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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06-26-2026 and 02-03-2026 are acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 “an insert member comprising a plate positioned between the inner layer and the outer layer” and “a first insert member positioned adjacent to an interior surface of the knitted component; and a second insert member positioned more interior to the article of footwear than the first insert member” and “an integrally knit element … and a first insert member … and a second insert member” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 is rejected because of the limitations “an insert member comprising a plate positioned between the inner layer and the outer layer” lacks support in the original specification which filed 12-10-2025; therefore such lack of detailed support in the original disclosure constitutes new matter.
Claim 2 is rejected because of the limitations “the inner layer comprises a sockliner” lacks support in the original specification which filed 12-10-2025; therefore such lack of detailed support in the original disclosure constitutes new matter.
Claim 8 is rejected because of the limitations “a first insert member positioned adjacent to an interior surface of the knitted component; and a second insert member positioned more interior to the article of footwear than the first insert member, wherein the knitted component comprises a thermoplastic polymer material that is fused, wherein the first insert member comprises a rigid reinforcement material, and wherein the second insert member comprises a thermoplastic material” lacks support in the original specification which filed 12-10-2025; therefore such lack of detailed support in the original disclosure constitutes new matter.
Claim 15 is rejected because of the limitations “an integrally knit element extending from an underfoot portion of the upper towards a collar of the upper; a first insert member comprising a rigid material; and a second insert member comprising a thermoplastic material” lacks support in the original specification which filed 12-10-2025; therefore such lack of detailed support in the original disclosure constitutes new matter.
Claims 8-15 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 8 is rejected because of the limitations “a second insert member positioned more interior to the article of footwear than the first insert member”. It is not clear how to understand the term more interior to the article of footwear.
Any remaining claims are rejected as depending from a rejected base claim.
In the art rejections below the claims have been treated as best understood by the examiner.
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) 1-6, 8-13, and 15-29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dua (2010/0154256).
Regarding claim 1, Dua discloses an article of footwear (figs 1-8), comprising:
an upper (member 30), comprising: a knitted component (member 40), comprising:
an outer layer (member 42 outside) forming an outer-facing portion of the upper;
an inner layer (member 23) forming an inner-facing portion of the upper;
an insert member (member 34) comprising a plate positioned between the inner layer and the outer layer, such that the plate extends along an underfoot portion of the upper (fig 5B),
wherein the knitted component comprises one or more fusible yarns that are fused to impart rigidity to the knitted component and conform to a shape of the insert member (para 0043).
Regarding claim 2, Dua discloses the inner layer comprises a sockliner (para 0018).
Regarding claim 3, Dua discloses the one or more fusible yarns comprise a thermoplastic polymer material (para 0043).
Regarding claim 4, Dua discloses an outsole cover (member 22) assembly attached to the knitted component at the underfoot portion.
Regarding claim 5, Dua discloses the outsole cover assembly is attached to the knitted component with a thermoplastic polymer material and/or with an adhesive (para 0051).
Regarding claim 6, Dua discloses one or more fluid-filled chambers (member 20, para 0018).
Regarding claim 8, Dua discloses an article of footwear (figs 1-8), comprising:
an upper (member 30), comprising: a knitted component (member 40) forming at least part of the upper;
a first insert member (member 34) positioned adjacent to an interior surface of the knitted component; and a second insert member (member 23) positioned more interior to the article of footwear than the first insert member,
wherein the knitted component comprises a thermoplastic polymer material that is fused (para 0043),
wherein the first insert member comprises a rigid reinforcement material (any material must have some degree of rigid reinforcement), and wherein the second insert member comprises a thermoplastic material (para 0043 and 0048).
Regarding claim 9, Dua discloses the first insert member is a plate (fig 5B).
Regarding claim 10, Dua discloses the thermoplastic polymer material of the knitted component that is fused imparts rigidity and conforms to a shape of the first insert member (para 0043).
Regarding claim 11, Dua discloses the upper includes a sockliner (para 0018).
Regarding claim 12, Dua discloses an outsole cover (member 22) assembly attached to the knitted component at an underfoot portion of the upper.
Regarding claim 13, Dua discloses one or more fluid-filled chambers (member 21, para 0018).
Regarding claim 15, Dua discloses an article of footwear (figs 1-8), comprising:
an upper (member 30), comprising: a knitted component (member 40), comprising:
an integrally knit element extending from an underfoot portion of the upper towards a collar of the upper (members 42-43);
a first insert member (member 34) comprising a rigid material (any material must have some degree of rigid reinforcement); and a second insert member comprising a thermoplastic material (para 0043 and 0048), wherein the integrally knit element comprises one or more fusible yarns that are fused (para 0048).
Regarding claim 16, Dua discloses the first insert member is a plate (fig 5B).
Regarding claim 17, Dua discloses the one or more fusible yarns that are fused impart rigidity to the knitted component and conform to the shape of the first insert member (para 0048).
Regarding claim 18, Dua discloses the upper comprises a sockliner (para 0018).
Regarding claim 19, Dua discloses one or more fluid-filled chambers (para 0018).
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) 7, 14, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dua (2010/0154256) as applied to claims 1, 8, and 15 above, and further in view of Scholz (2005/0198868).
Regarding claims 7 and 14 and 20, Dua teaches all limitations of the claims and further teaches an outsole (member 22) attached to the knitted component at the underfoot portion of the upper.
Scholz teaches a footwear having a plurality of spikes (member 31).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to modify the outsole of Dua by adding spikes, as taught by Scholz, in order to use for grass and turf-based sports, such as golf, rugby, hockey, football, and baseball, as well as climbing or the like.
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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BAO-THIEU L. NGUYEN
Primary Examiner
Art Unit 3732
/BAO-THIEU L NGUYEN/ Primary Examiner, Art Unit 3732
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