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 .
This is in response to Applicant’s amendment in which claims 1, 5, 6, 12, 13, 17, and 18 have been amended, claims 2, 9, and 10 have been canceled, claims 21-23 have been added, and claims 1, 3-8, and 11-23 are pending.
Terminal Disclaimer
The terminal disclaimer filed on 05/27/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent Numbers 11,044,963 and 12,369,675 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Objections
Claims 11, 15, and 16 objected to because of the following informalities:
Claim 11 depends from claim 9, which has been canceled. It appears that claim 11 should depend from claim 1.
Claim 15 recites the limitation “a polymer layer” in line 1, which has been previously recited in claim 12. The limitation should be amended to clarify that the same polymer layer is recited as from claim 12.
Claim 16 recites the limitation “a polymer film” in line 1, which has been previously recited in claim 12. The limitation should be amended to clarify that the same polymer film is recited as from claim 12.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 5, 6, 8, 12-18, and 20-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Minami (US 7,562,471) in view of Dua (US 2012/0246973), herein Dua ‘973.
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, and the sole is a rigid sole (wherein the sole may be made of aluminum or steel; column 3, lines 41-44); 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).
Minami does not disclose that a section of the knitwear is covered with a polymer layer. 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 Minami 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.
Regarding claim 5, Minami discloses that the knitwear is configured to enclose a foot of a wearer of the soccer shoe completely (Fig. 1-2).
Regarding claim 6, Minami discloses that the knitwear is configured to securely fit onto the foot of the wearer without the use of laces (wherein the knitwear covers the sides, top, and back of the foot such that it is capable of securely fitting onto a foot without the use of laces. Further, the shoe fastening system may include buckles or Velcro® in place of laces: column 3, lines 62-66).
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, and the sole is a rigid sole (wherein the sole may be made of aluminum or steel; column 3, lines 41-44); 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).
Minami does not disclose that a section of the knitwear is covered with a polymer layer. 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 Minami 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.
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 15, the combination of Minami and Dua ‘973 teaches that the first section comprises a polymer layer on the knitwear (Dua ‘973: Fig. 1).
Regarding claim 16, the combination of Minami and Dua ‘973 teaches that the polymer layer is a polymer film on a surface of the first section of the knitwear (Dua ‘973: Fig. 1).
Regarding claim 17, Minami discloses that the knitwear is configured to enclose a foot of a wearer of the soccer shoe completely (Fig. 1-2).
Regarding claim 18, Minami discloses that the knitwear is configured to securely fit onto the foot of the wearer without the use of laces (wherein the knitwear covers the sides, top, and back of the foot such that it is capable of securely fitting onto a foot without the use of laces. Further, the shoe fastening system may include buckles or Velcro® in place of laces: column 3, lines 62-66).
Regarding claim 20, Minami discloses that the profile elements of at least one of the sections are connected to the knitwear of the upper.
Regarding claims 21-23. Dua ‘973 does not disclose the specific thickness of the polymer layer, but appears to show a thickness of 0.01-5, 0.05-2, or 0.2-1 mm (Fig. 5A). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the thickness of the polymer layer 0.01-5, 0.05-2, or 0.2-1 mm, in order to provide a layer which has sufficient thickness to provide inhibited stretch and enhanced wear-resistance, but thin enough to allow for adequate flexibility of the upper. The claimed values are merely an optimum or workable range. 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.
Claim(s) 3, 4, 7, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Minami and Dua ‘973, as applied to claims 1 and 12, further in view of Sokolowski et al. (US 7,637,032), herein Sokolowski.
Regarding claims 3, 7, and 19, the combination of Minami and Dua ‘973 does not disclose that the knitwear comprises a plurality of weft knitted or warp knitted sections. Sokolowski teaches a shoe comprising: an upper (102) comprising knitwear (column 11, lines 45-63). The knitwear comprises a plurality of weft knitted or warp knitted sections (column 11, line 45-column 12, lines 27). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the knitwear of Minami of a plurality of weft knitted or warp knitted sections, as taught by Sokolowski, in order to use a well-known technique for knitting shoe uppers which allows for various stitch patterns to be utilized throughout the upper and which produces minimal waste.
Regarding claim 4, the combination of Minami and Dua ‘973 does not disclose that the knitwear is formed as one-piece knitwear. Sokolowski teaches a shoe comprising: an upper (102) comprising knitwear (column 11, lines 45-63). Sokolowski teaches that the knitwear is formed as one-piece knitwear, which eliminates potential areas of abrasion and discomfort, and eliminates aesthetically displeasing seam structures (column 14, lines 22-29, 49-54). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the knitwear of Minami as a one-piece knitwear in order to eliminate potential areas of abrasion and discomfort, and eliminate aesthetically displeasing seam structures.
Regarding claims 7 and 19, the combination of Minami and Dua ‘973 further does not disclose first and second layers. Sokolowski further teaches 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). 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 first and a second weft knitted or warp knitted layer, as taught by Sokolowski, in order to provide additional strength and comfort to the upper.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Minami and Dua ‘973, as applied to claims 1 and 12, further in view of Dua (US 2004/0118018), herein Dua ‘018.
Regarding claim 11, the combination Minami and Dua ‘973 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 Minami and Dua ‘973 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.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 3-8, and 11-23 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
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