document 2571387).
Dua teaches the article of footwear (10) substantially as claimed including an upper (30), comprising: a knitted component (40),a plurality of tubular knit structures (42), and a plurality of base portions (figure 5C, portions between non-planar knit structures 42) interposed between the plurality of tubular knit structures, wherein each base portion is elastic (knitted structures are inherently elastic give their knit-loop structure, and can shift from an unstretched configuration to a stretched configuration in response to a stretching force; and a sole structure (20) attached to the upper. However the tubular knit structure Dua is not explicitly set forth as being lenticular. Ballery teaches tubular knitted (35, 36, 37) lenticular structures which show different colors when viewed from different angles (page 2, paragraph 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide tubular structures of Dua as lenticular tubular structures as shown by Ballery for the purpose of providing of a shoe upper having a decorative outer surface with contrasting effects and different appearance according to the angle of observation as noted by Ballery at page 1, paragraph 3. Regarding claim 11, each lenticular knit structure comprises a tube. Regarding claim 12, the tube is formed by co-extensive and overlapping knit layers of the knitted component. Regarding claim 13, each lenticular knit structure comprises a first side comprising a first color and a second side comprising a second color that is different than the first color. Regarding claim 14, each lenticular knit structure comprises a first circumferential portion comprising a first color and a second circumferential portion comprising a second color that is different than the first color. Regarding claim 15, for each base portion, in the unstretched configuration, a surface of the base portion is obscured by adjacent lenticular knit structures, and wherein, in the stretched configuration, the surface of the base portion is exposed between the adjacent lenticular knit structures. Regarding claim 16, the surface comprises a different color than the adjacent lenticular knit structures. Regarding claim 17, each base portion is formed with at least two yarns that are different colors. Regarding claim 18, a polymer sheet (35) is bonded to the upper. Regarding claim 19, a polymer sheet (35) is applied to a surface of the knitted component with an adhesive ([0042], lines 8-10).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Applicant is reminded that all business with the Patent and Trademark Office should be transacted in writing. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt. 37 C.F.R. 1.2
Further it is noted that a complete response must satisfy the requirements of 37 C.F.R. 1.111, including:
-The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.
-A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
-Moreover, The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 2163.06, MPEP 714.02. The "disclosure" includes the claims, the specification and the drawings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANNY WORRELL whose telephone number is (571)272-4997. The examiner can normally be reached on M, W-F.
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.
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/DANNY WORRELL/Primary Examiner, Art Unit 3732
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