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 .
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 1-20 of U.S. Patent No. 11,549,206. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the application are broader than those of U.S. Patent No. 11,549,206. Independent claims 1, 12 and 20 are broader than claims of the patent at least given that they do not claim a first and second knit layer, a pocket, and a spacing element.
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 1-9, 11-13, 15-17 and 19-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Brunner (US 3,463,692).
Brunner teaches the textile component as claimed including at least one textile layer (11); an embroidery pattern (12) extending at least partially through the at least one textile layer; and a fused structure (yarn 14 fuses with 10, 11 and 13) that at least partially surrounds the embroidery pattern. Regarding claim 2, the fused structure comprises a thermoplastic polymer material. Regarding claim 3, wherein the fused structure comprises a thermoset polymer material. Regarding claim 4, the textile component is knitted (Column 3, paragraph 2). Regarding claim 5, the textile component is woven (Column 3, paragraph 2). Regarding claim 6, the fused structure is depressed into a surface (interior) of the textile component (Figure 8). Regarding claim 7, the at least one textile layer comprises a first textile layer (10) and a second textile layer (10), and wherein a pocket is formed between the first textile layer and the second textile layer as seen in figure 8. Regarding claim 8, a spacing element (14) is located in the pocket. Regarding claim 9, a cushioning component (10) wherein the embroidery pattern is formed on the cushioning component. Regarding claim 11, the textile component is incorporated into an article of apparel (garment). Regarding claim 12, Brunner teaches the textile component as claimed including at least one textile layer (11); an embroidery pattern (12) extending at least partially through the at least one textile layer, wherein the embroidery pattern comprises at least one embroidered strand (13, 14) comprising a thermoplastic polymer material that is fused. Regarding claim 13, a boundary extends around the embroidery pattern, the boundary comprising a fused structure (yarn 14 fuses with 10, 11 and 13). Regarding claim 15, the textile component is knitted (Column 3, paragraph 2). Regarding claim 16, the textile component is woven (Column 3, paragraph 2). Regarding claim 17, the embroidery pattern comprises one of multiple embroidery patterns incorporated into the textile component as seen at least in figure 1. Regarding claim 19, the textile component is incorporated into an article of apparel (garment). Regarding claim 20, Brunner teaches the article comprising a textile component as claimed including at least one textile layer (11); and an embroidery pattern (12) extending at least partially through the at least one textile layer, wherein the embroidery pattern comprises at least one embroidered strand (13, 14) that comprises a thermoplastic polymer material that is fused (14 fuses with 10, 11 and 13).
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 10, 14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Brunner.
Regarding claim 10 and 18, Brunner teaches the invention substantially as claimed as previously indicated in the rejection to claims 1 and 12. Although garments are noted in the Brunner’s disclosure, the garments are not expressly set forth as being footwear. 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 embroidery of Brunner on footwear for the purpose of adhering decorative embroidery to footwear without the need for sewing directly onto the footwear as indicated by Brunner at column 1, lines 40-43. Regarding claim 14, the embroidered strand of Brunner is not set forth as a bi-component yarn with a core and a sheath. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide choose from different yarn types including a bi-component yarn with a core and a sheath for the purpose of having multiple different polymers with different yarn properties within the embroidered structure.
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.
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
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