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 with traverse of Invention I, Species A in the reply filed on June 18, 2026 is acknowledged. The traversal is on the ground(s) that the two species do not include mutually exclusive features. This is found persuasive and the species, and the election of species has been withdrawn.
The requirement for restriction between inventions is still deemed proper and is therefore made FINAL.
Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and species, there being no allowable generic or linking claim.
Accordingly, claims 1-20 are pending in this application, with an action on the merits to follow regarding claims 1-17.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the layer structure and the membrane (claim 1), and where at least part of the membrane is freely floating (claim 14), the layered structure having a textile ling, a membrane layer, a backer knit, and an upper material (claim 15) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: “29” (para. 0107).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 23, 25 (Fig. 5), 293 (Fig. 6):
The drawings are objected to because:
In Fig. 1b, 1’ (bootie) is pointing to the entire footwear and not a bootie;
Fig. 2, 5 shows multiple separate parts but no bracket or connection line is drawn to indicate how all parts are within Figs. 2 and 5;
In Fig. 6, connection line 294 is not pointing to any line of connection between pieces;
In Fig. 6, outer shell 6 is pointing generically to the entire structure and not to the outer shell;
In Fig. 7, lining 28 is pointing generically to the entire structure and not to the lining;
In Fig. 8b, connection line 21 is not pointing to a connection line.
Figures 1a-1b, and 2-4 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated (see paras. 0029-0033 stating these figures are of a known bootie). See MPEP § 608.02(g).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 10 and 12 is objected to because of the following informalities:
Claim 10 recites the limitation "the region" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "the ankle" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-4, 6, 9, and 11-17 (and claims 2, 5, 7-8, and 10 at least for depending from a rejected claim) are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is indefinite as it recites, “a set of basic pattern pieces”. It is unclear what is meant by “basic” and how one of ordinary skill can ascertain to any requisite degree what pattern pieces can be included or excluded as “basic”. Further, as a pattern is a design or a piece to be copied onto a substrate to create a completed structure, it is unclear what is meant by pattern pieces and if Applicant is attempting to claim an intermediate step of a footwear or a completed structure. Examiner respectfully suggests amending to recite “a set of panels”.
Claim 1 is indefinite as it recites, “at least one extension piece comprising a thinner and more elastic material than a material of the set of basic pattern pieces”. As claim 1 previously recites, “a set of basic pattern pieces comprising a layered structure comprising at least one membrane”, it is unclear if “a material of the set of basic pattern pieces” is referring to the layered structure, the membrane, or a different material.
Claim 1 is indefinite as it recites, “wherein the lining piece covers the at least one extension piece and the set of basic pattern pieces on the inside of the bootie when in use, such that the lining piece covers the at least one first connection line.” It is unclear if the lining covers all each of the pattern pieces in the set of basic pattern pieces or if the lining only needs to cover one of pieces. As shown in Figs. 5-6, the lining piece would only cover part of pieces 21 and 22 and therefore Examiner has interpreted the limitation to mean the lining piece only needs to cover at least one piece of the set.
Claim 3 is indefinite as it recites, “wherein side edges of the lining piece are coupled to the set of basic pattern pieces via an adhesive.” It is unclear if the lining piece is coupled to each of the pattern pieces in the set of basic pattern pieces or if the lining pieces only needs be coupled to one of the pieces. For purposes of examination, Examiner has interpreted the limitation to mean the lining piece is coupled to at least one piece of the set of pattern pieces via an adhesive.
Claim 4 is indefinite as it recites, “wherein a bottom part of the lining piece is coupled to the set of basic pattern pieces along a third connection line via zigzag stitching.” It is unclear if the lining piece is coupled to each of the pattern pieces in the set of basic pattern pieces or if the lining pieces only needs be coupled to one of the pieces. For purposes of examination, Examiner has interpreted the limitation to mean the lining piece is coupled to at least one piece of the set of pattern pieces along a third connection line via zigzag.
Claim 6 is indefinite as it recites, “wherein the lining piece is coupled to the at least one extension piece along a second connection line via a zigzag stitch”. As claim 1 recites, “a lining piece stitched to the at least one extension piece along a top part of the lining piece” and as the only disclosed connection of the lining to the extension piece is at the second connection line 294 (see paras. 0060 and 0106), it is unclear if the second connection line and zigzag stitch are referring to the stitching at the top part of the lining piece or to a different/additional stitching/connection line. For purposes of examination, Examiner has interpreted the second connection line and zigzag stitch to be referring to the stitching at the top part of the lining piece.
Claim 9 is indefinite as it recites, “comprising two extension pieces respectively coupled to the set of basic pattern pieces on a left side and on a right side of the heel cord region of the wearer when in use.” As claim 1 recites, “at least one extension piece”, it is unclear if the now claimed “two extension pieces” are in addition to the at least one extension pieces of if the at least one extension piece comprises a first extension piece and a second extension piece.
Claim 11 is indefinite as it recites, “wherein the at least one extension piece is configured to cover more than half of the ankle region of the wearer when in use.” It is unclear how one of ordinary skill can ascertain what is included or excluded in the ankle region of a wearer and how to determine if more than half of the region is covered.
Claim 12 is indefinite as it recites, “wherein the at least one extension piece is configured to follow a lower edge of the ankle region of the wearer without covering the ankle when in use.” It is unclear how one of ordinary skill can ascertain what is included or excluded in the ankle region of a wearer and therefore unclear as to what constitutes the lower edge of such a region. Thus it is unknown one can determine if the extension pieces follows such an edge.
Claim 13 is indefinite as it recites, “wherein the set of basic pattern pieces further comprises a lateral pattern, a medial pattern, a bootie insole pattern, and a bootie bottom gasket configured to seam-seal the bottom area.” First, if the set of basic pattern pieces “further” comprises the various pieces, it is unclear what else the set of basic pattern pieces includes. Examiner respectfully suggests deleting the term “further”. However, it is unclear what is meant by a lateral pattern, a medial pattern, and a bootie insole pattern as a pattern is a design and not a completed structure. Examiner respectfully suggests amending to recite panels instead of a pattern.
Claim 14 is indefinite as it recites, “wherein at least part of the membrane of the layered structure is configured to be freely floating.” As the membrane is not shown, nor is its location within the layered structure shown, it is unclear how the membrane is freely floating and what it is freely floating in relation to. Since paras. 0069-0070 recite that the membrane can be freely floating with respect to the outer shell, Examiner has interpreted the limitation that the membrane is configured to be freely floating with respect to the upper of the footwear.
Claim 15 is indefinite as it recites, “wherein the layered structure comprises, as measured from an inside to an outside of the bootie when in use, a textile lining, a membrane layer, a backer knit, and an upper material.” As the layered structure is not shown and as claim 1 recites the layered structure comprising a membrane, the layers of the layered structure are unclear. Para. 0022 recites a similar limitation without further explanation and para. 0071 discloses more of the layered structure where the layered structure is a textile lining, a membrane and a knit or woven backer. It is unclear if “a textile lining” is referring to the lining piece or an additional layer of the pattern pieces, and it is unclear if “a membrane layer” is referring to the membrane already claimed. Finally, it is unclear how the pattern pieces have “an upper material”. The only additional mention of the upper material in the specification aside from para. 0022 is para. 0072 where the upper material is the material of the upper of the footwear and not the pattern pieces of the bootie. For purposes of examination, Examiner has interpreted the limitation to mean the bootie from inside to outside comprises the lining piece, the membrane, and a backer knit and the backer knit is configured to contact an upper material of the upper of the footwear.
Claim 16 is indefinite as it recites, “An upper for an article of footwear comprising a bootie according to claim 1 and an outer shell.” As claim 1 already recites an upper, an article of footwear, and a bootie, it is unclear if claim 16 is referring to the same upper, article of footwear, and bootie. Further, it is unclear how the outer shell differs from the upper. Examiner respectfully suggests amending to write the claim in long form instead of shorthand.
Claim 17 is indefinite as it recites, “A shoe comprising an upper according to claim 16.” As claim 1 already recites an upper and an article of footwear, and claim 16 also recites an upper and an article of footwear, it is unclear if claim 16 is referring to the same upper in claims 1 and/or 16 and if “a shoe” is referring to the article of footwear or a different/additional structure. Examiner respectfully suggests amending to write the claim in long form instead of shorthand.
Claim Rejections - 35 USC § 103
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 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) 1, 11-12, 14, and 17-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Challe (US 2004/0205985) in view of Covatch (US 5964047).
Regarding claim 1, Challe discloses a bootie (24/47/40) for an upper (21/33/31) of an article of footwear (1) comprising: a set of basic pattern pieces (41/42/47) comprising a layered structure (see paras. 0030-0031), at least one extension piece (34) comprising a thinner and more elastic material than a material of the set of basic pattern pieces (as 34 is made of fine-meshed elastic material (Lycra), it is therefore thinner and more elastic than the layered structure of the basic pattern pieces), wherein the at least one extension piece at least partially defines a top line of the bootie (as understood from Fig. 2) at an ankle region of a wearer when in use (as understood from Fig. 3), and wherein the at least one extension piece is connected to the set of basic pattern pieces along at least one first connection line (connection line at 45/46, see para. 0036).
Challe does not expressly disclose the layered structure comprising at least one membrane; and a lining piece stitched to the at least one extension piece along a top part of the lining piece, such that the at least one extension piece couples the set of basic pattern pieces and the lining piece, and wherein the lining piece covers the at least one extension piece and the set of basic pattern pieces on the inside of the bootie when in use, such that the lining piece covers the at least one first connection line.
Covatch teaches waterproof footwear with a bootie (12) wherein the layered structure (36/38/40 of the outer bootie 14) comprising at least one membrane (40, see col. 3, lines 44-50); and a lining piece (inner bootie 16) stitched (via 31) to the at least one extension piece (upper portion of 14) along a top part of the lining piece (see Fig. 2).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add a membrane to the layered structure of the basic pattern pieces and a connected inner lining to the top of the bootie of Calle, as taught by Covatch, in order to provide an insulating layer and a vapor permeable waterproof membrane to protect the wearer’s foot.
When used in combination, as the lining piece (16 of Covatch) is stitched to the upper part of the bootie, then it would therefore be stitched to the at least one extension piece (34 of Challe), such that the at least one extension piece couples the set of basic pattern pieces and the lining piece (as the extension piece is stitched to the pattern pieces and the lining piece), and wherein the lining piece covers the at least one extension piece and the set of basic pattern pieces on the inside of the bootie when in use (as the lining piece lines the entire inside of the bootie), such that the lining piece covers the at least one first connection line (as the lining piece lines the entire inside of the bootie).
Regarding claim 11, the modified footwear of Challe discloses wherein the at least one extension piece is configured to cover more than half of the ankle region of the wearer when in use (as can be seen in Fig. 1).
Regarding claim 12, the modified footwear of Challe discloses wherein the at least one extension piece is configured to follow a lower edge of the ankle region of the wearer without covering the ankle when in use (as the extension piece is capable of being folded downward so that the ankle is not covered).
Regarding claim 14, the modified footwear of Challe discloses wherein at least part of the membrane of the layered structure is configured to be freely floating (as best as can be understood based on the 35 USC 112(b) rejection above, as seen the membrane is not directly to the upper and is only coupled via the extension piece in the modified footwear, therefore at least a portion of it is free floating with respect to the upper).
Regarding claim 16, the modified footwear of Challe discloses wherein an upper (33/31/20) for an article of footwear (1) comprising a bootie (40/34) according to claim 1 (see above) and an outer shell (20).
Regarding claim 17, the modified footwear of Challe discloses a shoe (1) comprising an upper (33/31/20) according to claim 16 (see above).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined references of Challe and Covatch, as applied to claim 1 above, and further in view of Ziccarelli (US 2006/0137223).
Regarding claim 2, the modified bootie of Challe discloses all the limitations of claim 1, but does not expressly disclose wherein a material of the lining piece has a higher elasticity than the material of the set of basic pattern pieces.
Ziccarelli teaches footwear with a lining piece (12) wherein a material of the lining piece (12) has a higher elasticity than the material of the outer layer surrounding the lining (layer 14) (see para. 0017 where one or the other may be more elastic).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention make the lining of a more elastic material than the set of pattern pieces of the modified bootie of Challe, as taught by Ziccarelli, so that the lining piece “is stretched over or pressed against the user's foot due to a greater elasticity of the liner… Alternately stated, the liner… squeezes the foot and conforms the liner to contours of the foot. The aspects with a more elastic liner… are useful for situations in which it is desirable to maintain a closer contact between a user's foot and the liner.”
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined references of Challe and Covatch, as applied to claim 1 above, and further in view of Issler (US 2023/0019534).
Regarding claim 6, the modified bootie of Challe discloses wherein the lining piece (16 of Covatch) is coupled to the at least one extension piece (34) along a second connection line via stitching (31 of Covatch), and wherein the lining piece and the at least one extension piece are abutted (as abut simply means to lie adjacent and if they are stitched together, they are abutted), but does not expressly disclose wherein the stitching is a zigzag stitch.
Issler teaches waterproof shoes wherein bootie components (7/8/6) are stitched together along connection lines via zigzag stitching (16, 18, 33) (see paras. 0025, 0031, and 0038).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to stitch the lining piece to the extension piece of the modified bootie of Challe, with zigzag stitching, as taught by Issler, as “Zig-Zag stitches beneficially increase the strength of the stitch and give a tighter more water-resistant seam” (see para. 0025).
Claim(s) 1, 7, 11-14, and 17-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over the Figs. 1a-4 of the instant application 19/402343 (hereafter “Adidas”) in view of Crist (US 2024/0245169).
Regarding claim 1, Adidas discloses a bootie (1/1”, Figs. 1a-4, see para. 0078 where Figs. 1a-4 are “known constructions” and therefore admitted prior art, see MPEP 2152.03) for an upper (3/15) of an article of footwear (3/4/15) comprising: a set of basic pattern pieces (11-15, see Fig. 2) comprising a layered structure (see paras. 0085), at least one extension piece (16) comprising a more elastic material than a material of the set of basic pattern pieces (see para. 0086), wherein the at least one extension piece at least partially defines a top line of the bootie (as shown in Figs. 1a-1b) at an ankle region of a wearer when in use (as understood from Figs. 1a-1b), and wherein the at least one extension piece is connected to the set of basic pattern pieces along at least one first connection line (191, see para. 0082).
Adidas does not expressly disclose wherein the material of the extension piece is thinner than a material of the set of basic pattern pieces; and a lining piece stitched to the at least one extension piece along a top part of the lining piece, such that the at least one extension piece couples the set of basic pattern pieces and the lining piece, and wherein the lining piece covers the at least one extension piece and the set of basic pattern pieces on the inside of the bootie when in use, such that the lining piece covers the at least one first connection line.
However, as Adidas discloses that the material of the extension piece may not have the membrane (see para. 0086), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the same material as the basic pattern pieces of Adidas but without the membrane therefore allowing the material to be thinner and more elastic in order to create an aesthetically cohesive bootie with already sourced materials and as such an arrangement of a thinner material would have at least have been obvious to try as it only involves choosing from a finite number of identified, predictable solutions (thinner, the same as, or thicker), with a reasonable expectation of success (capable as acting as a collar top). See MPEP 2143 E.
The modified bootie of Adidas does not expressly disclose comprising a lining piece stitched to the at least one extension piece along a top part of the lining piece, such that the at least one extension piece couples the set of basic pattern pieces and the lining piece, and wherein the lining piece covers the at least one extension piece and the set of basic pattern pieces on the inside of the bootie when in use, such that the lining piece covers the at least one first connection line.
Crist teaches waterproof footwear comprising a lining piece (310) stitched (via 350) to the at least one extension piece (406) along a top part of the lining piece (see Fig. 3A), such that the at least one extension piece couples the set of basic pattern pieces and the lining piece (as the extension piece is stitched to 104 at 352 and the lining piece at 350), and wherein the lining piece covers the at least one extension piece and the set of basic pattern pieces on the inside of the bootie when in use (as can be seen in Fig. 3A), such that the lining piece covers the at least one first connection line (as seen in Fig. 3A).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add a connected inner lining to the top of the extension piece of the modified bootie of Adidas, as taught by Crist, in order to provide a the user with a fabric against the foot of the user instead of a membrane, thereby increasing the comfort of the bootie.
Regarding claim 7, the modified bootie of Adidas disclose wherein the at least one extension piece (16) is coupled to the set of basic pattern pieces (11-14) along the first connection line (191) via a zigzag stitch (see para. 0080), and wherein the at least one extension piece and the set of basic pattern pieces are abutted (see Fig. 1a, and as abut simply means lie adjacent).
Regarding claim 11, the modified footwear of Adidas discloses wherein the at least one extension piece is configured to cover more than half of the ankle region of the wearer when in use (as can be seen in Figs. 1a-1b, when worn on at least one wearer such as a child in an adult sized shoe, the extension piece would cover more than half of the ankle region).
Regarding claim 12, the modified footwear of Adidas discloses wherein the at least one extension piece is configured to follow a lower edge of the ankle region of the wearer without covering the ankle when in use (as can be seen in Figs. 1a-1b).
Regarding claim 13, the modified footwear of Adidas discloses wherein the set of basic pattern pieces further comprises a lateral pattern (11), a medial pattern (12), a bootie insole pattern (14), and a bootie bottom gasket (13) configured to seam-seal the bottom area (see para. 0087).
Regarding claim 14, the modified footwear of Adidas discloses wherein at least part of the membrane of the layered structure is configured to be freely floating (as best as can be understood based on the 35 USC 112(b) rejection above, as seen in Fig. 1b where the membrane is part of the pattern pieces and the least a portion of the heel of the pattern pieces is spaced from the upper).
Regarding claim 16, the modified footwear of Adidas discloses wherein an upper (3/15) for an article of footwear (3/4/15) comprising a bootie (1/1’) according to claim 1 (see above) and an outer shell (3).
Regarding claim 17, the modified footwear of Adidas discloses a shoe (3/4/15) comprising an upper (3/15) according to claim 16 (see above).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined references of Adidas and Crist, as applied to claim 1 above, and further in view of Ziccarelli.
Regarding claim 2, the modified bootie of Adidas discloses all the limitations of claim 1, but does not expressly disclose wherein a material of the lining piece has a higher elasticity than the material of the set of basic pattern pieces.
Ziccarelli teaches footwear with a lining piece (12) wherein a material of the lining piece (12) has a higher elasticity than the material of the outer layer surrounding the lining (layer 14) (see para. 0017 where one or the other may be more elastic).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the lining of a more elastic material than the set of pattern pieces of the modified bootie of Adidas, as taught by Ziccarelli, so that the lining piece “is stretched over or pressed against the user's foot due to a greater elasticity of the liner… Alternately stated, the liner… squeezes the foot and conforms the liner to contours of the foot. The aspects with a more elastic liner… are useful for situations in which it is desirable to maintain a closer contact between a user's foot and the liner.”
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined references of Adidas and Crist, as applied to claim 1 above, and further in view of Chen (US 2004/0083624).
Regarding claim 3, the modified footwear of Adidas discloses all the limitations of claim 1 above, but does not expressly disclose wherein side edges of the lining piece are coupled to the set of basic pattern pieces via an adhesive.
Chen teaches a waterproof shoe wherein side edges (at 71) of the lining piece (30) are coupled to the outer layer (70) via an adhesive (at 32, see Fig. 7, and para. 0030).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adhere side edges of the lining piece to the set of pattern pieces of the modified bootie of Adidas, as taught by Chen, in order to prevent the lining piece from shifting during movements of the wearer and causing discomfort to the foot.
Claim(s) 4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined references of Adidas and Crist, as applied to claim 1 above, and further in view of Issler.
Regarding claim 4, the modified bootie of Adidas discloses all the limitations of claim 1 above, but does not expressly disclose wherein a bottom part of the lining piece is coupled to the set of basic pattern pieces along a third connection line via zigzag stitching.
Issler teaches waterproof shoes wherein a bottom part (see Fig. 1) of the lining piece (8) is coupled to the set of basic pattern pieces (6/7) along a third connection line via zigzag stitching (18) (see para. 0031).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach the bottom part of the lining piece to the set of basic pattern pieces of the modified bootie of Adidas, as taught by Issler, in order to prevent the lining piece from moving and causing discomfort and “Zig-Zag stitches beneficially increase the strength of the stitch and give a tighter more water-resistant seam” (see para. 0025).
Regarding claim 6, the modified bootie of Adidas discloses wherein the lining piece (310 of Crist) is coupled to the at least one extension piece (16 of Adidas) along a second connection line (at 350 of Crist) via stitching (350 of Crist), and wherein the lining piece and the at least one extension piece are abutted (as seen in Fig. 3A of Adidas, as abut simply means to lie adjacent), but does not expressly disclose wherein the stitching is a zigzag stitch.
Issler teaches waterproof shoes wherein bootie components (7/8/6) are stitched together along connection lines via zigzag stitching (16, 18, 33) (see paras. 0025, 0031, and 0038).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to stitch the lining piece to the extension piece of the modified bootie of Adidas, with zigzag stitching, as taught by Issler, as “Zig-Zag stitches beneficially increase the strength of the stitch and give a tighter more water-resistant seam” (see para. 0025).
Claim(s) 5 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined references of Adidas and Crist, as applied to claim 1 above, and further in view of Koh (US 5946825).
Regarding claim 5, the modified bootie of Adidas discloses all the limitations of claim 1 above, but does not expressly disclose wherein the lining piece includes a collar top foam.
Koh teaches footwear with a lining wherein the lining piece (66) includes a collar top foam (130, see Fig. 4 and col. 7, lines 9-12).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add a top collar foam to the lining piece of the modified bootie of Adidas, as taught by Koh in order to allow the collar of the footwear to embrace the ankle of the wearer and firmly hold the foot to minimize motion between the footwear and foot (see col. 7, lines 10-25 of Koh).
Regarding claim 8, the modified bootie of Adidas discloses all the limitations of claim 1 above, but does not expressly disclose wherein the at least one extension piece defines a V-shaped recess at an open edge of the extension piece opposite the first connection line, the V-shaped recess being located at a center of the heel region of the wearer when in use, such that the at least one extension piece spares out at least part of the heel cord region of the wearer when in use.
Koh teaches footwear with a lining the at least one extension piece (62) defines a V-shaped recess at an open edge of the extension piece (as can be seen in Figs. 1-3) opposite the first connection line (where 62 is connected to 58), the V-shaped recess being located at a center of the heel region of the wearer when in use, such that the at least one extension piece spares out at least part of the heel cord region of the wearer when in use (as can be seen and understood from Figs. 1-3).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add a V-shaped recess to the extension piece of the modified bootie of Adidas, as taught by Koh, “so the collar 62 does not apply significantly greater pressure to the tendo achillis than to the rest of the ankle” (see col. 7, line 66 to col. 8, line 20 of Koh).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined references of Adidas and Crist, as applied to claim 1 above, and further in view of Trost (US 2021/0093045).
Regarding claim 15, the modified bootie disclose wherein the layer structure comprises, as measured form an inside to an outside of the bootie when in use a textile lining (lining piece 310 of Crist, disclosed as fabric), a membrane and a backer (layered structure, see para. 0085 of Adidas) and an upper material (outer shell 3), but does not expressly disclose wherein the backer is a backer knit, and wherein the membrane is inside the backer knit.
Trost teaches an inner layer for a shoe upper wherein the inner layer (300) has a waterproof membrane assembled between two knit textile (see para. 0064).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the backer a knit and to have the membrane between the textile lining and knit backer of the modified shoe of Adidas, as taught by Trost, in order to “provide a stretch suitable for a sock-fit shoe” (see para. 0064 of Trost) and to further protect the membrane from outside object as it would be under two different materials.
Allowable Subject Matter
Claims 9-10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The following is a statement of reasons for the indication of allowable subject matter: The claims are allowable over the prior art of record as none of them, alone or in combination, disclose a bootie having a set of panels with a layered structure having a membrane, an extension piece that is thinner and more elastic than the set of panels and is connected to the panel pieces and defines a top line of the bootie in an ankle region, and a lining piece with a top part stitched to the extension piece, the lining piece covers the extension piece and the set of panels on the inside of the bootie such that the lining pieces covers the connection of the extension pieces to the set of panels, and the extension piece having a centered V shaped recess opposite where it is connected to the set of panels, the extension piece being two pieces, one on a right side and one on a left side, and the lining pieces not being stitched to the extension pieces in the V shaped recess. The closest prior art is Challe, Covatch, Adidas, Crist, and Koh. In various combinations, the closest prior art teaches all the limitation except the extension piece being two pieces, one on a right side and one on a left side, and the lining pieces not being stitched to the extension pieces in the V shaped recess. Modifying Challe, Covatch, Adidas, Crist, or Koh to have the claimed structure would be hindsight reconstruction based on Applicant’s own disclosure, therefore the claims are allowable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Chen (US 2004/0049942) teaches waterproof breathable footwear with a lining pieces connected to the extension piece and the extension piece connected to the pattern pieces, and what appears to be a foam at the collar, Healy (US 2015/0150335) teaches a waterproof show with a bootie having an inner lining, and Baude (US 5802742) and Sheets (US 2003/0009908) each teaching a bootie made with a set of pattern pieces.
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/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732
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