www.uspto.gov
`
`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
`
`7A23
`
`STE
`
`SL
`
`TEIN&
`
`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
`
`10/27/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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 STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 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 08/02/2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)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 incorporated into 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) 14-15 is/are withdrawn from consideration.
`[) Claim(s)__ is/are allowed.
`Claim(s) 1-13 and 16-17 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`“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)C) 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)0) 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)C) All
`1.2 Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have beenreceived in Application No.
`3.2.) 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`02/21/2020,02/21/2020,08/21/2020.
`
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20221020
`
`

`

`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.
`
`Election/Restrictions
`
`2.
`
`Applicant’s election without traverse of Species 1 in the reply filed on 08/02/2022 is
`
`acknowledged.
`
`3.
`
`Claims 14 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as
`
`being drawn to a nonelected species, there being no allowable generic or linking claim. Election was
`
`made withouttraverse in the reply filed on 08/02/2022. It is noted that the reply filed on 08/02/2022
`
`indicates that Claims 1-17 read on the elected species, however Examiner submits that Claims 14 and 15
`
`are drawn to non-elected species (Sub-species H, for example) and are therefore withdrawn. The
`
`elected species shownin figs. 1-7 does not show a discontinuous sole extruded componentor the sole
`
`extruded component extending above the sole to form a closure system.
`
`Claim Rejections - 35 USC § 102
`
`4.
`
`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 effectivefiling date of the claimed invention.
`
`(a)(2) the claimed invention was described in a patent issued under section 151, or in an application
`for patent published or deemed published under section 122(b), in which the patent or application, as
`the case may be, names another inventor and was effectively filed before the effective filing date of
`the claimed invention.
`
`5.
`
`Claim(s) 1-2 and 4-7 is/are rejected under 35 U.S.C. 102(a)({2) as being anticipated by Kiederle
`
`et al. (US 2019/0365045).
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 3
`
`Regarding Claim 1, Kiederle et al. teaches an upper (101) for an article of footwear (100), the
`
`upper comprising: a first upper panel (210); a second upper panel (211); and an extruded component
`
`disposed along a border between the first upper panel (210) and the second upper panel (211), wherein
`
`the extruded component(3) joins the first upper panel to the second upper panel (paragraph [0072],
`
`“the one or more seams 150 are covered bythe at least one three-dimensional build layer 3-1 to 3-n
`
`which form a waterproof seal of the seam 150 (cf. waterproof seal 30 in FIG. 7). For example, one or
`
`moreof the build layers 3-1 to 3-n may cover the area around the seam 150 only (cover the seam 150
`
`including some side extension on each side of the seam 150 to create a “warm-up”zone for the sealing,
`
`i.e. a transition zone which creates waterproofnessfrom the side (sealing margin),” wherein fig. 3C
`
`shows the seam connecting the first (210) and second (211) upper panels, therein the extruded
`
`componentis also joining the seams).
`
`RegardingClaim 2, Kiederle et al. teachesall of the limitations of the upper of Claim 1, as
`
`discussed in the rejections above. Kiederle et al. further teaches wherein the extruded component(3)
`
`comprises polyurethane (paragraph [0079], “the thermoplastic material 3 may include at least one of
`
`polyurethane (TPU)”).
`
`Regarding Claim 4, Kiederle et al. teachesall of the limitations of the upper of Claim 1, as
`
`discussed in the rejections above. Kiederle et al. further teaches wherein the extruded component(3)
`
`forms a portion of a closure system (see annotated Fig.) for the article of footwear (100) (annotatedfig.
`
`2B showsthe extruded component(3) forming the outermostlayer of the upper (101) including the
`
`closure system; paragraph [0067] discloses “the upper 101 comprising the membrane 4 may be formed
`
`two-dimensionally as shownin FIG. 2B and laid in two-dimensional form onto the platform 71 for
`
`forming a structure by the thermoplastic material 3, such as patterns of studs, a net structure or other
`
`patterns, etc., as shown.”).
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 4
`
`Regarding Claim 5, Kiederle et al. teachesall of the limitations of the upper of Claim 1, as
`
`discussed in the rejections above. Kiederle et al. further teaches a seam (150) joining the first upper
`
`panel (210) and the second upper panel (211) (fig. 3C shows the seam (150) joining the first (210) and
`
`second (211) upper panels).
`
`Regarding Claim 6, Kiederle et al. teachesall of the limitations of the upper of Claim 1, as
`
`discussed in the rejections above. Kiederle et al. further teaches wherein the extruded component(3) is
`
`disposed on an exterior surface of the first upper panel (210) and the second upper panel (211) (fig. 3C
`
`showsthe exterior surface of the first (210) and second (211) upper panels, therefore when “the one or
`
`more seams 150 are covered by the at least one three-dimensional build layer 3-1 to 3-n which form a
`
`waterproofseal of the seam 150”as disclosed in paragraph [0072] the extruded component would be
`
`disposed on the exterior surface as well).
`
`RegardingClaim 7, Kiederle et al. teachesall of the limitations of the upper of Claim 1, as
`
`discussed in the rejections above. Kiederle et al. further teaches wherein the extruded component(3)
`
`forms an exterior surface of the upper (figs. 2C and 3C shows the extruded component(3) forming an
`
`outer surface of the upper (101)).
`
`Kiederle at al. ‘045
`
`annotated fig. 2Baa
`
`
`closure
`SOEs
`ny
`SYSTEM OOssagy
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 5
`
`6.
`
`Claim(s) 1, 3, and 5-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fukuoka
`
`(US 3672078).
`
`Regarding Claim 1, Fukuoka teaches an upper (32) for an article of footwear (31), the upper
`
`comprising: a first upper panel (32B); a second upper panel (32A); and an extruded component(34)
`
`disposed along a border between the first upper panel (32B) and the second upper panel (32C), wherein
`
`the extruded componentjoins the first upper panel to the second upper panel (col. 3 Il. 56-58, “these
`
`sections being inseparably jointed to each other at adjacent edges thereof by elongated connections
`
`34”).
`
`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
`
`if the claimed product is the same as a product of the prior art (see MPEP § 2113). In the instant case,
`
`the connection members(34) of the instant application are considered as equivalent to the “Extruded
`
`component,” as they have the same structure and are formed of a thermoplastic material which is
`
`capable of being extruded, even thoughit is formed by a different method (col. 3 Il. discloses the shoe
`
`(310) is formed by the same method of shoe (10) of another embodiment, the method disclosed in col. 2
`
`Il. 58-61, “the flanges 14 and the connection 13 which are made ofsaid thermoplastic resinous material
`
`integrally with the sole member 12 are fused to the appropriate edges of the band sections 11A and 11B
`
`without use of any adhesive agent”).
`
`Regarding Claim 3, Fukuoka teachesall of the limitations of the upper of Claim 1, as discussed in
`
`the rejections above. Fukuoka further teaches wherein a material of the first upper panel (328B)is
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 6
`
`different than a material of the second upper panel (32A)(col. 3 Il. 59-64, “the top cap section 32A and
`
`the counter sections 32D are formed of relatively strong material such, for example, as natural leather
`
`or sheet, reinforcing synthetic resin leather or sheet, or the like, and the vamp sections being made of
`
`flexible and porous (meshy) leather or sheet such as woven cloth or the like for ventilation,” wherein the
`
`first upper panel (32B) is a part of the vamp).
`
`Regarding Claim 5, Fukuoka teachesall of the limitations of the upper of Claim 1, as discussed in
`
`the rejections above. Fukuoka further teaches a seam (34) joining the first upper panel (32B) and the
`
`second upper panel (32A)(fig. 9 showsthe first (32B) and second (32A) panels being joined by a seam
`
`(34) formed by the extruded component;col. 3 Il. 56-58, “these sections being inseparably jointed to
`
`each other at adjacent edges thereof by elongated connections 34,” wherein a joint at the edges of two
`
`panels forms a seam)
`
`Regarding Claim 6, Fukuoka teachesall of the limitations of the upper of Claim 1, as discussed in
`
`the rejections above. Fukuoka further teaches wherein the extruded component(34) is disposed on an
`
`exterior surface of the first upper panel (32B) and the second upper panel (32A)(fig. 9 shows the
`
`extruded component (34) disposed on the external surface of the first (32B) and second (32A) upper
`
`panels).
`
`Regarding Claim 7, Fukuoka teachesall of the limitations of the upper of Claim 1, as discussed in
`
`the rejections above. Fukuoka further teaches wherein the extruded component(34) forms an exterior
`
`surface of the upper (32) (fig. 9 shows the extruded component forming an exterior surface of the upper
`
`(32)).
`
`Regarding Claim 8, Fukuoka teachesall of the limitations of the upper of Claim 1, as discussed in
`
`the rejections above. Fukuoka further teaches a third upper panel (32D); and an additional extruded
`
`component(34) disposed along a border between the first upper panel (32B) and the third upper panel
`
`(32D), wherein the additional extruded componentjoins the first upper panel to the third upper panel
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 7
`
`(Fig. 9 shows the extruded component(34) joining the first (32B) and third (32D) upper panels; col. 3 Il.
`
`56-58, “these sections being inseparably jointed to each other at adjacent edges thereof by elongated
`
`connections 34”).
`
`7.
`
`Claim(s) 9-13 and 17 is/are rejected under 35 U.S.C. 102(a){1) as being anticipated by
`
`Hernandez Hernandez (US 2012/0090103), hereinafter referred to as Hernandez.
`
`Regarding Claim 9, Hernandez teachesan article of footwear (fig. 6) comprising: a sole (16); an
`
`upper having a plurality of panels (7, 7, 12, 13) (paragraph [0048], “footwear such as that depicted in
`
`FIG. 6 is obtained, in which the pieces 7, 8, 12, 13, etc., forming the upper are attached to one another
`
`by the intermediate ribs 14”); and an upper extruded component (14) joining two adjacent panels (7, 8)
`
`of the plurality of panels together (fig. 6 shows two adjacentpanels (7, 8) joined by the upper extruded
`
`component(14)); wherein the two adjacent panels are joined together only by the upper extruded
`
`component(paragraph [0048], “pieces 7, 8, 12, 13, etc., forming the upper are attached to one another
`
`by the intermediate ribs 14”).
`
`Examiner notes that “an extruded component”is being treated as a product-by-process
`
`limitation. The determination of patentability in a product-by-processclaim 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
`
`if the claimed product is the same as a product of the prior art (see MPEP § 2113). In the instant case,
`
`the ribs (14) of the instant application are considered as equivalent to the “Extruded component,” as
`
`they have the same structure and are formed of a thermoplastic material which is capable of being
`
`extruded, even thoughit is formed by a different method (paragraph [0048], “the intermediate ribs 14
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 8
`
`and, in the depicted example, by the area 15 of counter and sole 16, made from the injected
`
`thermoplastic material”).
`
`Regarding Claim 10, Hernandez teachesall of the limitations of the article of footwear of Claim
`
`9, as discussedin the rejections above. Hernandez further teaches wherein the upper extruded
`
`component(14) joins each of the plurality of panels (7, 8, 12, 13) to adjacent panels, and wherein each
`
`of the plurality of panels are joined together only by the upper extruded component(fig. 6 shows the
`
`plurality of panels (7, 8, 12, 13) joined only by the upper extruded component (14); paragraph [0048],
`
`“pieces 7, 8, 12, 13, etc., forming the upper are attached to one another by the intermediate ribs 14”).
`
`Regarding Claim 11, Hernandezteachesall of the limitations of the article of footwear of Claim
`
`9, as discussed in the rejections above. Hernandez further teaches wherein the sole (16) comprises a
`
`sole extruded component(fig. 6 shows the upper extruded component (14) attached to the sole (16),
`
`which therein also comprises a sole extruded component, in view of the product-by-process-
`
`interpretation of “extruded component” as explained above).
`
`Regarding Claim 12, Hernandezteachesall of the limitations of the article of footwear of Claim
`
`11, as discussed in the rejections above. Hernandez further teaches wherein the sole extruded
`
`component(16) comprises a ground-contacting surface (see annotated Fig.) of the article of footwear
`
`(annotated fig 6 shows the sole extruded component comprising a ground contacting surface).
`
`Regarding Claim 13, Hernandezteachesall of the limitations of the article of footwear of Claim
`
`11, as discussed in the rejections above. Hernandez further teaches wherein the sole extruded
`
`component(16) extends from a heel area (see annotated Fig.) of the article of footwear to a toe area
`
`(see annotated Fig.) of the article of footwear (annotated fig. 6 shows the sole extruded component(16)
`
`extending from the heel area to the toe area).
`
`Regarding Claim 17, Hernandezteachesall of the limitations of the article of footwear of Claim
`
`9, as discussed in the rejections above. Hernandez further teaches wherein at least one panel (13) of the
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 9
`
`plurality of panels (7, 8, 12, 13) comprises a heel counter (fig. 6 shows the panel (13) being a heel
`
`counter).
`
`annotated fifig. 6
`
`is
`
` Mernandez ‘103
`
`ground contactting|
`=- x
`Somecarennanmnangensionen™ail oesSeneraren
`
`Surface aoeLICE G
`
`ES
`
`Claim Rejections - 35 USC § 103
`
`8.
`
`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.
`
`9.
`
`Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hernandez (US
`
`2012/0090103).
`
`Regarding Claim 16, Hernandez teachesall of the limitations of the article of footwear of Claim
`
`9, as discussed in the rejections above.
`
`Hernandez does not teach explicitly wherein the plurality of panels comprises at least ten
`
`panels. However, Hernandez showsonly one side of the upper which comprises four panels, and further
`
`doesnotspecify or limit the number of panels that can be used to create the upper. For example,
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 10
`
`paragraph [0048] recites “the pieces 7, 8, 12, 13, etc., forming the upper,” suggesting that there are
`
`additional pieces beyond the four shown and listed.
`
`Therefore, it would have been obvious to one ofordinaryskill in the art before the effective
`
`filing date of the claimed invention to modify Hernandez such that the plurality of panels comprises at
`
`least ten panels as it is no more than a duplication of panel that would haveno criticality, unexpected
`
`result, changein function, or synergistic effect. Further in support of this conclusion of obviousness,it is
`
`noted that in In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), the court held that mere duplication
`
`of parts has no patentable significance unless a new and unexpectedresult is produced (see MPEP §
`
`2144.04 VIB)
`
`Conclusion
`
`10.
`
`The prior art made of record and not relied upon is considered pertinent to applicant's
`
`disclosure. Love et al. (US 2015/0223552) teaches an upper made of a plurality of panels and joined by
`
`an extruded component.
`
`11.
`
`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
`
`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 wherethis
`
`application or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be obtained from
`
`Patent Center. Unpublished application information in Patent Center is available to registered users. To
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 11
`
`file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov.Visit
`
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`
`https://www.uspto.gov/patents/docx for information aboutfiling in DOCX format. For additional
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`
`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
`
`/KHOA D HUYNH/
`Supervisory Patent Examiner, Art Unit 3732
`
`