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 7/13/2026 is acknowledged.
Claim 11 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 7/13/2026.
To the extent that the withdrawn claims get rejoined, applicant should amend them during prosecution. Accordingly, if the independent claim is no longer generic then applicant is encourage to cancel the withdrawn claims.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) 1,4-7,9,12 and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2016/0249706 (Leary).
Regarding claims 1,4-7,9,12 and 17-18, 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 including at least one of a tongue base region or an instep base region and (ii) a heel-containing region (see the figures and ¶00089 which teaches a tongue can be included); and
a bladder (340; see figure 6 annotated below) engaged with the footwear upper base, wherein the bladder includes:
(a) a first thermoplastic sheet (top sheet 344; see figure 7 and ¶0054),
(b) a second thermoplastic sheet (bottom sheet 342) facing the first thermoplastic sheet, and
(c) a continuous outer perimeter seam (341; see figure 6 below showing the continuous outer perimeter seam highlighted in yellow; and see ¶0056 teaching the layers 342,344 bonded together by heat and/or pressure) sealing the first thermoplastic sheet to the second thermoplastic sheet, wherein the continuous outer perimeter seam defines a sealed interior volume between the first thermoplastic sheet and the second thermoplastic sheet, and wherein the continuous outer perimeter seam extends continuously to form the sealed interior volume to include: (i) a fluid supply chamber [1IC, 2IC in the instep/tongue region; see figure 6 annotated below)] having a first major surface formed by the first thermoplastic sheet, (ii) a first heel and/or ankle support chamber (1H&AC), (iii) a first fluid line (1FL) connecting the fluid supply chamber (1IC and 2IC) and the first heel and/or ankle support chamber (1H&AC) through the sealed interior volume, (iv) a second heel and/or ankle support chamber (2H&AC), and (v) a second fluid line (2FL) connecting the first heel and/or ankle support chamber (1H&AC) and the second heel and/or ankle support chamber (2H&AC) through the sealed interior volume (1st and 2nd fluid lines (1FL and 2FL) both connect the first and second heel and/or ankle support chamber), and
wherein the fluid supply chamber (1IC,2IC) is engaged at the instep region, the first heel and/or ankle support chamber (1H&AC) is engaged at a first side of the heel-containing region, and the second heel and/or ankle support (2H&AC) chamber is engaged at a second side of the heel-containing region.
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Regarding claim 4, see seam extending around chambers 1H&AC and 2H&AC4 forming a multi-bulbed chamber.
Regarding claim 5, see ¶0056 of Leary which teaches the sheets (342,344 are bonded together by heat and/or pressure) and therefore joined in an adhesive-free manner.
Regarding claim 6, see figure 6 above showing the first thermoplastic sheet and the second thermoplastic sheet are connected only by the continuous outer perimeter seam (highlighted in yellow).
Regarding claim 7, see figure 6 showing all the chambers in fluid communication.
Regarding claim 9, see ¶0068 and figure 7.
Regarding claim 12; at least see ¶0049 teaching the bladder is engaged to multi-component parts of the footwear upper (e.g. bladder secured to outer layer (340) or to inner layer (330)) in an adhesive free manner [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].
Regarding claim 17, see “1FL” in figure 6
Regarding claim 18; at least see figure 5.
Regarding claim 19, 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 including at least one of a tongue base region or an instep base region and (ii) a heel-containing region (see the figures and ¶00089 which teaches a tongue can be included); and
a bladder (340; see figure 6 annotated above) engaged with the footwear upper base, wherein the bladder includes:
(a) a first thermoplastic sheet (top sheet 344; see figure 7 and ¶0054),
(b) a second thermoplastic sheet (bottom sheet 342) facing the first thermoplastic sheet, and
(c) a continuous outer perimeter seam (341; see figure 6 below showing the continuous outer perimeter seam highlighted in yellow; and see ¶0056 teaching the layers 342,344 bonded together by heat and/or pressure) sealing the first thermoplastic sheet to the second thermoplastic sheet, wherein the continuous outer perimeter seam defines a sealed interior volume between the first thermoplastic sheet and the second thermoplastic sheet, and wherein the continuous outer perimeter seam extends continuously to form the sealed interior volume to include: (i) a fluid supply chamber [1IC, 2IC in the instep/tongue region; see figure 6 annotated below)] having a first major surface formed by the first thermoplastic sheet, (ii) a first heel and/or ankle support chamber (1H&AC), (iii) a first fluid line (1FL) connecting the fluid supply chamber (1IC and 2IC) and the first heel and/or ankle support chamber (1H&AC) through the sealed interior volume (1st and 2nd fluid lines (1FL and 2FL) both connect the first and second heel and/or ankle support chamber), and
wherein the fluid supply chamber (1IC,2IC) is engaged at the instep region (see figure 6 annotated above) and the first heel and/or ankle support chamber (1H&AC) is engaged at a first side of the heel-containing region.
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 2,3,14-16 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Leary ‘706.
Regarding claims 2,3,14-16 and 20, Leary discloses a footwear upper (300) as claimed (see the rejection above) except for the dimensions (e.g. length, volume, cross-sectional area) as defined in these claims.
Leary doesn’t disclose the volume of the chambers and the fluid lines; the axial length of the fluid lines; and the transverse cross sectional area over the length of the first and second fluid line. However, it would appear to be an obvious design choice to construct the footwear upper as taught by Leary with the lengths, volumes and cross-sectional areas as defined in claims 2,3,14-16 and 20 inasmuch as the footwear upper as taught by Leary appears to be in the dimensions as claimed and to the extent that it doesn’t it would appear an obvious design choice to modify the footwear upper taught by Leary with the dimensions as claimed (i.e. lengths, volumes and transverse cross-sectional areas) inasmuch as a number of different dimensions and/or sizes would appear to be suitable depending on the individual wearer and the activity for be used. Since the applicant has not demonstrated or even alleged that these specifically claimed dimensions produce any unexpected results, it is concluded that it would have been obvious for an artisan with ordinary skill to determine a workable or even optimum dimensions and/or sizes for the footwear upper and thereby arrive at the specific variables claimed by the applicant.
Regarding “the first fluid line (206) is the only fluid line that places the fluid supply chamber (202A,202B) in fluid communication with the first heel and/or ankle support chamber (210M)” [Parenthesis added] in claims 16 and 20; see fluid line (1FL annotated in figure 6 above)
Claims 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Leary ‘706 in view of US 7487488 (Davis).
Leary teaching a footwear upper (see the rejection above) except for there being only one fluid chamber between the first and second heel and/or ankle support chambers. Leary as shown in figure 6 annotated above has two fluid lines (1FL and 2FL) and not the only one as claimed. Figure 6 of Leary is very similar to the layout as shown in figure 4 of the instant application (i.e. there are two fluid lines (206) that extend from the in front instant chambers back to the rear heel/ankle support chambers, one on each side of the upper). Claim 10 is not generic and are more specific to the elected bladder as best shown in figure 2C wherein there is only one fluid line (206) from the front the fluid supply chambers (202A,202B) extending back to rear heel/ankle support chambers, and the second fluid line (208) extends between the first heel/ankle support chambers. However, Leary teaches “any suitable type or shape of bladder suitable for footwear may be utilized…as inflatable bladder 240”; see ¶0052, lines 1-2 and overall see ¶0051-0052. And Davis teaches a fluid system for footwear wherein the inflatable bladder (108) has chambers in similar regions (i.e. instep (214a,214b) and ankle/heel (212a,212b)) but is connected with one passageway/fluid line on one side of the footwear (i.e. 224) and a second fluid line (see line between seams 228) which extend between 1st and 2nd heel/ankle support chambers. 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 bladder of the footwear upper above with the first fluid line on one side of the footwear upper and the second fluid line (i.e. only the second fluid line) extends between the first and second heel/ankle support chamber support, as taught by Davis, inasmuch as the layout of bladers can be a design choice and dependent on the specific needs of the user dependent on the activity be used for.
Claim 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Leary ‘706 in view of US 2018/0317594 (Brinkman).
Regarding claim 13, 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.
Claim 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Leary ‘706 in view of US 7487488 (Bailey).
Leary teaching a footwear upper (see the rejection above) except for the first and second sheet of the bladder formed from a single thermoplastic sheets. Bailey teaches the sheets of the bladder can formed from separate sheets or formed from a single thermoplastic sheet; see ¶0348, lines 9-15. 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 footwear upper as taught above to have the first and second sheets of the bladder formed from a single thermoplastic sheet, in view of the teachings of Bailey, to simply construction.
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 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).
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