Brian Christensen
`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—18 and 21-23 are pending in the
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`application. Claims 1, 9, and 22 are independentclaims. Claims 1, 2, 4, 6-10, and 18 are amended.
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`Claim 20 is canceled without prejudice or disclaimer. New claims 22 and 23 are added. Claims 14
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`and 15 are withdrawn from consideration. These changes introduce no new matter, and their entry is
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`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`that the Office reconsiderall outstanding rejections and that they be withdrawn.
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`Statementof the Substance of the Interview
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`Applicant thanks Examiner Smith for taking the time to speak with Applicant’s
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`representative Yangbeini Wang (#800,005) during a telephonic interview on April 25, 2024. The
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`parties discussed potential features to overcome references Adami and Kiederle. Examiner Smith
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`agreed that the feature related to “a second single, continuous extruded componentdisposed across
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`the first upper panel and the second upper panel but not along a border betweenthefirst upper panel
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`and the second upper panel” would overcome Adami and Kiederle. The amendment and arguments
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`submitted herewith are believed to be consistent with the discussion.
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`Rejections under 35 U.S.C. § 112
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`Claims 1-8 and 20 are rejected under 35 U.S.C. § 112(b) as indefinite.
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`Without agreeing to the propriety of the rejection, and solely to expedite prosecution,
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`independentclaim 1 is amended and nowrecites, in part “wherein the first upper panel and the
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`second upper panel configured to extend above a midsole ofthe article of footwear.” Applicant
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`submits that “midsole” therefore is not positively recited in the claim. Reconsideration and
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`withdrawal of the § 112 rejections are respectfully requested.
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`Brian Christensen
`Application No. 16/692,555
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`Rejections under 35 U.S.C. § 102
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`Claims 1, 4, 6-10, 17, 18, 20, and 21 are rejected under 35 U.S.C. § 102(a)(1) as anticipated
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`by U.S. Patent Application Publication No. 2014/0237858 to Adamietal.
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`Independent claim 1
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`Without agreeing to the propriety of the rejection, and solely to expedite prosecution,
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`independentclaim 1 is amended and nowrecites, in part, “a second single, continuous extruded
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`component disposed acrossthe first upper panel and the second upper panel but not along a border
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`between the first upper panel and the second upper panel.” Adami does notdisclose at least this
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`feature of claim 1.
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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, 3—4. Inelastic reinforcing material 1034 forms a
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`skeletal structure surrounding elastic skin materials 1029 of upper 1014. Adami, 4] [0078]-[0079].
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`However, inelastic reinforcing material 1034 only covers the border between twoelastic skin
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`materials 1029, and it does not have a piece disposed across twoelastic skin materials 1029.
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`Therefore Adami does notdiscloseat least “a second single, continuous extruded component
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`disposed acrossthe first upper panel and the second upper panel but not along a border betweenthe
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`jirst upper panel and the second upper pane?”as recited in claim 1.
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`Accordingly, claim 1 and its dependent claimsare not anticipated by Adami. Applicant
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`respectfully requests reconsideration and withdrawal of the § 102 rejections of claims 1, 4, and 6-8.
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`Independent claim 9
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`Without agreeing to the propriety of the rejection, and solely to expedite prosecution,
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`independent claim 9 is amended and nowrecites, in part, “a second upper extruded component
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`disposed across the two adjacent panels but not along a border between the two adjacent panels.” As
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`discussed above with respect to claim 1, Adami’s inelastic reinforcing material 1034 does not have
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`a piece disposed across twoelastic skin materials 1029 but not along a border between the two
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`elastic skin materials 1029.
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`Accordingly, claim 9 and its dependent claimsare not anticipated by Adami. Applicant
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`respectfully requests reconsideration and withdrawal of the § 102 rejections of claims 9, 10, 17, 18,
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`Brian Christensen
`Application No. 16/692,555
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`and 21.
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`Rejections under 35 U.S.C. § 103
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`Claims 1—7 and 20 are rejected under 35 U.S.C. § 103 as unpatentable over U.S. Patent
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`Application Publication No. 2019/0365045 to Kiederle et al. in view of U.S. Patent Application
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`Publication No. 2014/0020192 to Jones etal.
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`Independent claim 1
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`Without agreeing to the propriety of the rejection, and solely to expedite prosecution,
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`independentclaim 1 is amended and nowrecites, in part, “a second single, continuous extruded
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`component disposed acrossthe first upper panel and the second upper panel but not along a border
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`between the first upper panel and the second upper panel.” Kiederle and Jones, alone or in
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`combination, do not disclose at least this feature of claim 1.
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`The Office relies on Kiederle’s 3D printed thermoplastic material 3 as allegedly disclosing
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`an extruded component. Office Action, 8-9. However, 3D printed thermoplastic material 3 is
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`disposed along the border between a bottom layer 210 and a side layer 211 of a bootie 200, andit is
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`not disposed across bottom layer 210 and side layer 211. See Kiederle, FIG. 3C. Kiederle therefore
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`does not disclose at least “a second single, continuous extruded component disposed across thefirst
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`upper panel and the second upperpanel but not along a border betweenthe first upper panel and
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`the second upper panel’as recited in claim 1.
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`Jones fails to cure the deficiencies of Kiederle, as Jones also fails to disclose an extruded
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`component disposed across a first upper panel and a second upperpanel but not along a border
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`between the first upper panel and the second upperpanel.
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`Accordingly, independent claim 1 and its dependent claims would not have been obvious
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`over the applied references. Applicant respectfully requests reconsideration and withdrawal of the §
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`103 rejections of claims 1-7.
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`Brian Christensen
`Application No. 16/692,555
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`Claims 9-13, 16, and 17 are rejected under 35 U.S.C. § 103 as unpatentable over U.S. Patent
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`Application Publication No. 2012/0090103 to Hernandez.
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`Independentclaim 9
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`Without agreeing to the propriety of the rejection, and solely to expedite prosecution,
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`independent claim 9 is amended and nowrecites, in part, “a second upper extruded component
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`disposed across the two adjacent panels but not along a border between the two adjacent panels.”
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`Hernandezfails to 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, {J
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`[0020]-[0024] and [0048]. The Office relies on ribs 14 for allegedly disclosing the claimed extruded
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`component. Office Action, 12. However, Hernandez’s ribs 14 only extend along the border between
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`upperpieces 7, 8, 12, 13, and no rib 14 is disposed across two upper pieces. See Hernandez, FIGS. 4
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`and 6. Hernandez therefore does not disclose at least “a second upper extruded component disposed
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`across the two adjacent panels but not along a border between the two adjacent panels”as recited
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`in claim 9.
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`Accordingly, independent claim 9 and its dependent claims would not have been obvious
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`over the applied reference. Applicant respectfully requests reconsideration and withdrawal of the §
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`103 rejections of claims 9-13, 16, and 17.
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`New Claims
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`New claims 22 and 23 are added. Claim 22 is an independentclaim andrecites, in part, “a
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`second single, continuous extruded component disposed across the first upper panel but not along a
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`border of the first upper panel.” None of the applied references discloses an extruded component
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`disposed across an upper panel but not along a border of the upper panel. Accordingly, Applicant
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`respectfully submits that claims 22 and 23 are in condition for allowance.
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`-10-
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`Conclusion
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`Brian Christensen
`Application No. 16/692,555
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`All of the stated groundsof rejection have been properly traversed, accommodated, or
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`rendered moot. Applicant therefore respectfully requests that the Office reconsiderall presently
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`outstanding rejections and that they be withdrawn. Applicant believes that a full and complete reply
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`has been madeto the outstanding Office Action and, as such, the present application is in condition
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`for allowance. If the Office believes, for any reason, that personal communication will expedite
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`prosecution of this application, the Office is invited to telephone the undersigned at the number
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`provided.
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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: May 21, 2024
`1101 K Street NW, 10" Floor
`Washington, D.C. 20005
`Main: (202) 371-2600
`Direct: (202)772-8833
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`21664386.1
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