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 Application 17/971309, the Examiner has considered the information provided in the parent application (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.
Election/Restrictions
Applicant’s election without traverse of Species 4 (Fig. 9) in the reply filed on 03/06/2026 is acknowledged.
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 1-2, 5-11, 13-18, 20-22, and 23-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 12,396,512. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent.
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, 5-7, 10, 11, 13, 14, 18, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Podhajny (US 2014/0245633).
Regarding claim 1, Podhajny discloses an article of footwear, comprising: an upper (120), comprising: a knitted component (116), comprising: a plurality of radially-extending courses that extend from a common portion (151) of the upper to an outer perimeter (140) of the upper in at least a forefoot region of the upper (paragraph 0078), wherein the common portion is a throat region, and wherein the plurality of radially-extending courses are arranged into a plurality of wedge-shaped portions (193, 195; Fig. 5); and a sole structure (110) secured to the upper (paragraphs 0048, 0055-0058, 0076-0078, 0084; Fig. 1, 4, 5).
Regarding claim 2, Podhajny discloses that the knitted component comprises at least one inlaid tensile element (158; paragraph 0057, Fig. 6).
Regarding claim 5, Podhajny discloses that at least a portion of the plurality of radially-extending courses are positioned on an exterior-facing surface of the upper (Fig. 1).
Regarding claim 6, Podhajny discloses that a spacing between the plurality of radially-extending courses at the common portion is smaller than a spacing between the plurality of radially-extending courses at the outer perimeter (wherein the courses form wedge shapes; Fig. 5).
Regarding claim 7, Podhajny discloses that the knitted component comprises a fusible yarn that is fused (paragraphs 0067-0068).
Regarding claim 10, Podhajny discloses an upper (120) for an article of footwear, the upper comprising: a knitted component (116), comprising: a plurality of radially-extending courses that extend from a common portion (151) of the upper to an outer perimeter (140) of the upper in at least a forefoot region of the upper (paragraph 0078), wherein the common portion is a throat region, and wherein the plurality of radially-extending courses are arranged into a plurality of wedge-shaped portions (193, 195; Fig. 5). (paragraphs 0048, 0055-0058, 0076-0078, 0084; Fig. 1, 4, 5)
Regarding claim 11, Podhajny discloses that the knitted component comprises at least one inlaid tensile element (158; paragraph 0057; Fig. 6).
Regarding claim 13, Podhajny discloses that a spacing between the plurality of radially-extending courses at the common portion is smaller than a spacing between the plurality of radially-extending courses at the outer perimeter (wherein the courses form wedge shapes; Fig. 5).
Regarding claim 14, Podhajny discloses that the knitted component comprises a fusible yarn that is fused (paragraphs 0067-0068).
Regarding claim 18, Podhajny discloses an article of footwear, comprising: an upper (120), comprising: a knitted component (116), comprising: a plurality of knitted courses that extend radially-outward from a throat region of the upper to an outer perimeter (140) of the upper in at least a forefoot region of the upper, the plurality of knitted courses being integrally formed, and wherein a spacing between the plurality of knitted courses increases towards the outer perimeter of the upper (wherein the courses form wedge shapes; Fig. 5); and a sole structure (110) secured to the upper (paragraphs 0048, 0055-0058, 0076-0078, 0084; Fig. 1, 4, 5).
Regarding claim 20, Podhajny discloses that at least one yarn of the knitted component is a fusible yarn that comprises a fusible material that has been thermoformed to fuse together one or more yarns of the knitted component (paragraphs 0067-0068).
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) 3, 12, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Podhajny, as applied to claims 1, 2, 10, 11, and 18, in view of Dojan (US 9,713,363).
Regarding claims 3, 12, and 19, Podhajny discloses an inlaid tensile element (158), but does not disclose that the tensile element is inlaid along the plurality of radially extending courses. Dojan teaches that a tensile element (41) may be located along the forefoot region, such that a plurality of tensile segments extend radially outward from a common portion in the throat region to an outer perimeter. The tensile element resists stretch in the forefoot region, and distribute forces from movement of the foot over a relatively large area of the upper (column 5, lines 10-64; Fig. 1, 12C). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide radially extending tensile segments in the forefoot region (and therefore along the radially extending courses), in order to resist stretch in the forefoot region, and distribute forces from movement of the foot over a relatively large area of the upper.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Podhajny, as applied to claim 1, in view of Meir (US 2016/0029736).
Regarding claim 4, Podhajny does not disclose that each wedge-shaped portion comprises a combination of longer knit courses and shorter knit courses. Meir teaches an upper for an article of footwear formed of a knitted component. The knitted component includes wedge-shaped portions having radially extending courses. The wedge-shaped portions comprise a combination of longer knit courses and shorter knit courses (paragraph 0084). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide longer and shorter knit portions, as taught by Meir, to the knitted component of Podhajny in order to form wedge shaped portions at the forefoot region.
Claim(s) 8, 9, 15-17, 21, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Podhajny, as applied to claim 1, 7, 10, 14, 18, and 20, in view of Dua (US 2004/0118018).
Regarding claims 8, 9, 15, 16, and 22, Podhajny does not discloses that the fusible yarn comprises a thermoplastic elastomer. Dua teaches that a fusible yarn within a knitted footwear upper component may be a thermoplastic elastomer, such as thermoplastic polyurethane (paragraphs 0046, 0048). 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 fusible yarn of a thermoplastic polyurethane in order to use a material well known for use in shoe uppers which is thermoplastic and may be fused. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 22, Dua further teaches that the fusible yarn may comprise a core and a sheath, the sheath comprising the thermoplastic elastomer fusible material, allowing for variable degrees of fusing (paragraph 0047-0048; Fig. 2B). 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 fusible yarn with a core and sheath, as taught by Dua, in order to allow for variable degrees of fusing.
Regarding claims 17 and 21, Podhajny discloses that the thermoplastic elastomer is fused on an outer-facing surface of the knitted component, but does not explicitly disclose that the thermoplastic elastomer that is fused has a higher coefficient of friction than a remainder of the outer-facing surface of the knitted component. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a higher coefficient of friction at the fusible material, due to the change in texture of the thermoplastic elastomer after it is melted and set in a new, stiffer configuration.
Claim(s) 23-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Podhajny and Dojan, as applied to claims 3, 12, and 19, further in view of Aceves Tinajero et al. (US 2019/0223541), herein Aceves.
Regarding claims 23 and 26, Podhajny and Dojan teach that the knitted component comprises at least one tensile element extending through at least one radially-extending course of the plurality of radially-extending courses.
The combination of Podhajny and Dojan does not disclose a sequence of knit stitches and float stitches, wherein the sequence is repeated along a length of the at least one radially-extending course. Aceves teaches a knitted component forming the upper of an article of footwear. The knitted component includes a tensile element (22) extending through at least one course of the knitted component, the tensile component comprising a sequence of knit stitches (34, 36) and float stitches (32), wherein the sequence is repeated along a length of the at least one course. The knit stitches secure the tensile element within the within the knitted component, preventing translation in the course-wise direction (paragraphs 0021-0026; Fig. 2, 6). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to secure the tensile element of Podhajny and Dojan with a sequence of knit stitches and float stitches, as taught by Aceves, in order to secure the tensile element within the within the knitted component, preventing translation in the course-wise direction.
Regarding claims 24 and 27, Aceves teaches that the sequence of knit stitches and float stitches comprises one knit stitch and a float stitch extending across a number of wales (paragraphs 0025-0026, 0032; Fig. 2).
Regarding claims 25 and 28, Aceves teaches that the number of wales is within a range within 3 to 8 (such as 4: paragraph 0032; Fig. 2).
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
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