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 without traverse of species I (footwear as shown in figures 1A-2A and 2C-3B) in the reply filed on 5/27/2026 is acknowledged.
Claims 5,6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/27/2026.
To the extent that the withdrawn claims get rejoined, applicant should amend them during prosecution. Accordingly, if the independent claim is no longer generic then applicant is encourage to cancel the withdrawn claims.
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 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) 1-4,7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2016/0249706 (Leary).
Regarding claims 1-4 and 7, Leary discloses a footwear upper (300), comprising:
a footwear upper base (upper 300 including parts 320,330,340 which extend to all parts of the footwear around the user’s foot) formed from one or more component parts and including: (i) an instep region, (ii) a heel-containing region, and (iii) a foot-receiving opening; and
a bladder (340; see figure 6 annotated below) including: (i) a first instep chamber (1IC) engaged with the instep region of the footwear upper base, the first instep chamber including a first major surface located at the instep region, (ii) a first heel and/or ankle support chamber (1H&AC) engaged with the heel-containing region of the footwear upper base, and (iii) a first fluid line (1FL) connecting the first instep chamber and the first heel and/or ankle support chamber, wherein the first fluid line (1FL) extends along and proximate to a first side edge of the foot-receiving opening (the fluid line (1FL) as shown below are on the top portion of the bladder and therefore extend along and proximate a first side edge of the opening).
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Regarding claim 2, Leary teaches the footwear upper according to claim 1, wherein the bladder further includes a second heel and/or ankle support chamber (2H&AC) and a second fluid line (2FL) connecting the first heel and/or ankle support chamber and the second heel and/or ankle support chamber.
Regarding claim 3, the second fluid line (2FL) as shown in the figures extends around a rear heel and/or ankle portion of the footwear upper base. The rear and/or ankle portion would include a majority of the foot-receiving opening.
Regarding claim 4, Leary teaches the footwear upper according to claim 1, wherein the bladder further includes a second instep chamber (2IC) engaged with the instep region of the footwear upper base, and wherein the second instep chamber includes a second major surface located at the instep region and is in fluid communication with at least one of the first fluid line (1FL) and the first instep chamber (1IC).
Regarding claim 7, Leary teaches the footwear upper according to claim 4, wherein a portion of the first instep chamber (1IC) is separated from a portion of the second instep chamber (2IC) by an exposed portion of at least one of the one or more component parts of the footwear upper base (see figure 6 showing separation between 1IC and 2IC).
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 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Leary ‘706 in view of US 2018/0317594 (Brinkman).
Regarding claims 8-9, Leary discloses a footwear upper (see the rejection above for details) except for one or more components of the footwear upper base includes a first knit component. Leary teaches at least a portion of the footwear base is engaged to the bladder; for example see ¶0049 of Leary.
Brinkman teaches constructing footwear upper with one or more components of the footwear includes a first knit component to provide advantages such as elasticity, breathability, bendability, etc. (see ¶0014). Therefore, 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 footwear upper base to include a first knit component, as taught by Leary, to provide advantages such as elasticity, breathability and bendability.
Regarding claim 9, see ¶0050 of Leary which teaches engaging of the upper and the bladder in an adhesive-free manner (e.g. RF welding, etc.). RF welding was taught in the instant application (see ¶0024) as being an adhesive-free manner.
Double Patenting
Claims 10,11,14 and 15 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1,2,3 and 4 of prior U.S. Patent No. 12,053,053. This is a statutory double patenting rejection.
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 the claims of U.S. Patent No. 12,053,053. Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are merely broader than the patent claim. In essence, once the applicant has received a patent for a species or a more specific embodiment, he is not entitled to a patent for the generic or broader invention without maintaining common ownership and ensuring that the term of the latter issued patent will expire at the end of the original term of the earlier issued patent. This is because the more specific “anticipates” the broader. Drawing a helpful analogy, if you have a broad claim to examine, and you find a reference, which discloses every element of the claim, you have a reference that anticipates. The same is true in an obviousness-type double patenting analysis where the claim being examined is merely broader than the claim patented before. The patented claim “anticipates” the application claim. That is, in a nutshell, the rationale for why the two claims are not patentably distinct. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Note: Claims 10,11,14 and 15 has been give a rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1,2,3 and 4 of prior U.S. Patent No. 12,053,053 (see the rejection above) and this is a statutory double patenting rejection can’t be overcome with a terminal disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,495,867. Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are merely broader than the patent claim. In essence, once the applicant has received a patent for a species or a more specific embodiment, he is not entitled to a patent for the generic or broader invention without maintaining common ownership and ensuring that the term of the latter issued patent will expire at the end of the original term of the earlier issued patent. This is because the more specific “anticipates” the broader. Drawing a helpful analogy, if you have a broad claim to examine, and you find a reference, which discloses every element of the claim, you have a reference that anticipates. The same is true in an obviousness-type double patenting analysis where the claim being examined is merely broader than the claim patented before. The patented claim “anticipates” the application claim. That is, in a nutshell, the rationale for why the two claims are not patentably distinct. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art cited and not relied upon by the Examiner for the above rejections are considered to be pertinent in that the references cited are considered to be the nearest prior art to the subject matter defined in the claims as required by MPEP707.05.
Applicant is duly reminded 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 TED KAVANAUGH whose telephone number is (571) 272-4556. The examiner can normally be reached on Monday-Thursday 8AM-6PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule a telephone interview, applicant is encouraged to call the examiner. Normally telephone interviews can quickly be scheduled. For other types of interviews, 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, Khoa Huynh can be reached on 57-1272-4888. 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.
/Ted Kavanaugh/
Primary Patent Examiner
Art Unit 3732
Tel: (571) 272-4556
Prosecution Insights