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 1-19 of U.S. Patent No. 12,446,650. Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim essentially the same elements such as an upper comprising: a single unified knitted workpiece including a throat and collar portions, a medial and lateral lobe, one or more additional components, wherein the lobes front and rear edges are between the throat front end and rear end
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, 6-9, are 13-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Craig (2014/0137433).
Regarding claim 1, Craig discloses an upper for an article of footwear, comprising: a single unified knitted workpiece including a throat portion, a collar portion, a medial lobe, and a lateral lobe; and one or more additional components attached to the single unified knitted workpiece;
wherein the throat portion of the single unified knitted workpiece is disposed in at least a portion of a midfoot region of the upper and extends continuously in a longitudinal direction from a throat front end defining a front end of the single unified knitted workpiece to a throat rear end opposite the throat front end;
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the upper comprises an opening configured to provide entry for a foot of a wearer to an interior of the upper, the collar portion extends from the throat rear end, and the collar portion at least partially encircles or surrounds the opening (fig 6 annotated above);
the medial lobe extends from a medial side of the throat portion, is disposed in a medial side of the midfoot region of the upper, and includes a medial lobe front edge, a medial lobe rear edge opposite the medial lobe front edge, and a medial lobe bottom edge between the medial lobe front edge and the medial lobe rear edge (figs 1-8);
the lateral lobe extends from a lateral side of the throat portion, is disposed in a lateral side of the midfoot region of the upper, and includes a lateral lobe front edge, a lateral lobe rear edge opposite the lateral lobe front edge, and a lateral lobe bottom edge between the lateral lobe front edge and the lateral lobe rear edge (figs 1-8);
the medial lobe front edge and the medial lobe rear edge are between the throat front end and the throat rear end on the medial side of the throat portion, and the lateral lobe front edge and the lateral lobe rear edge are between the throat front end and the throat rear end on the lateral side of the throat portion (fig 6 annotated above); and
the one or more additional components comprises one or more forefoot components disposed in a forefoot region of the upper (member 120), or comprises one or more heel components disposed in a heel region of the upper, or comprises both the one or more forefoot components and the one or more heel components.
Regarding claim 2, Craig discloses the single unified knitted workpiece extends through a majority of the midfoot region of the upper, or extends through at least a portion of a forefoot region of the upper, or extends through at least a portion of a heel region of the upper (fig 3), or extends through the majority of the midfoot region and at least a portion of the forefoot region of the upper, or extends through the majority of the midfoot region and at least a portion of the heel region of the upper, or extends through the majority of the midfoot region of the upper, at least a portion of the forefoot region of the upper, and at least a portion of the heel region of the upper.
Regarding claim 6, Craig discloses an upper for an article of footwear (figs 1-12B) comprising: a single unified knitted workpiece (member 130) including a throat portion (members 131 and 134) and at least one lobe (member 133); and one or more additional components attached to the single unified knitted workpiece;
wherein the throat portion of the single unified knitted workpiece is disposed in at least a portion of a midfoot region of the upper and extends continuously in a longitudinal direction from a throat front end defining a front end of the single unified knitted workpiece to a throat rear end opposite the throat front end; the at least one lobe extends from a medial or lateral side of the throat portion, is disposed in a medial or lateral side of the midfoot region of the upper, includes a lobe front edge and a lobe rear edge opposite the lobe front edge, and the lobe front edge and the lobe rear edge are between the throat front end and the throat rear end (fig 6 annotated above); and
the one or more additional components comprises one or more forefoot components disposed in a forefoot region of the upper (member 120), or comprises one or more heel components disposed in a heel region of the upper, or comprises both the one or more forefoot components and the one or more heel components.
Regarding claim 7, Craig discloses the at least one lobe comprises a medial lobe, the medial lobe extends from a medial side of the throat portion, and is disposed in a medial side of the midfoot region of the upper; or comprises a lateral lobe, the lateral lobe extends from a lateral side of the throat portion, and is disposed in a lateral side of the midfoot region of the upper; or comprises both the medial lobe and the lateral lobe (fig 3 to 8).
Regarding claim 8, Craig discloses the upper comprises an opening configured to provide entry for a foot of a wearer to an interior of the upper, the single unified knitted workpiece includes a collar portion extending from the throat rear end, and the collar portion at least partially encircles or surrounds the opening (fig 6 annotated above).
Regarding claim 9, Craig discloses the single unified knitted workpiece extends through a majority of the midfoot region of the upper, or extends through at least a portion of a forefoot region of the upper, or extends through at least a portion of a heel region of the upper (fig 3), or extends through the majority of the midfoot region and at least a portion of the forefoot region of the upper, or extends through the majority of the midfoot region and at least a portion of the heel region of the upper, or extends through the majority of the midfoot region of the upper, at least a portion of the forefoot region of the upper, and at least a portion of the heel region of the upper.
Regarding claim 13, Craig discloses an upper for an article of footwear (figs 1-12B) comprising: a single unified knitted workpiece (member 130) including a throat portion (members 131 and 134) and at least one lobe (member 133); and one or more additional components (member 120) attached to the single unified knitted workpiece;
wherein the throat portion is disposed in at least a portion of a midfoot region of the upper and extends continuously in a longitudinal direction from a throat front end defining a front end of the single unified knitted workpiece to a throat rear end opposite the throat front end (fig 6 annotated above);
the at least one lobe extends from a medial or lateral side of the throat portion, is disposed on a medial or lateral side of the midfoot region of the upper, includes a bottom lobe edge forming a portion of a medial or lateral edge of the upper, and the bottom lobe edge is configured to terminate past or adjacent to a bite line of an article of footwear; and
the one or more additional components comprises one or more forefoot components disposed in a forefoot region of the upper, or comprises one or more heel components disposed in a heel region of the upper, or comprises both the one or more forefoot components and the one or more heel components.
Regarding claim 14, Craig discloses the at least one lobe includes a lobe front edge and a lobe rear edge opposite the lobe front edge, the lobe bottom edge is between the lobe front edge and the lobe rear edge, and the lobe front edge and the lobe rear edge are between the throat front end and the throat rear end (fig 1 annotated below).
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Regarding claim 15, Craig discloses the at least one lobe comprises a medial lobe, the medial lobe extends from a medial side of the throat portion, and is disposed in a medial side of the midfoot region of the upper; or comprises a lateral lobe, the lateral lobe extends from a lateral side of the throat portion, and is disposed in a medial side of the midfoot region of the upper; or comprises both the medial lobe and the lateral lobe (figs 1-8).
Regarding claim 16, Craig discloses the upper comprises an opening configured to provide entry for a foot of a wearer to an interior of the upper, the single unified knitted workpiece includes a collar portion extending from the throat rear end, and the collar portion at least partially encircles or surrounds the opening (fig 6 annotated above).
Regarding claim 17, Craig discloses the single unified knitted workpiece extends through a majority of the midfoot region of the upper, or extends through at least a portion of a forefoot region of the upper, or extends through at least a portion of a heel region of the upper (fig 3), or extends through the majority of the midfoot region and at least a portion of the forefoot region of the upper, or extends through the majority of the midfoot region and at least a portion of the heel region of the upper, or extends through the majority of the midfoot region of the upper, at least a portion of the forefoot region of the upper, and at least a portion of the heel region of the upper.
Conclusion
The prior art made of record and not relied upon, is listed on the attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BAO-THIEU L NGUYEN whose telephone number is (571)270-0476. The examiner can normally be reached M-F 7am-3pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KHOA D. 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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BAO-THIEU L. NGUYEN
Primary Examiner
Art Unit 3732
/BAO-THIEU L NGUYEN/ Primary Examiner, Art Unit 3732