www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/692,555
`
`11/22/2019
`
`Brian CHRISTENSEN
`
`2073.3760002
`
`7423
`
`STE
`
`SL
`
`THIN&
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`(Reebok)
`1100 NEW YORK AVENUE, N.W.
`WASHINGTON,DC 20005
`
`SMITH, HALEY ANNE
`
`3732
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/05/2022
`
`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 DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 2 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of 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 11/22/2019.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)L) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on__; the restriction requirement and election have been incorporatedinto this action.
`4\0) 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*
`1-17 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj] Claim(s)
`is/are allowed.
`02 Claim(s
`s)___ is/are rejected.
`( Claim(s)
`is/are objected to.
`Claim(s) 1-17 are subject to 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://www.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)0) The drawing(s) filedon__ is/are: a)(J 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)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1.2 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) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220427
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
`
`Election/Restrictions
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`2.
`
`This application contains claims directed to the following patentably distinct species:
`
`e
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`Species 1, drawn to a sole structure having a base layer and additional layers of
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`extruded material deposited adjacent the sole, the number of layers varying along the
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`length of the sole, and an upper having one or more panels (Figs. 1-7)
`
`e
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`Species 2, drawn to a sole structure having extruded material in a controlled geometric
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`pattern and including non-extruded layers (Figs. 12-14)
`
`e
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`Species 3, drawn to a sole structure formed of a vacuum formed film, an extruded
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`componentdisposed on the vacuum formedfilm, and a non-extruded componentbeing
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`placed over the extruded component and the vacuum formedfilm (Figs. 24-28)
`
`e
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`Species 4, drawn to a sole structure made of extruded componentsand including
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`extruded components attached to the sole structure and extending up a side of the
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`armor (Fig. 33)
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`If Species 2 or 3 is chosen, a further election of sub-species is required between the following
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`sub-species of uppers:
`
`e
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`Sub-species A, drawn to an upper including three panels joined together by an extruded
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`componentextending along panel borders and across multiple panels (Figs. 8-9)
`
`e
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`Sub-species B, drawn to an upperincluding a plurality of panels joined together by an
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`extruded componentextending only along a border between panels (Figs. 10-11)
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 3
`
`e
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`Sub-species C, drawn to an upper including a nonbonded extruded segment and a non-
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`extruded segment comprising loops to receive laces (Figs. 16, 20, 34)
`
`e
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`Subspecies D, drawn to an upperincluding an extruded segment bonded to a mesh
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`material and a non-extruded segment comprising loops to receive laces (Figs. 17-18)
`
`e
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`Sub-species E, drawn to an upper including an extruded componentand a plurality of
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`non-extrudedstrips including a loop to receive laces (Fig. 19)
`
`e
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`Sub-species F, drawn to an upperincluding an extruded component and a non-extruded
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`yarn forming loopsto receive laces (Figs. 21-22)
`
`e
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`Sub-species G, drawn to an upper including an extruded component and a plurality of
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`non-extruded yarns forming loopsto receive laces (Fig. 23)
`
`e
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`Sub-species H, drawn to an upper with an upper support element bonded to an
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`attachmentportion via an extruded component, the attachment portion being attached
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`to the rest of the upper (Figs. 29-30, 32)
`
`e
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`Sub-species|, drawn to an upper with an upper support element bondedto a randing
`
`via an extruded component, the randing being attached to the rest of the upper (Fig. 31)
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`The species are independentor distinct because as disclosed the different species have
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`mutually exclusive characteristics for each identified species. In addition, these species are not obvious
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`variants of each other based on the current record.
`
`Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping
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`of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if
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`no generic claim is finally held to be allowable. Claims 1, 2, and 6 are currently being held as generic.
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`There is a search and/or examination burden for the patentably distinct species as set forth
`
`above becauseat least the following reason(s) apply:
`
`e
`
`The inventions have acquired a separate status in the art in view of their different classification
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 4
`
`e
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`The inventions have acquired a separate status in the art due to their recognized divergent
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`subject matter
`
`e
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`The inventions require a different field of search (e.g., searching different classes/subclasses or
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`electronic resources, or employing different search strategies or search queries)
`
`Applicantis advised that the reply to this requirement to be complete must include (i) an
`
`election of a species to be examined even though the requirement may be traversed (37 CFR 1.143)
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`and(ii) identification of the claims encompassing the elected species or grouping of patentably
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`indistinct species, including any claims subsequently added. An argumentthat a claim is allowable or
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`that all claims are generic is considered nonresponsive unless accompaniedby an election.
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`The election may be made with or without traverse. To preserve a right to petition, the election
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`must be made with traverse. If the reply does not distinctly and specifically point out supposed errorsin
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`the election of species requirement, the election shall be treated as an election without traverse.
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`Traversal must be presented at the time of election in order to be considered timely. Failure to timely
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`traverse the requirement will result in the loss of right to petition under 37 CFR 1.144.If claims are
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`addedafter the election, applicant must indicate which of these claims are readable on the elected
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`species or grouping of patentably indistinct species.
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`Should applicant traverse on the ground that the species, or groupings of patentably indistinct
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`species from whichelection is required, are not patentably distinct, applicant should submit evidence or
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`identify such evidence now of record showing them to be obvious variants or clearly admit on the
`
`record thatthis is the case. In either instance, if the examiner finds one of the species unpatentable over
`
`the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AlA 35
`
`U.S.C. 103(a) of the other species.
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 5
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`3.
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`Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to
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`additional species which depend from or otherwise require all the limitations of an allowable generic
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`claim as provided by 37 CFR 1.141.
`
`4.
`
`Applicant is reminded that upon the cancellation of claims to a non-elected invention, the
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`inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named
`
`inventors is no longer an inventor of at least one claim remaining in the application. A request to correct
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`inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance
`
`with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee
`
`required under 37 CFR 1.17(i).
`
`Conclusion
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`5.
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`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to HALEY A SMITH whosetelephone number is (571)272-6597. The examiner can
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`normally be reached Monday- Thursday 7:00 am - 5:00 pm.
`
`Examiner interviewsare available via telephone, in-person, and video conferencing using a
`
`USPTO supplied web-based collaboration tool. To schedule an interview, 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 (571)272-4888. The fax phone number for the organization where this
`
`application or proceeding is assigned is 571-273-8300.
`
`6.
`
`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 aboutfiling in DOCX format. For additional
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 6
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`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.
`
`/HALEY A SMITH/
`Examiner, Art Unit 3732
`
`/SHARON M PRANGE/
`Primary Examiner, Art Unit 3732
`
`