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 17/228770 and 14/619586, the Examiner has considered the information provided in the parent applications (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.
Claim Objections
Claims 10 and 13 are objected to because of the following informalities:
Claim 10 recites the limitation “the region of the knitwear” in lines 1-2. It appears that this limitation should read --the section of the footwear-- to maintain consistent claim language (see claim 9, line 1).
Claim 13 depends from claim 11. It appears that claim 13 should depend from claim 12, to provide antecedent basis for all claim limitations.
Appropriate correction is required.
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 5, 6, 17, and 18 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.
Claims 5 and 17 recite the limitation “the knitwear essentially encloses a foot … completely” in lines 1-2. It is not clear how the knitwear can ‘essentially’ enclose a foot, while also ‘completely’ enclosing a foot. These appear to be contradictory, and therefore it is not clear the extent to which the knitwear must enclose a foot.
Claims 6 and 18 recite the limitation “the knitwear is formed to fulfil the function of laces” in line 1. This limitation is vague and indefinite, as it is not clear what structure is encompassed by such language. For purposes of examination it appears that laces may be omitted from the footwear (see paragraph 0060 of the specification).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 5, 6, 17 and 18 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Claims 5 and 17 recite the limitation "the knitwear essentially encloses a foot of a wearer" in line(s) 1. This limitation encompasses a part (a foot) of a human organism. The examiner suggests that the limitation should be amended to read --is configured to essentially enclose--, --is adapted to essentially enclose--, or similar language to clarify that no part of a human organism is positively recited.
Claims 6 and 18 depend from rejected claims 5 and 17.
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 1-25 of U.S. Patent No. 11,044,963 in view of Minami (US 7,562,471).
The claimed structure of the present invention may be derived from the claimed subject matter of the patent except for the upper being provided with a plurality of profile elements. Minami discloses a soccer shoe comprising: an upper (102) comprising knitwear (column 3, lines 60-61); wherein the upper is provided with profile elements (105), wherein the profile elements are adapted to increase the friction between a soccer ball and the soccer shoe. The profile elements enhance a wearer’s ability to contact a ball and control the spin of the ball (column 3, line 40-column 4, line 51; column 5, lines 46-61; Fig. 1-2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide profile elements, as taught by Minami, to the upper in order to enhance a wearer’s ability to contact a ball and control the spin of the ball.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,369,675 in view of Minami (US 7,562,471).
The claimed structure of the present invention may be derived from the claimed subject matter of the patent except for the upper being provided with a plurality of profile elements. Minami discloses a soccer shoe comprising: an upper (102) comprising knitwear (column 3, lines 60-61); wherein the upper is provided with profile elements (105), wherein the profile elements are adapted to increase the friction between a soccer ball and the soccer shoe. The profile elements enhance a wearer’s ability to contact a ball and control the spin of the ball (column 3, line 40-column 4, line 51; column 5, lines 46-61; Fig. 1-2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide profile elements, as taught by Minami, to the upper in order to enhance a wearer’s ability to contact a ball and control the spin of the ball.
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) 1, 2, 5, 8, 12-14, 17, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Minami (US 7,562,471).
Regarding claim 1, Minami discloses a soccer shoe comprising: an upper (102) comprising knitwear (column 3, lines 60-61); and a sole (101) comprising cleats (199), the sole connected to the knitwear; wherein the knitwear is capable of coupling the sole to a foot of a wearer of the soccer shoe while the soccer shoe is being worn (wherein the knitwear upper covers the top and sides of the foot such that it is capable of coupling the sole to a foot of a wearer), wherein the upper is provided with profile elements (105), wherein the profile elements are adapted to increase the friction between a soccer ball and the soccer shoe (column 3, line 40-column 4, line 51; Fig. 1-2).
Regarding claim 2, Minami discloses that the sole is a rigid sole (wherein the sole may be made of aluminum or steel; column 3, lines 41-44).
Regarding claim 5, Minami discloses that the knitwear essentially encloses a foot of a wearer of the soccer shoe completely (Fig. 1-2).
Regarding claim 8, Minami discloses that the profile elements are connected to the knitwear of the upper.
Regarding claim 12, Minami discloses a soccer shoe comprising: an upper (102) comprising knitwear (column 3, lines 60-61); and a sole (101) comprising cleats (199), the sole connected to the knitwear; wherein the knitwear is capable of coupling the sole to a foot of a wearer of the soccer shoe while the soccer shoe is being worn (wherein the knitwear upper covers the top and sides of the foot such that it is capable of coupling the sole to a foot of a wearer), wherein the knitwear comprises a plurality of sections (for example, a toe section and a heel section); wherein at least some of the sections comprise profile elements (105), wherein the profile elements are adapted to increase the friction between a soccer ball and the soccer shoe (column 5, line 40-column 6, line 51; Fig. 1-2).
Regarding claim 13, Minami discloses that a first section of the sections with profile elements includes a toe region (Fig. 1).
Regarding claim 14, Minami discloses that the profile elements of the first section are rubber (column 4, lines 50-51).
Regarding claim 17, Minami discloses that the knitwear essentially encloses a foot of a wearer of the soccer shoe completely (Fig. 1-2).
Regarding claim 20, Minami discloses that the profile elements of at least one of the sections are connected to the knitwear of the upper.
Claim(s) 1, 3-9, 12, 13, 15, and 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sokolowski et al. (US 7,637,032), herein Sokolowski.
Regarding claim 1, Sokolowski discloses a soccer shoe comprising: an upper (102) comprising knitwear (column 11, lines 45-63); and a sole (104) comprising cleats (104c), the sole connected to the knitwear; wherein the knitwear is capable of coupling the sole to a foot of a wearer of the soccer shoe while the soccer shoe is being worn (column 6, lines 57-67), wherein the upper is provided with profile elements (ribbed structure of regions 106, 108), wherein the profile elements are adapted to increase the friction (wherein the ribbed structure has a greater surface area, and therefore increased friction, than smooth regions of the upper) between a soccer ball and the soccer shoe (column 4, line 58-column 6, line 19; column 6, lines 57-67; column 8, lines 28-33; column 11, lines 45-63; Fig. 1A-1D).
Regarding claim 3, Sokolowski discloses that the knitwear comprises a plurality of weft knitted or warp knitted sections (column 12, lines 7-27).
Regarding claim 4, Sokolowski discloses that the knitwear is formed as one-piece knitwear (column 14, lines 22-26, 49-54).
Regarding claim 5, Sokolowski discloses that the knitwear essentially encloses a foot of a wearer of the soccer shoe completely (Fig. 1A-1C).
Regarding claim 6, Sokolowski discloses that the knitwear is formed to fulfil the function of laces (column 6, lines 57-67).
Regarding claim 7, Sokolowski discloses that the knitwear of the upper comprises a first and a second weft knitted or warp knitted layer (102a, 102b: column 10, lines 5-8).
Regarding claim 8, Sokolowski discloses that the profile elements are connected to the knitwear of the upper.
Regarding claim 9, Sokolowski discloses that a section of the knitwear is covered with a polymer layer on the knitwear (column 7, lines 31-45).
Regarding claim 12, Sokolowski discloses a soccer shoe comprising: an upper (102) comprising knitwear (column 11, lines 45-63); and a sole (104) comprising cleats (104c), the sole connected to the knitwear; wherein the knitwear is capable of coupling the sole to a foot of a wearer of the soccer shoe while the soccer shoe is being worn (column 6, lines 57-67), wherein the knitwear comprises a plurality of sections (106, 108, 110); wherein at least some of the sections comprise profile elements (ribbed structure), wherein the profile elements are adapted to increase the friction (wherein the ribbed structure has a greater surface area, and therefore increased friction, than smooth regions of the upper) between a soccer ball and the soccer shoe (column 4, line 58-column 6, line 19; column 6, lines 57-67; column 8, lines 28-33; column 11, lines 45-63; Fig. 1A-1D).
Regarding claim 13, Sokolowski discloses that a first section of the sections with profile elements includes a toe region (108).
Regarding claim 15, Sokolowski discloses that the first section of the knitwear comprises a polymer layer on the knitwear (column 7, lines 31-45).
Regarding claim 17, Sokolowski discloses that the knitwear essentially encloses a foot of a wearer of the soccer shoe completely (Fig. 1A-1C).
Regarding claim 18, Sokolowski discloses that the knitwear is formed to fulfil the function of laces (column 6, lines 57-67).
Regarding claim 19, Sokolowski discloses that the knitwear of the upper comprises a first and a second weft knitted or warp knitted layer (102a, 102b: column 10, lines 5-8).
Regarding claim 20, Sokolowski discloses that the profile elements of at least one of the sections are connected to the knitwear of the upper.
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) 10 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sokolowski, as applied to claims 1, 8, 9, 12, 13, and 15 in view of Dua (US 2012/0246973), herein Dua ‘973.
Regarding claim 9, Sokolowski does not explicitly disclose that the polymer layer is a polymer film. Dua ‘973 teaches a shoe having an upper (30) comprising knitwear (40). A section of the knitwear is covered with a polymer layer (50) in the form of a polymer film on a surface of the knitwear. The knitwear and polymer film combination imparts a relatively tight and glove-like fit to the upper, providing enhanced feel and control of a ball, and reinforces areas of the upper to inhibit stretch and enhance wear-resistance or abrasion-resistance (paragraphs 0021-0023, 0045; Fig. 1, 5A). 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 polymer film, as taught by Dua ‘973, to the knitwear of Sokolowski in order to impart a relatively tight and glove-like fit to the upper, providing enhanced feel and control of a ball, and reinforce areas of the upper to inhibit stretch and enhance wear-resistance or abrasion-resistance.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sokolowski, as applied to claim 1, in view of Dua (US 2004/0118018), herein Dua ‘018.
Regarding claim 11, Sokolowski does not explicitly disclose that the knitwear is capable of extending above an ankle of the foot while it is worn. Dua ‘018 teaches a shoe (200) having an upper (220) comprising knitwear. The knitwear is capable of extending above an ankle of the foot while it is worn (paragraphs 0054; Fig. 5). 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 knitwear of Sokolowski in the ankle area, as taught by Dua ‘018, in order to provide a shoe with improved ankle support, depending on the needs of the 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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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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/SHARON M PRANGE/Primary Examiner, Art Unit 3732