Reebok International Limited
`Application No. 16/692,555
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`Remarks
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`Reconsideration of this Application is respectfully requested.
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`Upon entry of the foregoing amendment, claims 1-13, 16—18, 20, and 21 are pending in the
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`application. Claims 1 and 9 are independentclaims. Claims 1 and 9 are amended. Claim 19 is
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`canceled without prejudice or disclaimer. New claim 21 is added. These changes introduce no new
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`matter, and their entry is respectfully requested.
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`Based on the above amendmentand the following remarks, Applicant respectfully requests
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`that the Office reconsiderall outstanding objections and rejections and that they be withdrawn.
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`Claim Objection
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`Claim 20 is objected to for informalities. Office Action, 2.
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`Claim 20 is amended and nowrecites “second upper panel.” Accordingly, Applicant
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`respectfully requests that the objection to be claim 20 be withdrawn.
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`Rejections under 35 U.S.C. § 102
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`Claims 1, 2, 4-7, 19, and 20 are rejected under35 U.S.C. § 102(a)(2) as anticipated by
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`U.S. Patent Application Publication No. 2019/0365045 to Kiederle et al.
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`Independent claim 1
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`Without agreeing to the propriety of the rejections, claim 1 is amended and nowrecites,
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`“wherein the first upper panel and the second upper panel extend above a midsole ofthe article of
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`footwear.” Kiederle does not disclose at least this feature of claim 1.
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`The Office relies on bottom layer 210 andside layer 211 of bootie 200 as allegedly
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`corresponding to the claimed first upper panel and second upper panel of an upper. Office Action,
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`2-3. The Office further contends that bootie 200 is equivalent to an upper because paragraph [0046]
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`of Kiederle recites “a bootie formed as a shoe upper.” /d., 13.
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`Bottom layer 210 of bootie 200, however, does not extend above a midsole ofan article of
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`footwearbut instead is “arranged below the sole of the wearer’s foot,” Kiederle,
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`[0070].
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`ReebokInternational Limited
`Application No. 16/692,555
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`Accordingly, Kiederle does not disclose two upper panels extending above a midsole and joined by
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`a single, continuous extruded component.
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`Because Kiederle does not disclose each and every feature of claim 1, Kiederle does not
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`anticipate claim 1 and its dependent claims. Applicant respectfully requests reconsideration and
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`withdrawal of the § 102 rejections of claims 1, 2, 4-7, and 20 over Kiederle.
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`Claims 1, 3, and 5-8 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by U.S.
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`Patent No. 3,672,078 to Fukuoka.
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`Independent claim 1
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`Without agreeing to the propriety of the rejections, claim 1 is amendedto incorporate claim
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`19, and nowrecites, “wherein the single, continuous extruded componentis disposed on only one
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`side of the first upper panel and the second upper panel.” Claim 19 is not rejected as anticipated by
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`Fukuoka, and indeed, Fukuoka does notdisclose at least this feature.
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`Fukuoka discloses a method for injection molding an article of footwear, and during the
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`molding process, connection 34 is formed to connect sections 32A and 32B of upper 32. Fukuoka,
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`3:65-72. The Office relies on the molded connection as allegedly disclosing the claimed extruded
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`component. Office Action, 5-6.
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`However, during the molding process, the molded material is injected into a connection-
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`forming chamber 23 encompassing both sides of upper sections 11A and 11B. See Fukuoka, FIGS.
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`4 and 5. As such, the molded connections are formed on both the inner side and the outerside of the
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`upper. See id., FIGS. 2 and 7 (connection 13 connects sections 11A and 11B on both sides).
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`Fukuoka therefore does not disclose a single, continuous extruded componentdisposed on only one
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`side of the first upper panel and the second upperpanel.
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`Because Fukuoka does not disclose each and every feature of claim 1, Fukuoka does not
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`anticipate claim 1 and its dependent claims. Applicant respectfully requests reconsideration and
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`withdrawal of the § 102 rejections of claims 1, 3, and 5—8 over Fukuoka.
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`ReebokInternational Limited
`Application No. 16/692,555
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`Claims 9-13 and 17 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by U.S. Patent
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`Application Publication No. 2012/0090103 to Hernandezetal.
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`Independent claim 9
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`Without agreeing to the propriety of the rejections, claim 9 is amended and nowrecites,
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`“wherein the extruded componentis disposed on only one side of the two adjacent panels.”
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`Hernandez does not disclose at least this feature of claim 9.
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`Hernandez also discloses a process of molding an article of footwear, during which a
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`thermoplastic material is molded to form ribs 14 that joins upper pieces 7, 8, 12, 13. Hernandez,
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`q§| [0020]-[0024] and [0048]. The Office relies on ribs 14 for allegedly disclosing the claimed
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`extruded component. Office Action, 7-8.
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`Because ribs 14 of Hernandez are also molded, they are formed on both the inner side and
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`the outer side of upper pieces 7, 8, 12, 13. See Hernandez, FIG. 5 (a skeleton formed byribs 14
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`underneath upper pieces 7, 8, 12, 13) and FIG. 6 (ribs 14 shownonthe outer side of ribs 14).
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`Hernandez therefore does not disclose an extruded componentdisposed on only one side of two
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`adjacent panels.
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`Because Hernandez does not disclose each and every feature of claim 9, Hernandez does not
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`anticipate claim 9 andits dependent claims. Applicant respectfully requests reconsideration and
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`withdrawal of the § 102 rejections of claims 9-13 and 17 over Hernandez.
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`Claims 9, 10, 17, and 18 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by U.S.
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`Patent Application Publication No. 2014/0237858 to Adamietal.
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`Independent claim 9
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`Claim 9 is amended, andrecites, “wherein the two adjacent panels are joined together at a
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`border between the two adjacent panels only by the upper extruded component.” Adami does not
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`disclose at least this feature of claim 9.
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`The Office relies on Adami’s inelastic reinforcing material 1034 for allegedly disclosing the
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`claimed extruded component. Office Action, 10. Inelastic reinforcing material 1034 forms a skeletal
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`structure surroundingelastic skin material 1029 of upper 1014. Adami, 4] [0078]-[0079]. However,
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`ReebokInternational Limited
`Application No. 16/692,555
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`Adami doesnotdisclose that sections of elastic skin material 1029 are joined together only by
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`reinforcing material 1034 at a border between the two adjacent sections. Adami only discloses the
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`reinforce material “may provide strength, stability, durability, and other performancebenefit,” but it
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`is silent on the reinforce material joining sections of the elastic skin material. /d., [0045].
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`Indeed, “the reinforcing material may be attachedto the elastic skin material, for example,
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`by stitching, adhesive, bonding, welding, or any other suitable attachment method.” Thatis, sections
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`of the elastic skin material are joined at least by an attachment method, such as stitching, adhesive,
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`bonding, or welding, in addition to the reinforce material. In contrast, paragraph [0067] of the
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`Specification of the present disclosure providesthat “[i]n some embodiments, upper extruded
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`components 140 are the only meansfor joining panels 130 together(i.e., panels 130 are not sewn,
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`joined with an adhesive, joined with low-melt film, laser-welded, ultrasonically welded, radio-
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`frequency welded, or otherwise joined together except by upper extruded components 140).”
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`Accordingly, in Adami, because sectionsof the elastic skin material are joined by an attachment
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`method, the reinforcing material is not the only meansfor joining them together.
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`Because Adamidoesnot disclose each and every feature of claim 9, Adami does not
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`anticipate claim 9 andits dependent claims. Applicant respectfully requests reconsideration and
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`withdrawal of the § 102 rejections of claims 9, 10, 17, and 18 over Adami.
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`Rejections under 35 U.S.C. § 103
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`Claim 16 is rejected under 35 U.S.C. § 103 as allegedly being unpatentable over Hernandez.
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`Claim 16 depends from independent claim 9. As discussed above, Hernandez does not
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`disclose all features of claim 9 because Hernandez does not disclose an extruded component
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`disposed on only one side of two adjacent panels. Accordingly, claim 16 is not obvious over
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`Hernandez.
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`Applicant respectfully requests reconsideration and withdrawal of the § 103 rejection of
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`claim 16 over Hernandez.
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`-10-
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`Conclusion
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`Reebok International Limited
`Application No. 16/692,555
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`All of the stated grounds of objection and rejection have been properly traversed,
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`accommodated, or rendered moot. Applicant therefore respectfully requests that the Office
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`reconsiderall presently outstanding objections and rejections and that they be withdrawn. Applicant
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`believes that a full and complete reply has been made to the outstanding Office Action and, as such,
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`the present application is in condition for allowance. If the Office believes, for any reason, that
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`personal communication will expedite prosecution of this application, the Office is invited to
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`telephone the undersigned at the numberprovided.
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`Promptand favorable consideration of this Amendment and Reply is respectfully requested.
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Yangbeini Wang #800,005/
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`Yangbeini Wang
`Attorney for Applicant
`Registration No. 800,005
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`Date: June 6, 2023
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`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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