CTNF 19/248,077 CTNF 70650 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-33 AIA 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. 08-34 AIA Claim s 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-20 of U.S. Patent No. 11,572,642 . Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed limitations of U.S. Patent No. 11,572,642 fully encompass the claims 1-20 of the current application . Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-12-aia AIA (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. 07-15-03-aia AIA Claim s 1-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Manos-Gully (US 2018/0042333) . Manos-Gully teaches the upper for an article of footwear (Figures 1 and 2) as claimed including first area located on at least one of a lateral side and a medial side of the upper, wherein the first area comprises a plurality of first knit courses, and wherein at least a majority of the plurality of first knit courses are at least partially formed by a first yarn ([0040]); and a second area located adjacent to the first area of the upper and extending through at least part of a throat area of the upper, wherein the second area comprises a plurality of second knit courses, wherein at least a majority of the plurality of second knit courses are formed by a second yarn ([0040], [0044]), wherein a third yarn (136) extends from an edge between the first area and the second area and into the second area, and wherein the third yarn (136) forms one or more loop structures (138) in the throat area as seen at least in figure 2. Regarding claim 2, the third yarn extends from a biteline of the upper into the second area as seen in figure 2. Regarding claim 3, the third yarn extends over the edge and into the second area through a first knit course of the plurality of first knit courses and extends back over the edge into the first area through a second knit course of the plurality of first knit courses. Regarding claim 4, the first area extends from a biteline of the upper to the second area. Regarding claim 5, the third yarn comprises a high-tenacity yarn. Regarding claim 6, the first area is joined to the second area at the edge. Regarding claim 7, the one or more loop structures are exposed in the throat area and are configured to receive a lace as seen figure 1. Regarding claim 8, an article of footwear (100) comprising a sole structure (102) attached to the upper of claim 1. Regarding claim 9, Manos-Gully teaches the upper for an article of footwear, the upper comprising: a first area located on at least one of a lateral side and a medial side of the upper, wherein the first area comprises a plurality of first knit courses, wherein at least a majority of the plurality of first knit courses are at least partially formed by a first yarn, and wherein the first area extends to a second area; and the second area comprising a plurality of second knit courses, wherein at least a majority of the plurality of second knit courses are at least partially formed by a second yarn, and wherein the second area is adjacent to the first area and extends through at least a portion of a throat area of the upper; and a sole structure (102) secured to the upper. Regarding claim 10, a third yarn (136) extends through the second area. Regarding claim 11, the third yarn (136) forms one or more loop structures (138) in or adjacent to the throat area as seen in figure 1. Regarding claim 12, the third yarn interloops with a knit course of the plurality of second knit courses. Regarding claim 13, the third yarn includes one or more floating portions within the second area. Regarding claim 14, the third yarn comprises a high-tenacity yarn. Regarding claim 15, the second area comprises a knit structure that is different from the first area. Regarding claim 16, the first area and the second area are joined at an edge between the biteline and the throat area. Regarding claim 17, Manos-Gully teaches the upper for an article of footwear, the upper comprising: a first area located on at least one of a lateral side and a medial side of the upper, wherein the first area comprises a plurality of first knit courses, and wherein at least a majority of the plurality of first knit courses are at least partially formed by a first yarn; and a second area located adjacent to the first area of the upper, wherein the second area extends through at least one of a lateral side and a medial side of a throat area of the upper, wherein the second area comprises a plurality of second knit courses, and wherein at least a majority of the plurality of second knit courses are formed by a second yarn, wherein the second area is joined to the first area at an edge between the first area and the second area, wherein the edge is positioned between a biteline and a throat area of the upper, and wherein a third yarn at least partially extends from the edge and into the second area. Regarding claim 18, the third yarn (136) forms one or more loop (138) structures in or adjacent to the throat area. Regarding claim 19, the first area extends from the biteline to the edge. Regarding claim 20, the one or more loop structures (138) are exposed in the throat area and are configured to receive a lace as seen in figure 1. Regarding claim 21, the third yarn comprises a high-tenacity yarn and extends from the biteline to the throat area. Regarding claim 2, a sole structure (102) secured to the upper of claim 17 . Conclusion 07-96 AIA 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. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /DANNY WORRELL/Primary Examiner, Art Unit 3732 ldw Application/Control Number: 19/248,077 Page 2 Art Unit: 3732 Application/Control Number: 19/248,077 Page 3 Art Unit: 3732 Application/Control Number: 19/248,077 Page 4 Art Unit: 3732 Application/Control Number: 19/248,077 Page 5 Art Unit: 3732 Application/Control Number: 19/248,077 Page 6 Art Unit: 3732
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