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
`
`TRIN&
`
`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
`
`03/06/2023
`
`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 01/24/2023.
`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)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*
`1-13 and 16-20 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.
`Claim(s) 1-13 and 16-20 is/are rejected.
`1) Claim(s)__is/are objectedto.
`Cj) 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)( The specification is objected to by the Examiner.
`11) 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)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)Q) All
`1.2) Certified copies of the priority documents have been received.
`2.2 Certified copies of the priority documents have been received in Application No.
`3.4.) 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)
`
`(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 20230216
`
`

`

`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 01/24/2023 have been entered. Claims 1-13 and 16-20 remain
`
`pendingin the application, with Claim 1 newly amended and Claims 18-20 newly added.
`
`Claim Objections
`
`3.
`
`Claim 20 is objected to because of the following informalities: “the second outer panel” should
`
`read “the second upperpanel”if the claim is referring to the same panels as recited in Claim 19, or
`
`should read “a second outer panel” if an additional panel is being claimed. For purposes of examination,
`
`1.”
`the claim will be interpreted as “the second upper panel.” Appropriate correction is required.
`
`4.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis
`
`Claim Rejections - 35 USC § 102
`
`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.
`
`(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 effectivefiling 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).
`
`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 a single, continuous
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 3
`
`extruded componentdisposed along a border between the first upper panel (210) and the second upper
`
`panel (211), wherein the single, continuous extruded component(3) joins the first upper panel to the
`
`second upperpanel(paragraph [0072], “the one or more seams 150 are coveredby the 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 more of 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 waterproofness from 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, further, as Kiederle et al discloses the
`
`“at least one” 3D build layer, there can be a single layer, satisfying the “single, continuous” limitation of
`
`the extruded component).
`
`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
`
`RegardingClaim 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)).
`
`Regarding Claim 19, Kiederle et al. teachesall of the limitations of the upper of Claim 1, as
`
`discussedin the rejections above. Kiederle et al. further teaches wherein the extruded componentis
`
`disposed on only one side of the first upper panel and the second upper panel (figs. 2B, 2C and 3C show
`
`the extruded component being disposed only on one side of the first and second upper panels).
`
`Regarding Claim 20, Kiederle et al. teachesall of the limitations of the upper of Claim 19, as
`
`discussedin the rejections above. Kiederle et al. further teaches wherein the extruded componentis
`
`disposed on an outer side of the first upper panel and of the second upper panel (figs. 2B, 2C and 3C
`
`show the extruded component being disposed only on the outer side ofthe first and second upper
`
`panels).
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 5
`
`Kiederle ef al. ‘045
`
`annotated fig. 2Beae
`
`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 a single, continuous extruded
`
`component(34) disposed along a border between the first upper panel (32B) and the second upper
`
`panel (32C), wherein the single continuous extruded componentjoins the first upper panel to the
`
`second upperpanel(col. 3 Il. 56-58, “these sections being inseparably jointed to each other at adjacent
`
`edges thereof by elongated connections 34”; fig. 9 shows the extruded component being continuous
`
`and formed ofa single piece).
`
`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. 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
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 6
`
`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 of said 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
`
`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
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 7
`
`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
`
`(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”).
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 8
`
`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. 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
`
`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).
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 9
`
`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
`
`plurality of panels (7, 8, 12, 13) comprises a heel counter (fig. 6 shows the panel (13) being a heel
`
`counter).
`
`Hemandez ‘103
`armotated fig. 6
`14
`
`
`
` e
`
`oe
`eee
`‘-
`ote SS
`ae
`pee . es ,
`eee xX ee
`SinscannnanannitEE he Seeal x
`oy ee
`Sg
`
`ye
`
`x ae
`ENS
`i ' &
`te
`\
`oo
`Se
`yround contacting
`\
`°
`De iO. 6
`toe area
`{SDN pAARSE
`har
`%
`s
`Roe.
`at & SEES
`OK
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 10
`
`8.
`
`Claim(s) 9-10 and 17-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Adami
`
`et al. (US 2014/0237858).
`
`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 of the plurality of panels together; wherein the two adjacent panels
`
`are joined together only by the upper extruded component(fig. 17 shows the upper extruded
`
`componentbeing the only joining member between 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”).
`
`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 such a
`
`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) 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 [0044],
`
`“Inelastic reinforcing material 34 may include textiles, thermoplastic, leather, synthetic leather, vinyl,
`
`and/or any other suitable inelastic material”).
`
`Regarding Claim 10, 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 upper extruded
`
`component(1034) joins each of the plurality of panels (1029) to adjacent panels, and wherein each of
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 11
`
`the plurality of panels are joined together only by the upper extruded component(fig. 17 shows the
`
`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 mayinclude a first 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 between
`
`reinforcing material sections”).
`
`Regarding Claim 17, 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 showsthe panel (1066)
`
`being a heel counter).
`
`Regarding Claim 18, 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 upper extruded
`
`component(1034) forms a portion of a closure system (see annotated Fig.) for the upper (1014)
`
`(annotated fig. 17 showsa portion of the upper extruded component(1034) forming the apertures of
`
`the closure system for the article of footwear).
`
`

`

`Application/Control Number: 16/692,555
`Art Unit: 3732
`
`Page 12
`
`
` oe.
`
`closure
`system
`
`Adami et al. ‘858
`annotated partial fig. 17
`
`Claim Rejections - 35 USC § 103
`
`9.
`
`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.
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`10.
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`Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hernandez (US
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`2012/0090103).
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`Regarding Claim 16, Hernandez teachesall of the limitations of the article of footwear of Claim
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`9, as discussed in the rejections above.
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`Hernandez does not teach explicitly wherein the plurality of panels comprises at least ten
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`panels. However, Hernandez showsonly one side of the upper which comprises four panels, and further
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`Application/Control Number: 16/692,555
`Art Unit: 3732
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`Page 13
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`doesnotspecify or limit the number of panels that can be used to create the upper. For example,
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`paragraph [0048] recites “the pieces 7, 8, 12, 13, etc., forming the upper,” suggesting that there are
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`additional pieces beyond the four shown and listed.
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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 Hernandez such that the plurality of panels comprises at
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`least ten panels as it is no more than a duplication of panel that would haveno criticality, unexpected
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`result, changein function, or synergistic effect. Further in support of this conclusion of obviousness,it is
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`noted that in In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), the court held that mere duplication
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`of parts has no patentable significance unless a new and unexpectedresult is produced (see MPEP §
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`2144.04 VIB)
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`Response to Arguments
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`11.
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`Applicant's argumentsfiled 01/24/2020 have been fully considered but they are not persuasive.
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`Regarding the rejection of Claim 1 in view of Kiederle, Applicant submits that Kiederle does not
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`disclose a first upper panel and a second upper panel, as the panels of Kiederle relied upon for the
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`rejection are a bottom layer arranged below the sole of the wearer’s foot and a side layer, the bottom
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`and side layers being part of a bootie. Examiner disagrees, and submits that the bootie is equivalent to
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`the upper of the article of footwear, as paragraph [0046] of Kiederle recites “a bootie formed as a shoe
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`upper.” As the claim recites “the upper comprising a first upper panel; a second upper panel,” this
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`limitation was interpreted as referring to panels that are a part of an upper, rather than “upper”
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`referring to the position of the panel relative to the wearer’s foot. As there does not appear to be
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`support for the “upper” panels being referring to the relative location of the panels in relation to the
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`wearer, and as Kiederle recites that the bootie is equivalent to an upper, Examiner submits that Kiederle
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`doesteach a first and second upper panel as recited in Claim 1.
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`Application/Control Number: 16/692,555
`Art Unit: 3732
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`Further regarding the rejection of Claim 1 in view of Kiederle, Applicant submits that Kiederle
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`does not teach a single, continuous extruded component, as Kiederle teaches 3D printed thermoplastic
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`material, which is printed in a layer-by-layer approach, therein making the “Extruded component” not
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`single and continuous. Examiner disagrees, and submits that while some 3D printing is formed via a
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`layer by layer deposition, Kiederle discloses that there is an embodiment whereonly a single layer is
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`used (paragraph [0072], “the one or more seams 150 are covered by the at least one three-dimensional
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`build layer 3-1 to 3-n”),” emphasis added). Therein, when only a single layer is disposed, the extruded
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`componentis a singular, continuous piece.
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`Additionally, regarding the rejection of Claim 1 in view of Kiederle, Applicant submits that
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`Kiederle does not teach an extruded componentthatjoins a first and second upper panel, as the
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`thermoplastic material of Kiederle is printed over a seam, and therefore covers the seam rather than
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`joining the first and second upper and panels. Examiner disagrees, and submits that the thermoplastic
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`material (which as considered as equivalent to the extruded component) can both cover the seam and
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`form an additional join betweenthe first and second upper panels. It is noted that the claim does not
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`recite wherein the extruded componentis the only structure that joins the first and second upper
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`panels. Further, as Kiederle teaches the extruded component “cover[s] the seam 150 including some
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`side extension on each side of the seam 150” (paragraph [0072]), it is clear that the extruded
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`componentbridges from one panel to the other, therein joining them.
`
`Regarding the rejection of Claim 1 in view of Fukuoka, Applicant submits that Fukuoka does not
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`teach an extruded component, as the “extruded component” as taught by Fukuokais formed by a
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`different process. Applicant further submits that while “extruded” may be used to describe a process,
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`the structure implied should be considered. Applicant submits that “an extruded component” when
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`extruded on the border of two panels by its nature results in a structure that is disposed only on one
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`side of the panels, and does not extend through the border or cover surfaces on both sides of the panel,
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`Application/Control Number: 16/692,555
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`all of which features are shown by the “extruded component” of Fukuoka. Examiner agrees that
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`structures formed as part of a “product by process limitation” do have to take into consideration the
`
`implications of the process that are imparted on the structure, however there is no supportin the
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`originally filed disclosure of the instant application for “extruded” structures to be narrowly interpreted
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`as set forth by the applicant in the remarks. Therefore, as the interpretation of the structure implied by
`
`an “extruded” componentas set forth in the remarks was notdisclosedin the originally filed disclosure
`
`and is not the broadest reasonable interpretation of the structure implied by “extruded”, this
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`interpretation is not taken into consideration in the above rejections. For example, a structure could be
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`extruded on the border of two adjacent panels and seep through the material of at least one of the
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`panels, resulting in extruded material on both sides of the panels. As the structure of Fukuoka is capable
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`of being formed by extrusion and is “the same as or obvious from a product of the prior art, the claim is
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`unpatentable even though the prior product was made by a different process." (in re Thorpe, 777 F.2d
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`695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), see MPEP § 2113), therein the “elongated connections”
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`are considered as equivalent to the “extruded component”as claimed.
`
`Regarding the rejection of Claim 9 in view of Hernandez, Applicant submits that Hernandez does
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`not teach an extruded component, as the “extruded component” as taught by Hernandez is formed by a
`
`different process. Applicant further submits that while “extruded” may be used to describe a process,
`
`the structure implied should be considered. Applicant submits that “an extruded component” when
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`extruded on the border of two panels by its nature results in a distinctive structure that is disposed only
`
`on oneside of the panels, and does not extend through the borderor cover surfaces on bothsidesof
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`the panel, all of which features are shownby the “extruded component” of Hernandez. Examiner agrees
`
`that structures formed as part of a “product by processlimitation” do have to take into consideration
`
`the implications of the process that are imparted on the structure, however there is no support in the
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`originally filed disclosure of the instant application for “extruded” structures to be narrowly interpreted
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`Application/Control Number: 16/692,555
`Art Unit: 3732
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`Page 16
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`as set forth by the applicant. Therefore, as the interpretation of the structure implied by an “extruded”
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`componentas set forth in the remarks was notdisclosed in the originally filed disclosure and is not the
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`broadest reasonable