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 .
Election/Restrictions
Applicant’s election of Species B (Figure 2) is acknowledged. Election was made without traverse in the reply filed April 6, 2026. No claims are withdrawn as a result of the Requirement for Restriction mailed February 10, 2026.
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.
Claims 1, 8, 11-16, 18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPN 4,540,311 Leach.
To claim 1, Leach discloses an engineered textile (see Figures 1a-5, reproduced below for convenience; col. 2, line 49 – col. 4, line 19), comprising:
a first set of wire windings (28) substantially parallel to one another and elongated in a first direction (see Figures 1a-1b and 3; col. 2, line 57 – col. 3, line 15; col. 3, lines 29-54; col. 4, lines 9-19; it is respectfully noted that the disclosure of the instant application indicates that wire windings may include “any suitable natural or synthetic material, including extruded elastic and inelastic polymers, braided fibers, combinations thereof, and the like;” see para. 0009 of the instant specification);
a second set of wire windings (30) substantially parallel to one another and elongated in a second direction distinct from the first direction, the second set of wire windings abutting the first set of wire windings in an unwoven, intercrossed pattern (see Figures 1a-1b and 3; col. 2, line 57 – col. 3, line 15; col. 3, lines 29-54; col. 4, lines 9-19; it is respectfully noted that the disclosure of the instant application indicates that wire windings may include “any suitable natural or synthetic material, including extruded elastic and inelastic polymers, braided fibers, combinations thereof, and the like;” see para. 0009 of the instant specification); and
a first set of substantially linear stitch seams interleaved between the first set of wire windings, contacting the second set of wire windings, and binding the second set of wire windings to one another (see Figures 1a-2 and 4-5; col. 2, line 57 – col. 3, line 44; first set of substantially linear stitch seams formed by first pair of threads 14,16; it is respectfully noted that the phrase “substantially linear stitch seams” is very broad and that the series of knit loops 18,20 and joints 22 of the knit structure formed by first pair of threads 14,16 can together properly be considered “substantially linear stitch seams” at least because they extend in a generally linear pattern and the phrase “stitch seam” does not denote any particular form or type of seam structure);
wherein each substantially linear stitch seam of the first set of substantially linear stitch seams includes a first pair of threads (14,16) codirectional with each other and defining a first set of joints (22) located at joint locations within the intercrossed pattern and joining together the second set of wire windings (see especially Figures 1a-2; col. 2, line 57 – col. 3, line 44).
PNG
media_image1.png
804
480
media_image1.png
Greyscale
PNG
media_image2.png
807
506
media_image2.png
Greyscale
To claim 8, Leach further discloses an engineered textile wherein each wire of the first and second sets of wire windings has a first diameter, and each thread of the first pair of threads has a second diameter less than the first diameter (see Figures 1a-2 and 4-5; col. 4, lines 9-19).
To claim 11, Leach further discloses an engineered textile wherein each substantially linear stitch seam of the first set of substantially linear stitch seams extends substantially parallel to the first direction of the first set of wire windings and is interposed between a respective pair of wire windings in the first set of wire windings (see especially Figures 1a-2; col. 2, line 57 – col. 3, line 44).
To claim 12, Leach further discloses an engineered textile wherein the first set of wire windings is formed from a first wire and the second set of wire windings is formed from a second wire distinct from the first wire (see Figures 1a-1b and 3; col. 2, line 57 – col. 3, line 15; col. 3, lines 29-54; col. 4, lines 9-19; it is respectfully noted that the disclosure of the instant application indicates that wire windings may include “any suitable natural or synthetic material, including extruded elastic and inelastic polymers, braided fibers, combinations thereof, and the like;” see para. 0009 of the instant specification).
To claim 13, Leach further discloses an engineered textile wherein the first set of wire windings is substantially perpendicular to the second set of wire windings (see Figures 1a-1b and 3; col. 2, line 57 – col. 3, line 15; col. 3, lines 29-54).
To claim 14, Leach further discloses an engineered textile wherein a first thread (14) of the first pair of threads abuts a first side of the second set of wire windings, and a second thread (16) of the first pair of threads abuts a second side, opposite the first side, of the second set of wire windings (see Figures 1a-5; col. 2, line 57 – col. 3, line 15; col. 3, lines 29-54).
To claim 15, Leach further discloses an engineered textile wherein the unwoven, intercrossed pattern of the first and second sets of wire windings defines a plurality of quadrangles with central gaps, and wherein each joint of the first set of joints is located in a respective one of the central gaps (see Figures 1a-5; col. 2, line 57 – col. 3, line 44).
To claim 16, Leach further discloses an engineered textile wherein each of the quadrangles is defined by a respective set of intersecting points at which the first set of wire windings intercrosses the second set of wire windings, and wherein each of the joints is located at a respective center of a diagonal line segment connecting an opposing pair of the intersecting points (see Figures 1a-5; col. 2, line 57 – col. 3, line 44).
To claim 18, Leach further discloses an engineered textile wherein the first and second sets of wire windings are retained in a tensioned state in the unwoven, intercrossed pattern (see Figures 1a-1b and 3; col. 2, line 57 – col. 3, line 15; col. 3, lines 29-54).
To claim 20, Leach discloses a method of assembling an engineered textile (see Figures 1a-5, reproduced above for convenience; col. 2, line 49 – col. 4, line 19), the method comprising:
arranging a first set of wire windings (28) substantially parallel to one another and elongated in a first direction (see Figures 1a-1b and 3; col. 2, line 57 – col. 3, line 15; col. 3, lines 29-54; col. 4, lines 9-19; it is respectfully noted that the disclosure of the instant application indicates that wire windings may include “any suitable natural or synthetic material, including extruded elastic and inelastic polymers, braided fibers, combinations thereof, and the like;” see para. 0009 of the instant specification);
arranging a second set of wire windings (30) substantially parallel to one another and elongated in a second direction distinct from the first direction (see Figures 1a-1b and 3; col. 2, line 57 – col. 3, line 15; col. 3, lines 29-54; col. 4, lines 9-19; it is respectfully noted that the disclosure of the instant application indicates that wire windings may include “any suitable natural or synthetic material, including extruded elastic and inelastic polymers, braided fibers, combinations thereof, and the like;” see para. 0009 of the instant specification);
abutting the second set of wire windings with the first set of wire windings in an unwoven, intercrossed pattern (see Figures 1a-1b and 3; col. 2, line 57 – col. 3, line 15; col. 3, lines 29-54; col. 4, lines 9-19); and
forming a first set of substantially linear stitch seams interleaved with the first set of wire windings, contacting the second set of wire windings, and binding the second set of wire windings to one another (see Figures 1a-2 and 4-5; col. 2, line 57 – col. 3, line 44; first set of substantially linear stitch seams formed by first pair of threads 14,16; it is respectfully noted that the phrase “substantially linear stitch seams” is very broad and that the series of knit loops 18,20 and joints 22 of the knit structure formed by first pair of threads 14,16 can together properly be considered “substantially linear stitch seams” at least because they extend in a generally linear pattern and the phrase “stitch seam” does not denote any particular form or type of seam structure),
wherein each substantially linear stitch seam of the first set of substantially linear stitch seams is formed by a first pair of threads (14,16) codirectional with each other and defining a first set of joints located at joint locations within the intercrossed pattern (see especially Figures 1a-2; col. 2, line 57 – col. 3, line 44).
Claims 1, 8-14, 17-18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPN 8,266,827 Dojan et al.
To claim 1, Dojan discloses an engineered textile (30) (see Figures 1-10B; col. 3, lines 4-23; col. 3, line 48 – col. 11, line 13), comprising:
a first set of wire windings (41) (col. 5, line 55 – col. 6, line 14; it is respectfully noted that the instant disclosure does not provide any particular definition for the term “wire,” and that strands 41 as disclosed in Dojan include configurations that can properly be considered “wires”) substantially parallel to one another and elongated in a first direction (annotated Figure 7C, see below; col. 4, line 25 – col. 8, line 56);
a second set of wire windings (41) (col. 5, line 55 – col. 6, line 14; it is respectfully noted that the instant disclosure does not provide any particular definition for the term “wire,” and that strands 41 as disclosed in Dojan include configurations that can properly be considered “wires”) substantially parallel to one another and elongated in a second direction distinct from the first direction, the second set of wire windings abutting the first set of wire windings in an unwoven, intercrossed pattern (annotated Figure 7C; col. 4, line 25 – col. 8, line 56); and
a first set of substantially linear stitch seams interleaved between the first set of wire windings, contacting the second set of wire windings, and binding the second set of wire windings to one another (see for example Figures 3-6B and annotated Figure 7C; col. 4, line 62 – col. 8, line 57; first set of substantially linear stitch seams formed by first pair of threads 42,43);
wherein each substantially linear stitch seam of the first set of substantially linear stitch seams includes a first pair of threads (42,43) (col. 5, line 55 – col. 6, line 25) codirectional with each other and defining a first set of joints located at joint locations within the intercrossed pattern and joining together the second set of wire windings (see for example Figures 3-6B and annotated Figure 7C; col. 4, line 62 – col. 8, line 57).
PNG
media_image3.png
906
586
media_image3.png
Greyscale
To claim 8, Dojan further discloses an engineered textile wherein each wire of the first and second sets of wire windings has a first diameter, and each thread of the first pair of threads has a second diameter less than the first diameter (see for example Figures 3-6B and annotated Figure 7C; col. 6, lines 26-58).
To claim 9, Dojan further discloses an engineered textile wherein the first diameter of the first and second sets of wire windings is at least 75% larger than the second diameter of the first pair of threads (see for example Figures 3-6B and annotated Figure 7C; col. 6, lines 26-58).
It is respectfully noted 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 (see MPEP 2144.05).
To claim 10, Dojan further discloses an engineered textile wherein each joint of the first set of joints includes a respective lockstitch of the first pair of threads (see especially Figures 4-6B; col. 4, line 62 – col. 5, line 14).
To claim 11, Dojan further discloses an engineered textile wherein each substantially linear stitch seam of the first set of substantially linear stitch seams extends substantially parallel to the first direction of the first set of wire windings and is interposed between a respective pair of wire windings in the first set of wire windings (annotated Figure 7C; col. 4, line 62 – col. 5, line 54).
To claim 12, Dojan further discloses an engineered textile wherein the first set of wire windings is formed from a first wire and the second set of wire windings is formed from a second wire distinct from the first wire (annotated Figure 7C; col. 4, line 62 – col. 6, line 58).
To claim 13, Dojan further discloses an engineered textile wherein the first set of wire windings is substantially perpendicular to the second set of wire windings (annotated Figure 7C; col. 4, line 62 – col. 6, line 58; it is respectfully noted that the term “substantially” is very broad).
To claim 14, Dojan further discloses an engineered textile wherein a first thread (42) of the first pair of threads abuts a first side of the second set of wire windings, and a second thread (43) of the first pair of threads abuts a second side, opposite the first side, of the second set of wire windings (see for example Figures 3-6B and annotated Figure 7C; col. 4, line 62 – col. 8, line 57).
To claim 17, Dojan further discloses an engineered textile wherein the engineered textile is a vamp portion and/or a toe box portion of an upper of an article of footwear (10) (annotated Figure 7C; col. 3, line 48 – col. 4, line 23).
To claim 18, Dojan further discloses an engineered textile wherein the first and second sets of wire windings are retained in a tensioned state in the unwoven, intercrossed pattern (annotated Figure 7C; col. 8, lines 1-20).
To claim 20, Dojan discloses a method of assembling an engineered textile (30) (see Figures 1-10B; col. 8, line 58 – col. 11, line 13), the method comprising:
arranging a first set of wire windings (41) (col. 5, line 55 – col. 6, line 14; it is respectfully noted that the instant disclosure does not provide any particular definition for the term “wire,” and that strands 41 as disclosed in Dojan include configurations that can properly be considered “wires”) substantially parallel to one another and elongated in a first direction (annotated Figure 7C, see above; col. 4, line 25 – col. 8, line 56);
arranging a second set of wire windings (41) (col. 5, line 55 – col. 6, line 14; it is respectfully noted that the instant disclosure does not provide any particular definition for the term “wire,” and that strands 41 as disclosed in Dojan include configurations that can properly be considered “wires”) substantially parallel to one another and elongated in a second direction distinct from the first direction (annotated Figure 7C; col. 4, line 25 – col. 8, line 56);
abutting the second set of wire windings with the first set of wire windings in an unwoven, intercrossed pattern (annotated Figure 7C; col. 4, line 25 – col. 8, line 56); and
forming a first set of substantially linear stitch seams interleaved with the first set of wire windings, contacting the second set of wire windings, and binding the second set of wire windings to one another (see for example Figures 3-6B and annotated Figure 7C; col. 4, line 62 – col. 8, line 57; first set of substantially linear stitch seams formed by first pair of threads 42,43),
wherein each substantially linear stitch seam of the first set of substantially linear stitch seams is formed by a first pair of threads (42,43) codirectional with each other and defining a first set of joints located at joint locations within the intercrossed pattern (see for example Figures 3-6B and annotated Figure 7C; col. 4, line 62 – col. 8, line 57).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Leach (as applied to claims 1 and 8, above).
To claim 9, Leach discloses an engineered textile wherein each wire of the first and second sets of wire windings has a first diameter, and each thread of the first pair of threads has a second diameter less than the first diameter (see Figures 1a-2 and 4-5; col. 4, lines 9-19), as recited in claim 8, above.
Leach does not explicitly disclose an engineered textile wherein the first diameter of the first and second sets of wire windings is at least 75% larger than the second diameter of the first pair of threads.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the engineered textile of Leach such that the first diameter of the first and second sets of wire windings is at least 75% larger than the second diameter of the first pair of threads as a matter of routine optimization. It is further respectfully noted 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 (see MPEP 2144.05).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Leach (as applied to claim 1, above) in view of USPN 4,447,967 Zaino.
To claim 17, Leach discloses an engineered textile as recited in claim 1, above.
Leach does not explicitly disclose an engineered textile wherein the engineered textile is a vamp portion and/or a toe box portion of an upper of an article of footwear.
However, Zaino teaches an engineered textile (1) (see Figures 1-4, reproduced below for convenience; col. 1, line 49 – col. 2, line 44) that is a vamp portion and/or a toe box portion of an upper of an article of footwear (3) (see especially Figures 1-2; col. 1, line 49 – col. 2, line 4).
PNG
media_image4.png
800
523
media_image4.png
Greyscale
Leach and Zaino teach analogous inventions in the field of engineered textiles. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the engineered textile of Leach to form a vamp portion and/or a toe box portion of an upper of an article of footwear as taught by Zaino because Zaino teaches that this configuration is known in the art and allows for perspiration to take place (col. 2, lines 36-44).
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 1-21 of U.S. Patent No. 12,404,614.
Although the claims at issue are not identical, they are not patentably distinct from each other because they each recite engineered textiles comprising substantially the same elements including first and second sets of wire windings abutting each other in an unwoven, intercrossed pattern, substantially linear stitch seams between the wire windings, and with the substantially linear stitch seams including first and second threads and joints located at joint locations.
INSTANT APPLICATION
USPN 12,404,614
CLAIMS
1
1,15,21
2
1,15,17-19,21
3
6,18
4
2,16,21
5
5
6
6
7
5-6,18-19
8
7
9
3
10
2,16,21
11
5,19
12
14
13
6,18
14
4
15
9
16
9
17
10
18
11
19
1,15,21
20
1,15,21
Allowable Subject Matter
Claim 19 allowed over the prior art of record (subject to the successful filing of a Terminal Disclaimer to overcome the rejection for nonstatutory double patenting over claims 1-21 of U.S. Patent No. 12,404,614, detailed above).
Claims 2-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims (subject to the successful filing of a Terminal Disclaimer to overcome the rejection for nonstatutory double patenting over claims 1-21 of U.S. Patent No. 12,404,614, detailed above).
The following is a statement of reasons for the indication of allowable subject matter: The closest pieces of prior art are USPN 4,540,311 Leach and USPN 8,266,827 Dojan et al. Claims 2-7 and 19 are distinguished from Leach and Dojan at least because neither Leach nor Dojan, alone or in combination, teach, suggest, or disclose an engineered textile comprising a second set of substantially linear stitch seams interleaved between a second set of wire windings, the second set of substantially linear stitch seams including a second pair of threads codirectional with each other and defining a second set of joints located at joint locations within an intercrossed pattern and joining together the second set of wire windings, along with each of the other limitations as claimed. The prior art of record would not be combinable to result in the claimed invention without substantial rearrangement and improper hindsight reasoning. Dependent claims are allowable at least by virtue of their dependencies on an allowable claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Additional examples of engineered textiles comprising first and second sets of wire windings abutting each other in an unwoven, intercrossed pattern and further comprising substantially linear stitch seams, analogous to the instant invention (see form PTO-892 “Notice of References Cited”).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRIFFIN HALL whose telephone number is (571)270-0546. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alissa Tompkins can be reached at (571) 272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/F Griffin Hall/Primary Examiner, Art Unit 3732
Prosecution Insights