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 .
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 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 present application, filed on or after July 7, 2025, of which claims 1-22 were presented, 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,378,707. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations regarding the “first knitted layer, second knitted layer, spacer strand, monofilament” in claims 1-22 are similar in scope to claims 1-20 of US Patent 12,378,707.
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)(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.
(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 14-17 and 19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Podhajny (US Patent 8,959,959).
Regarding claim 14, Podhajny discloses an article of footwear (invention as shown in Fig. 1-6 and 12), comprising:
an upper (120, Fig. 1-6), comprising:
a knitted component, (130, Fig. 6, 7, 12, and 14B) comprising:
a first knitted layer (Fig. 12, Col. 17, lines:33-37, examiner notes the “first layer” comprises filaments 1201 and 1203);
a second knitted layer (Fig. 12, Col. 17, lines: 37-41, examiner notes the “second layer” comprises filaments 1202 and 1204), wherein a cavity is formed between the first knitted layer and the second knitted layer (examiner notes the “cavity” is shown between the first and second layers, and occupying spacer strand, combination of 1205 and 1206); and
spacer strand (combination of 1205 and 1206) traversing the cavity between the first knitted layer and the second knitted layer (examiner notes as shown in Fig. 12), wherein the spacer strand is a high-tenacity yarn that imparts loft within the cavity (Col. 1-4 and 10-11, examiner notes the material of the yarns 1205 and 1206, is nylon, which is well known in the art to be a “high-tenacity yarn” and provide cushioning/loft, to a degree), and wherein the first knitted layer is formed from multiple monofilaments (1201 and 1203) that differ in at least one property (Col. 17, lines: 1-4, lines: 20-25, lines: 42-46, 1201 is “D1” and 1203 is “D2”, examiner notes both monofilaments have different thicknesses, which correlate to having different deniers); and
a sole structure (110) secured to the upper (120, Fig. 1-6).
Regarding claim 15, Podhajny discloses wherein the at least one property comprises denier (Col. 8, lines: 15-25, Col. 17, lines: 1-4, lines: 20-25, lines: 42-46, examiner notes it is well known in the art each monofilament have a “denier”).
Regarding claim 16, Podhajny discloses wherein the second knitted layer comprises a multi-filament yarn (combination of 1202 and 1204).
Regarding claim 17, Podhajny discloses the first knitted layer comprises a fusible yarn (combination of 1301 and 1302, Col. 19, lines: 29-35) that has been at least partially melted, flowed, and re-hardened (Col. 19, lines: 30-35, examiner notes one of ordinary skill in the art would recognize strand 1302 is “melted, flowed, and re-hardened” due to being a thermoplastic material that is extruded).
Regarding claim 19, Podhajny discloses wherein the knitted component comprises at least one inlaid strand (132, Fig. 6).
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 1-7, 10, 12-13, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Podhajny in view of Conley et al. “Conley” (US PG Pub. 2009/0123713).
Regarding claim 1, Podhajny discloses an article of footwear (invention as shown in Fig. 1-6 and 12), comprising:
an upper (120, Fig. 1-6), comprising:
a knitted component, (130, Fig. 6, 7, 12, and 14B) comprising:
a first knitted layer (Fig. 12, Col. 17, lines:33-37, examiner notes the “first layer” comprises filaments 1201 and 1203);
a second knitted layer (Fig. 12, Col. 17, lines: 37-41, examiner notes the “second layer” comprises filaments 1202 and 1204), wherein a cavity is formed between the first knitted layer and the second knitted layer (examiner notes the “cavity” is shown between the first and second layers, and occupying spacer strand, combination of 1205 and 1206); and
spacer strand (combination of 1205 and 1206) traversing the cavity between the first knitted layer and the second knitted layer (examiner notes as shown in Fig. 12), and wherein the first knitted layer is formed with at least one monofilament (1201 and 1203); and
a sole structure (110) secured to the upper (120, Fig. 1-6).
Podhajny does not disclose the spacer strand is at least 5 grams per denier.
However, Conley teaches yet multi-layered spacer fabric (Par. 0045) in the same filed of endeavor of breathable garments (Abstract), wherein Conley teaches fibers comprising at least 5 grams per denier (Par. 0039, lines 10-16)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the spacer strand as disclosed by Podhajny, by having at least 5 grams per denier as taught by Conley, enhance structural integrity and strength of the knitted component while in-use.
Regarding claim 2, Podhajny in view of Conley disclose wherein the at least one monofilament comprises a first monofilament (1201 of Podhajny) and a second monofilament (1203) that differ in at least one property (Col. 17, lines: 1-4, lines: 20-25, lines: 42-46, 1201 is “D1” and 1203 is “D2”, examiner notes both monofilaments have different thicknesses, which correlate to having different deniers).
Regarding claim 3, Podhajny in view of Conley disclose wherein the at least one property comprises denier (Col. 8, lines: 15-25, Col. 17, lines: 1-4, lines: 20-25, lines: 42-46 of Podhajny, examiner notes it is well known in the art each monofilament have a “denier”).
Regarding claim 4, Podhajny in view of Conley disclose the second knitted layer comprises a multi-filament yarn (combination of 1202 and 1204 of Podhajny).
Regarding claim 5, Podhajny in view of Conley disclose the first knitted layer comprises a fusible yarn (Col. 19, lines: 16-28 of Podhajny, examiner notes Fig. 13 shows a zoomed in view of what a portion of the filament is made up of, combination of 1301 and 1302, Col. 18, lines: 60-65, Col. 19, lines: 29-35) that has been at least partially melted, flowed, and re-hardened (Col. 19, lines: 30-35, examiner notes one of ordinary skill in the art would recognize strand 1302 is “melted, flowed, and re-hardened” due to being a thermoplastic material that is extruded).
Regarding claim 6, Podhajny in view of Conley disclose the fusible yarn comprises a thermoplastic material (Col. 19, lines: 30-35 of Podhajny).
Regarding claim 7, Podhajny in view of Conley disclose the fusible yarn comprises a thermoset material (Col. 19, lines: 33-35 of Podhajny).
Regarding claim 10, Podhajny in view of Conley disclose wherein the knitted component comprises at least one inlaid strand (132 of Podhajny, Fig. 6).
Regarding claim 12, Podhajny in view of Conley disclose the inlaid strand is reflective (Col. 10, lines: 45-48 of Podhajny, examiner notes inlaid strand 132 is made of “glass”, which is well known in the art as being “reflective”, to a degree).
Regarding claim 13, Podhajny in view of Conley disclose cushioning is incorporated into the cavity (Col. 1-4 and 10-11 of Podhajny, examiner notes the material of the yarns 1205 and 1206, which are incorporated into the cavity, is nylon, which is well known in the art to provide cushioning, to a degree).
Regarding claim 20, Podhajny discloses an article of footwear (invention as shown in Fig. 1-6 and 12), comprising:
an upper (120, Fig. 1-6), comprising:
a knitted component, (130, Fig. 6, 7, 12, and 14B) comprising:
a first knitted layer (Fig. 12, Col. 17, lines:33-37, examiner notes the “first layer” comprises filaments 1201 and 1203) formed with at least one yarn comprising a core (1301, Col. 19, lines: 16-28, examiner notes Fig. 13 shows a zoomed in view of what a portion of the filament is made up of) and
a sheath (1302), wherein the sheath comprises a fusible material (Col. 19, lines: 19-23);
a second knitted layer (Fig. 12, Col. 17, lines: 37-41, examiner notes the “second layer” comprises filaments 1202 and 1204),
wherein a cavity is formed between the first knitted layer and the second knitted layer (examiner notes the “cavity” is shown between the first and second layers, and occupying spacer strand, combination of 1205 and 1206); and
spacer strand (combination of 1205 and 1206) traversing the cavity between the first knitted layer and the second knitted layer (examiner notes as shown in Fig. 12); and
a sole structure (110) secured to the upper (120, Fig. 1-6).
Podhajny does not disclose the spacer strand is at least 5 grams per denier.
However, Conley teaches yet multi-layered spacer fabric (Par. 0045) in the same filed of endeavor of breathable garments (Abstract), wherein Conley teaches fibers comprising at least 5 grams per denier (Par. 0039, lines 10-16).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the spacer strand as disclosed by Podhajny, by having at least 5 grams per denier as taught by Conley, enhance structural integrity and strength of the knitted component while in-use.
Regarding claim 21, Podhajny in view of Conley disclose the fusible material comprises a thermoplastic material (Col. 19, lines: 30-35 of Podhajny).
Claims 8, 9, 11 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Podhajny in view of Conley, further in view of McFarland, II et al. “McFarland” (US Patent 11,346,025).
Regarding claim 8, Podhajny in view of Conley disclose the invention substantially as claimed above.
They do not explicitly disclose the at least one monofilament comprises a monofilament that is translucent or transparent such that the first knitted layer has at least partially transparency.
However, McFarland teaches yet another knitted component, wherein McFarland teaches a first yarn (168) is translucent which imparts the knitted component with at least partial transparency (Col. 7, lines: 35-40, examiner notes “translucent” is defined as “permitting light to pass through but diffusing it so that objects are not clearly visible” as defined by TheFreeDictionary. One of ordinary skill in the art would recognize “translucent” imparts an object with partial transparency, to a degree, since light passes through the object but diffuses the light in a way that makes the object not clearly visible).
It would have been obvious for a person of ordinary skill in the art at the time of the effective filing date of the claimed invention to use thermoplastic polyurethane that is semi transparent as taught by McFarland as the material for the monofilament of Podhajny in view of Conley. A person of ordinary skill would have been motivated to do so, with a reasonable expectation of success, because thermoplastic polyurethane that is semi transparent was a well-known material for knitted components as taught by McFarland, in order to enhance the aesthetic appeal of the knitted component.
Regarding claim 9, Podhajny in view of Conly disclose the invention substantially as claimed above.
They do not explicitly disclose the first knitted layer comprises one or more yarns that are semi-transparent.
However, McFarland teaches yet another knitted component, wherein McFarland teaches a first yarn (168) is translucent which imparts the knitted component with at least partial transparency (Col. 7, lines: 35-40, examiner notes “translucent” is defined as “permitting light to pass through but diffusing it so that objects are not clearly visible” as defined by TheFreeDictionary. One of ordinary skill in the art would recognize “translucent” imparts an object with partial transparency, to a degree, since light passes through the object but diffuses the light in a way that makes the object not clearly visible).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first layer as disclosed by Podhajny in view of Conley, by incorporating one or more yarns that are semi-transparent as taught by McFarland, in order to enhance the aesthetic appeal of the knitted component.
Regarding claim 11, Podhajny in view of Conley disclose the invention substantially as claimed above.
They do not explicitly disclose the inlaid strand is transparent.
However, McFarland teaches yet another knitted component, wherein McFarland teaches a first yarn (168) is transparent (Col. 7, lines: 35-40).
It would have been obvious for a person of ordinary skill in the art at the time of the effective filing date of the claimed invention to use thermoplastic polyurethane that is transparent as taught by McFarland as the material for the inlaid strand of Podhajny in view of Conley. A person of ordinary skill would have been motivated to do so, with a reasonable expectation of success, because thermoplastic polyurethane that is transparent was a well-known material for knitted components as taught by McFarland, in order to enhance the aesthetic appeal of the knitted component.
Regarding claim 22, Podhajny in view of Conley disclose the invention substantially as claimed above.
They do not explicitly disclose the fusible material is at least partially transparent.
However, McFarland teaches yet another knitted component, wherein McFarland teaches a first yarn (168) is translucent which imparts the knitted component with at least partial transparency (Col. 7, lines: 35-40, examiner notes “translucent” is defined as “permitting light to pass through but diffusing it so that objects are not clearly visible” as defined by TheFreeDictionary. One of ordinary skill in the art would recognize “translucent” imparts an object with partial transparency, to a degree, since light passes through the object but diffuses the light in a way that makes the object not clearly visible).
It would have been obvious for a person of ordinary skill in the art at the time of the effective filing date of the claimed invention to use thermoplastic polyurethane that is at least partially transparent as taught by McFarland as the material for the fusible material of Podhajny in view of Conley. A person of ordinary skill would have been motivated to do so, with a reasonable expectation of success, because thermoplastic polyurethane that at least partially transparent was a well-known material for knitted components as taught by McFarland, in order to enhance the aesthetic appeal of the knitted component.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Podhajny in view of McFarland.
Regarding claim 18, Podhajny discloses the invention substantially as claimed above.
Podhajny does not explicitly disclose the multiple monofilaments comprise a monofilament that is translucent or transparent such that the first knitted layer has at least partially transparency.
However, McFarland teaches yet another knitted component, wherein McFarland teaches a first yarn (168) is translucent which imparts the knitted component with at least partial transparency (Col. 7, lines: 35-40, examiner notes “translucent” is defined as “permitting light to pass through but diffusing it so that objects are not clearly visible” as defined by TheFreeDictionary. One of ordinary skill in the art would recognize “translucent” imparts an object with partial transparency, to a degree, since light passes through the object but diffuses the light in a way that makes the object not clearly visible).
It would have been obvious for a person of ordinary skill in the art at the time of the effective filing date of the claimed invention to use thermoplastic polyurethane that is semi transparent as taught by McFarland as the material for the multiple monofilaments of Podhajny. A person of ordinary skill would have been motivated to do so, with a reasonable expectation of success, because thermoplastic polyurethane that is semi transparent was a well-known material for knitted components as taught by McFarland, in order to enhance the aesthetic appeal of the knitted component.
Conclusion
The prior art made of record and not relied upon is considered pertinent (See
PTO-892) to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAKOTA MARIN whose telephone number is (571)272-3529. The examiner can normally be reached Mon.-Fri., 9:00AM-6:00PM.
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/DAKOTA MARIN/Examiner, Art Unit 3732
/ALISSA J TOMPKINS/Supervisory Patent Examiner, Art Unit 3732