www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/692,555
`
`11/22/2019
`
`Brian CHRISTENSEN
`
`2073.3760002
`
`7423
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`(Reebok)
`1101 K Street, NW
`
`SMITH, HALEY ANNE
`
`WASHINGTON, DC 20005
`
`3732
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/20/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`e-office @sterneKessler.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`16/692,555
`Examiner
`HALEY A SMITH
`
`Applicant(s)
`CHRISTENSEN etal.
`Art Unit
`AIA (FITF) Status
`3732
`Yes
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 05/21/2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-18 and 21-23 is/are pending in the application.
`)
`Claim(s)
`Sa) Of the above claim(s) 14-15 is/are withdrawn from consideration.
`() Claim(s)__is/are allowed.
`Claim(s) 1-13,16-18 and 21-23 is/are rejected.
`[) Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)( The specification is objected to by the Examiner.
`11)M The drawing(s) filed on 11/22/2019 is/are: a) accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)2) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)() None ofthe:
`b)( Some**
`a) All
`1.1.) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240913
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined under the first
`
`inventor to file provisions of the AIA.
`
`Response to Amendment
`
`2.
`
`The amendmentsfiled on 05/21/2024 have been entered. Claims 1-18 and 21-23 are currently
`
`pendingin the application, with Claims 14 and 15 withdrawn, Claim 20 newly canceled, Claims 22-23
`
`newly added, and Claims 1, 4, 6-10, and 18 newly amended Applicant’s amendmentsto the Claims have
`
`overcome each and every 35 U.S.C. 112(b) previously set forth in the Non-final Office Action mailed
`
`11/22/2023.
`
`Claim Rejections - 35 USC § 103
`
`3.
`
`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 ordinaryskill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
`
`4.
`
`Claim(s) 1, 4, 6-10, 17-18, and 21 is/are rejected under 35 U.S.C. 103 as being obvious over
`
`Adami et al. (US 2014/0237858) in view of Lee et al. (US 2012/0186102).
`
`Regarding Claim 1, Adami et al. teaches an upper (1014) for an article of footwear (1010), the
`
`upper comprising: a first upper panel (1061); a second upper panel (1062); and first a single, continuous
`
`extruded component(1071, 1038) disposed along a border between the first upper panel and the
`
`second upper panel(fig. 17 shows the extruded component (1071, 1038) being disposed along a border
`
`between the first and second upper panels), wherein the first upper panel and the second upper panel
`
`are configured to extend above a midsole (1012) of the article of footwear (figs. 16 and 17 show the first
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 3
`
`(1061) and second (1062) panels extending above the midsole (1012)), and wherein the single,
`
`continuous extruded componentis disposed on only one side of the first upper panel and the second
`
`upper panel(fig. 17 shows the extruded component(1034) disposed only on oneside of the first and
`
`second upperpanels (1061, 1062) and joins the first upper panel to the second upper panel (fig. 17
`
`showsthe upper extruded component(1071, 1038) being the only joining member between the first
`
`and second upper panels; paragraph [0079], “inelastic reinforcing material 1034 may be configured to
`
`surround one or more unreinforced sections of elastic skin material 1029 of upper 1014”).
`
`Adami et al. does not teach a second,single, continuous extruded component disposed across
`
`the first upper panel and the second upper panel but not along a border between the first upper panel
`
`and the second upper panel.
`
`Attention is drawn to Lee et al., which teaches an analogous upperfor an article of footwear.
`
`Lee et al. teaches an upper for an article of footwear (fig. 5 shows an upper for an article of footwear),
`
`the upper comprising: a first upper panel {see annotated Fig.}; a second upper panel (see annotated
`
`Fig.}; and a second single, continuous extruded component(22) disposed acrossthe first upper panel
`
`and the second upper panel but not along a border between the first upper panel and the second upper
`
`panel (annotated figs. 2 and 5 show the second single extruded component (22) disposed acrossthe first
`
`and second upper panels), wherein the first upper panel and the second upper panel configured to
`
`extend above a midsole of the article of footwear.
`
`Examiner notes that “an extruded component”is being treated as a product-by-process
`
`limitation. The determination of patentability in a product-by-process claim is based on the product
`
`itself, even though the claim may belimited and defined by the process. Thatis, the product in sucha
`
`claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior
`
`product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ964, 966 (Fed. Cir.
`
`1985). A product-by-processlimitation adds no patentable distinction to the claim, and is unpatentable
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 4
`
`if the claimed product is the same as a product of the prior art (see MPEP § 2113). In the instant case,
`
`the inelastic reinforcing material (1034 generally, which includes 1071, 1038) of Adami et al. and the
`
`second plate (22) of Lee et al. are considered as equivalent to the “extruded component,” as they have
`
`the same structure of the instant extruded material as claimed and are formed of a thermoplastic
`
`material which is capable of being extruded, even though it is formed by a different method (Adami et
`
`al. paragraph [0044], “Inelastic reinforcing material 34 may include textiles, thermoplastic, leather,
`
`synthetic leather, vinyl, and/or any other suitable inelastic material”; Lee et al. paragraph [0034] “The
`
`second plate 22 includes a second medium 221, a second decorative layer 222, and a second thermosol
`
`layer 223 therein...The second medium 221 may be constructed of thermoplastic polyurethane (TPU).
`
`The second decorative layer 222 may be constructed of polyurethane (PU) and hasat least one color
`
`and design”).
`
`Therefore, it would have been obvious to one ofordinaryskill in the art before the effective
`
`filing date of the claimed invention to modify Adami et al. to include the teachings of Lee et al. such that
`
`the upper includes a second, single, continuous extruded componentdisposed acrossthe first upper
`
`panel and the second upper panel but not along a border between the first upper panel and the second
`
`upper panelso as to add aesthetic appeal to the shoe upper with additional color and design ([0034] The
`
`second plate 22 includes a second medium 221, a second decorative layer 222, and a second thermosol
`
`layer 223 therein. The second medium 221 is disposed between the second decorative layer 222 and the
`
`second thermosol layer 223. The second medium 221 may be constructed of thermoplastic
`
`polyurethane (TPU). The second decorative layer 222 may be constructed of polyurethane (PU) and has
`
`at least one color and design,” wherein the second plate is considered equivalent to the second
`
`extruded component). See also MPEP 2144.01 I.
`
`Regarding Claim 4, modified Adami et al. teachesall of the limitations of the upper of Claim 1,
`
`as discussed in the rejections above. Adami et al. further teaches wherein the first extruded component
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 5
`
`(1071, 1038) forms a portion of a closure system for the article of footwear (fig. 17 shows the extruded
`
`component(1071, 1038) having apertures so as to form a portion of the closure system for the
`
`footwear).
`
`Regarding Claim 6, modified Adami et al. teachesall of the limitations of the upper of Claim 1,
`
`as discussed in the rejections above. Adami et al. further teaches wherein the first extruded component
`
`(1071, 1038) is disposed on an exterior surface of the first upper panel (1061) and the second upper
`
`panel (1062) (fig. 17 showsthe first extruded component (1071, 1038) being disposed on an exterior
`
`surface of the first (1061) and second (1062) upper panels).
`
`Regarding Claim 7, modified Adami et al. teachesall of the limitations of the upper of Claim 1,
`
`as discussed in the rejections above. Adami et al. further teaches wherein the first extruded component
`
`(1071, 1038) forms an exterior surface of the upper (fig. 17 showsthe first extruded component(1071,
`
`1038) forming an exterior surface of the upper).
`
`Regarding Claim 8, modified Adami et al. teachesall of the limitations of the upper of Claim 1,
`
`as discussedin the rejections above. Adami et al. further teaches a third upper panel (1063); and a third
`
`extruded component(1074) disposed along a border between the first upper panel (1061) and the third
`
`upper panel (1063), wherein the third extruded componentjoins the first upper panel to the third upper
`
`panel (figs. 16 and 17 show the third extruded component(1074) joining the first (1061) and third
`
`(1063) upper panels).
`
`Regarding Claim 9, Adami et al. teaches an article of footwear (1010) comprising: a sole (1012);
`
`an upper (1014) having a plurality of panels (1029, collectively); and an upper extruded component
`
`(1034) joining two adjacent panels (1061, 1062) of the plurality of panels together at a border between
`
`the two adjacent panels; wherein the extruded componentis disposed on only one side of the two
`
`adjacent panels (fig. 17 shows the extruded component(1034) disposed at the border between and only
`
`on oneside of the two adjacent panels (1061, 1062)), and wherein the two adjacent panels are joined
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 6
`
`together at a border between the two adjacent panels only by the first upper extruded component(fig.
`
`17 shows the upper extruded componentbeing the only joining member between adjacent panels and
`
`joining the panels at a border between the two adjacent panels; paragraph [0079], “inelastic reinforcing
`
`material 1034 may be configured to surround one or more unreinforced sections of elastic skin material
`
`1029 of upper 1014”; paragraph [0082] Any suitable method may be used to secure these components
`
`together” and paragraph [0026] clarifies that this may include thermal bonding, which would allow the
`
`extruded componentto be the only joining member between panels).
`
`Adami et al. does not teach a second upper extruded componentdisposed across the two
`
`adjacent panels but not along a border between the two adjacent panels.
`
`Attention is drawnto Lee et al., which teaches an analogous upperfor an article of footwear.
`
`Lee et al. teaches an upper for an article of footwear (fig. 5 shows an upper for an article of footwear),
`
`the upper having a plurality of panels (s¢é annotated Fig.} (Annotated figs. 2 and 5 show the upper
`
`having a plurality of panels}; and a second upper extruded component (22) disposed across the two
`
`adjacent panels but not along a border between the two adjacent panels (annotated figs. 2 and 5 show
`
`the second single extruded component(22) disposed acrossthe first and second upper panels), wherein
`
`the first upper panel and the second upper panel configured to extend above a midsole of the article of
`
`footwear.
`
`Examiner notesthat “an extruded component”is being treated as a product-by-process
`
`limitation. The determination of patentability in a product-by-process claim is based on the product
`
`itself, even though the claim may belimited and defined by the process. That is, the product in sucha
`
`claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior
`
`product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ964, 966 (Fed. Cir.
`
`1985). A product-by-processlimitation adds no patentable distinction to the claim, and is unpatentable
`
`if the claimed product is the same as a product of the prior art (see MPEP § 2113). In the instant case,
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 7
`
`the inelastic reinforcing material (1034 generally, which includes 1071, 1038) of Adami et al. and the
`
`second plate (22) of Lee et al. are considered as equivalent to the “extruded component,” as they have
`
`the same structure of the instant extruded material as claimed and are formed of a thermoplastic
`
`material which is capable of being extruded, even though it is formed by a different method (Adami et
`
`al. paragraph [0044], “Inelastic reinforcing material 34 may include textiles, thermoplastic, leather,
`
`synthetic leather, vinyl, and/or any other suitable inelastic material”; Lee et al. paragraph [0034] “The
`
`second plate 22 includes a second medium 221, a second decorative layer 222, and a second thermosol
`
`layer 223 therein...The second medium 221 may be constructed of thermoplastic polyurethane (TPU).
`
`The second decorative layer 222 may be constructed of polyurethane (PU) and hasat least one color
`
`and design”).
`
`Therefore, it would have been obvious to one ofordinaryskill in the art before the effective
`
`filing date of the claimed invention to modify Adami et al. to include the teachings of Lee et al. such that
`
`the upper includes a second upper extruded componentdisposed across the two adjacent panels but
`
`not along a border between the two adjacent panels so as to add aesthetic appeal to the shoe upper
`
`with additional color and design (paragraph [0034] The second plate 22 includes a second medium 221,
`
`a second decorative layer 222, and a second thermosol layer 223 therein. The second medium 221 is
`
`disposed between the second decorative layer 222 and the second thermosol layer 223. The second
`
`medium 221 may be constructed of thermoplastic polyurethane (TPU). The second decorative layer 222
`
`may be constructed of polyurethane (PU) and has at least one color and design,” wherein the second
`
`plate is considered equivalent to the second extruded component). See also MPEP 2144.01 I.
`
`Regarding Claim 10, modified Adami et al. teachesall of the limitations of the article of
`
`footwear of Claim 9, as discussed in the rejections above. Adami et al. further teaches wherein the first
`
`upper extruded component(1034) joins each of the plurality of panels (1029) to adjacent panels, and
`
`wherein eachof the plurality of panels are joined together only by the first upper extruded component
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 8
`
`at the border (fig. 17 showsthe plurality of panels being joined together only by the upper extruded
`
`component; paragraph [0079]. “inelastic reinforcing material 1034 may be configured to surround one
`
`or more unreinforced sections of elastic skin material 1029 of upper 1014. For example, as shownin FIG.
`
`16, unreinforced sections of upper 1014 mayincludeafirst elastic panel 1061, a second elastic panel
`
`1062, a third elastic panel 1063, a fourth elastic panel 1064, and a fifth elastic panel 1065. These elastic
`
`panels may be secured betweenreinforcing material sections”).
`
`Regarding Claim 17, modified Adami et al. teachesall of the limitations of the article of
`
`footwear of Claim 9, as discussed in the rejections above. Adami et al. further teaches wherein at least
`
`one panel of the plurality of panels (1029) comprises a heel counter (1066) (figs. 16 and 17 shows the
`
`panel (1066) being a heel counter).
`
`Regarding Claim 18, modified Adami et al. teachesall of the limitations of the article of
`
`footwear of Claim 9, as discussed in the rejections above. Adami et al. further teaches wherein the first
`
`upper extruded component(1034) forms a portion of a closure system (see annotated Fig.) for the
`
`upper (1014) (annotated fig. 17 shows a portion of the first upper extruded component (1034) forming
`
`the apertures of the closure system for the article of footwear).
`
`Regarding Claim 21, modified Adami et al. teachesall of the limitations of the article of
`
`footwear of Claim 9, as discussed in the rejections above. Adami et al. further teaches wherein the
`
`extruded component(1034) is disposed on an outer side of the two adjacent panels (1061, 1062) (fig. 17
`
`showsthe extruded component (1034) being disposed on the outer side of the two adjacent panels
`
`(1061, 1062)).
`
`Regarding Claim 22, Adami et al. teaches an article of footwear (1010), comprising: an upper
`
`(1014), comprising: a first upper panel (1061); a second upper panel (1062); and first a single,
`
`continuous extruded component (1071, 1038) disposed along a border between the first upper panel
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 9
`
`and the second upper panel (fig. 17 shows the extruded component (1071, 1038) being disposed along a
`
`border between the first and second upper panels).
`
`Adami et al. does not teach a second single, continuous extruded component disposed across
`
`the first upper panel but not along a border of the first upper panel.
`
`Attention is drawnto Lee et al., which teaches an analogous upperfor an article of footwear.
`
`Lee et al. teaches an upper for an article of footwear (fig. 5 shows an upper for an article of footwear),
`
`the upper comprising: a first upper panel {see annotated Fig.}; a second upper panel (see annotated
`
`Fig.}; and a second single, continuous extruded component(22) disposed acrossthe first upper panel
`
`and the second upper panel but not along a border between the first upper panel and the second upper
`
`panel (annotated figs. 2 and 5 show the second single extruded component (22) disposed acrossthe first
`
`and second upper panels), wherein the first upper panel and the second upper panel configured to
`
`extend above a midsole of the article of footwear.
`
`Examiner notes that “an extruded component”is being treated as a product-by-process
`
`limitation. The determination of patentability in a product-by-process claim is based on the product
`
`itself, even though the claim may be limited and defined by the process. That is, the product in sucha
`
`claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior
`
`product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ964, 966 (Fed. Cir.
`
`1985). A product-by-processlimitation adds no patentable distinction to the claim, and is unpatentable
`
`if the claimed product is the same as a product of the prior art (see MPEP § 2113). In the instant case,
`
`the inelastic reinforcing material (1034 generally, which includes 1071, 1038) of Adami et al. and the
`
`second plate (22) of Lee et al. are considered as equivalent to the “extruded component,” as they have
`
`the same structure of the instant extruded material as claimed and are formed of a thermoplastic
`
`material which is capable of being extruded, even though it is formed by a different method (Adami et
`
`al. paragraph [0044], “Inelastic reinforcing material 34 may include textiles, thermoplastic, leather,
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 10
`
`synthetic leather, vinyl, and/or any other suitable inelastic material”; Lee et al. paragraph [0034] “The
`
`second plate 22 includes a second medium 221, a second decorative layer 222, and a second thermosol
`
`layer 223 therein...The second medium 221 may be constructed of thermoplastic polyurethane (TPU).
`
`The second decorative layer 222 may be constructed of polyurethane (PU) and hasat least one color
`
`and design”).
`
`Therefore, it would have been obvious to one ofordinaryskill in the art before the effective
`
`filing date of the claimed invention to modify Adami et al. to include the teachings of Lee et al. such that
`
`the upper includes a second, single, continuous extruded componentdisposed acrossthe first upper
`
`panel and the second upper panel but not along a border between the first upper panel and the second
`
`upper panelso as to add aesthetic appeal to the shoe upper with additional color and design ([0034] The
`
`second plate 22 includes a second medium 221, a second decorative layer 222, and a second thermosol
`
`layer 223 therein. The second medium 221 is disposed between the second decorative layer 222 and the
`
`second thermosol layer 223. The second medium 221 may be constructed of thermoplastic
`
`polyurethane (TPU). The second decorative layer 222 may be constructed of polyurethane (PU) and has
`
`at least one color and design,” wherein the second plate is considered equivalent to the second
`
`extruded component). See also MPEP 2144.01 I.
`
`Regarding Claim 23, modified Adami et al. teachesall of the limitations of the article of
`
`footwear of Claim 22, as discussed in the rejections above. Adami et al. further teaches wherein the first
`
`single, continuous extruded component(1034) is disposed on only one side of the first upper panel
`
`(1061) and the second upper panel (1062) (fig. 17 shows the extruded component (1034) being disposed
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 11
`
`on the outer side of the first and second upper panels (1061, 1062))
`
`me.
`coeure
`syslam Ss“4072
`
`1029
`
`
`1042
`
`1034
`
`pone
`po PG
`
`‘858
`Adami et al.
`annotated partial fig. 17
`
`Lee efal. “102
`annotated fig. 5
`
`upper panel
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 12
`
`
`
`oo
`
`Pet bs
`
`a
`
`“stg ‘poet
`
`_* first upper
`aN FASS panel
`See a
`
`| \ second
`_upper panel
`
`
`
`
`
`Set
`
`oo
`
`x WD
`
` re
`chest al, 102
`“annotated fig. 2
`
`5.
`
`Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being obvious over Kiederle et al. (US
`
`2019/0365045) in view of Lee et al. (US 2012/0186102) and Joneset al. (US 2014/0020192).
`
`Regarding Claim 1, Kiederle et al. teaches an upper (101) for an article of footwear (100), the
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`upper comprising: a first upper panel (210); a second upper panel (211); and a single, continuous
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`extruded componentdisposed along a border between the first upper panel (210) and the second upper
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`panel (211), and wherein the single, continuous extruded component(3) is disposed on only oneside of
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`the first upper panel and the second upper panel (figs. 2B, 2C and 3C show the extruded component
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`being disposed only on the outer side of the first and second upper panels) and joins the first upper
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`panel to the second upper panel (paragraph [0072], “the one or more seams 150 are covered by the at
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`least one three-dimensional build layer 3-1 to 3-n which form a waterproofseal of the seam 150(cf.
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`waterproof seal 30 in FIG. 7). For example, one or moreof the build layers 3-1 to 3-n may cover the area
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`Application/Control Number: 16/692,555
`Art Unit: 3732
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`around the seam 150 only (cover the seam 150 including some side extension on each side of the seam
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`150 to create a “warm-up” zone for the sealing, i.e. a transition zone which creates waterproofness from
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`the side (sealing margin),” wherein fig. 3C shows the seam connecting the first (210) and second (211)
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`upper panels, therein the extruded componentis also joining the seams, further, as Kiederle et al
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`discloses the “at least one” 3D build layer, there can be a single layer, satisfying the “single, continuous”
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`limitation of the extruded component).
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`Kiederle et al. does not explicitly teach a second single, continuous extruded component
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`disposed acrossthe first upper panel and the second upper panel but not along a border between the
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`first upper panel and the second upper panel and wherein the first upper panel and the second upper
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`panel are configured to extend above a midsole of the article of footwear.
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`Attention is drawnto Lee et al., which teaches an analogous upperfor an article of footwear.
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`Lee et al. teaches an upper for an article of footwear (fig. 5 shows an upper for an article of footwear),
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`the upper comprising: a first upper panel {see annotated Fig.}; a second upper panel (see annotated
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`Fig.}; and a second single, continuous extruded component(22) disposed acrossthe first upper panel
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`and the second upper panel but not along a border between the first upper panel and the second upper
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`panel (annotated figs. 2 and 5 show the second single extruded component (22) disposed acrossthe first
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`and second upper panels), wherein the first upper panel and the second upper panel configured to
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`extend above a midsole of the article of footwear.
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`Examiner notes that “an extruded component”is being treated as a product-by-process
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`limitation. The determination of patentability in a product-by-process claim is based on the product
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`itself, even though the claim may belimited and defined by the process. Thatis, the product in sucha
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`claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior
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`product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ964, 966 (Fed. Cir.
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`1985). A product-by-processlimitation adds no patentable distinction to the claim, and is unpatentable
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`if the claimed product is the same as a product of the prior art (see MPEP § 2113). In the instant case,
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`the second plate (22) of Lee et al. is considered as equivalent to the “extruded component,” as it has the
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`same structure of the instant extruded material as claimed and is formed of a thermoplastic material
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`which is capable of being extruded, even thoughit is formed by a different method (Lee et al. paragraph
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`[0034] “The second plate 22 includes a second medium 221, a second decorative layer 222, anda
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`second thermosol layer 223 therein...The second medium 221 may be constructed of thermoplastic
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`polyurethane (TPU). The second decorative layer 222 may be constructed of polyurethane (PU) and has
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`at least one color and design”).
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`Attention is drawn to Jones et al., which teaches an analogous upper for an article of footwear.
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`Jones et al. teaches an upper (20) for an article of footwear, the upper comprising: a first upper panel
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`(20); a second upper panel (33) (paragraph [0104] discloses “upper 20 is then connected with Strobel-
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`stitch 34 to sockliner 33 to complete formation of upper 20 into a secondary shape,” therefore the
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`upper (20) and the sockliner (33) are obviously equivalent to the first and second upper panels); and an
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`extruded component(70) disposed alongthe first upper panel (fig. 3 shows the extruded component
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`(70) disposed along the first upper panel (20)), wherein the first upper panel (20) and the second upper
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`panel (33) extend above a midsole of the article of footwear (fig. 4 showsthe first (20) and second (33)
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`upper panels extending above a midsole of the article of footwear), and wherein the single, continuous
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`extruded componentis disposed on only one side of the first upper panel (fig.4 shows the extruded
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`component(70) disposed only on one side of the first upper panel).
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`Therefore, it would have been obvious to one ofordinaryskill in the art before the effective
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`filing date of the claimed invention to modify Adami etal. to include the teachings of Lee et al. such that
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`the upper includes a second, single, continuous extruded componentdisposed acrossthe first upper
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`panel and the second upper panel but not along a border between the first upper panel and the second
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`upper panelso as to add aesthetic appeal to the shoe upper with additional color and design ([0034] The
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`second plate 22 includes a second medium 221, a second decorative layer 222, and a second thermosol
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`layer 223 therein. The second medium 221 is disposed between the second decorative layer 222 and the
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`second thermosol layer 223. The second medium 221 may be constructed of thermoplastic
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`polyurethane (TPU). The second decorative layer 222 may be constructed of polyurethane (PU) and has
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`at least one color and design,” wherein the second plate is considered equivalent to the second
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`extruded component) (See also MPEP 2144.01 I) and further to modify Kiederle et al. to include the
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`teachings of Jones et al. such that the first upper panel and the second upper panel extend above a
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`midsole of the article of footwear so as to provide an additional layer between the wearer’s foot and the
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`sole, especially as the second upperlayer of Kiederle et al. is a strobel, however it is not explicitly
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`disclosed how the strobel is positioned relative to the midsole.
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`Regarding Claim 2, modified Kiederle et al. teachesall of the limitations of the upper of Claim 1,
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`as discussed in the rejections above. Kiederle et al. further teaches wherein the first extruded
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`component (3) comprises polyurethane (paragraph [0079], “the thermoplastic material 3 may include at
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`least one of polyurethane (TPU)”).
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`Regarding Claim 3, modified Kiederle et al. teachesall of the limitations of Claim 1, as discussed
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`in the rejections above. Kiederle et al. further teaches wherein a material of the first upper panel (210)is
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`different than a material of the second upper panel (211) (paragraph [0070] discloses “a bottom layer
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`2