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
`
`16/778,741
`
`01/31/2020
`
`Brian CHRISTENSEN
`
`2073.3760003
`
`6239
`
`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
`
`11/14/2022
`
`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.
`16/778, 741
`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*
`1-20 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) 1-20 is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`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 01/31/2020 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)
`
`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 20221103
`
`

`

`Application/Control Number: 16/778, 741
`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 2, Sub-species H in the reply filed on
`
`08/02/2022 is acknowledged.
`
`3.
`
`No claims are withdrawnfrom further consideration pursuant to 37 CFR 1.142(b) as being drawn
`
`to anonelected species, as Claims 1-20 read on the elected species.
`
`Drawings
`
`4.
`
`The drawings are objected to under 37 CFR 1.83(a). The drawings must showevery feature of
`
`the invention specified in the claims. Therefore, the void in the upper (Claim 3) and the tongue region
`
`(Claim 4) must be shownor the feature(s) canceled from the claim(s). No new matter should be
`
`entered.
`
`Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office
`
`action to avoid abandonmentof the application. Any amended replacement drawing sheet should
`
`include all of the figures appearing on the immediateprior version of the sheet, even if only one figureis
`
`being amended. The figure or figure number of an amended drawing should not be labeled as
`
`“amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the
`
`replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate
`
`changes made to the brief description of the several views of the drawings for consistency. Additional
`
`replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing
`
`sheet submitted after the filing date of an application must be labeled in the top margin as either
`
`“Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 3
`
`the examiner, the applicant will be notified and informed of any required corrective action in the next
`
`Office action. The objection to the drawings will not be held in abeyance.
`
`Claim Rejections - 35 USC § 112
`
`5.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION. —The specification shall conclude with one or more claims particularly pointing out
`and distinctly claiming the subject matter which the inventor or a joint inventor regards as the
`invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second paragraph:
`The specification shall conclude with one or moreclaims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`6.
`
`Claims 3 and 4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), second
`
`paragraph,as being indefinite for failing to particularly point out and distinctly claim the subject matter
`
`whichthe inventor or a joint inventor (or for applications subject to pre-AlA 35 U.S.C. 112, the
`
`applicant), regards as the invention.
`
`Claim 3 recites the limitation “wherein the second segmentis disposed over a void in the upper”
`
`which renders the claim indefinite. Figs. 28, 28, and 32 of the elected species do not appear to show any
`
`segmentof the extruded component extending over any openingsor voids in the upper, and further a
`
`specific void in the upper is not shownin the drawings. The specification recites this limitation, however
`
`doesnot further clarify what void in the upper is, or how the second segment is disposed over it. For
`
`purposesof examination, the void will be interpreted as the area formed inside the upper (i.e. where a
`
`wearer's foot is to be placed when worn).
`
`Claim 4 recites the limitation “wherein the second segmentis disposed over the tongue region”
`
`which renders the claim indefinite. Figs. 28, 28, and 32 of the elected species do not appear to show any
`
`segmentof the extruded component extending over the tongue, and further a tongue region is not
`
`shown in the drawings. The specification recites this limitation, however does not further clarify what
`
`the tongue region is, or how the second segmentis disposed over it. For purposes of examination, the
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 4
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`tongue region will include the area between and surrounding the laces on the top of the upper, where a
`
`tongue of an upper would normally extend.
`
`Claim Rejections - 35 USC § 102
`
`7.
`
`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 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 effective filing date of
`the claimed invention.
`
`8.
`
`Claim(s) 1-4 and 6-7 is/are rejected under 35 U.S.C. 102(a)({1) as being anticipated by Waatti
`
`(US 2016/0219982).
`
`Regarding Claim 1, Waatti teaches an article of footwear (100) comprising: an upper (102); and
`
`an extruded component (200) (paragraph [0038], “printed structures 200 are printed at least partially
`
`onto upper 102 by a printer,” wherein printing is a form of extrusion) having a first segment (220), a
`
`second segment(230), an inner surface (271, 281) facing the upper, and an outer surface (272, 282),
`
`wherein the inner surface is bonded to the upper at the first segment and is not bonded to the upper at
`
`the second segment (paragraph [0056], “FIG. 2 further showsfirst printed structure 201 having first
`
`surface 271 of attached portion 270 extending below exterior surface 109 of upper 102... Whereas
`
`attached portion 270 may be bonded to upper 102, free portion 280 may generally be free of any
`
`bonding with individual fibers of upper 102,” wherein fig. 2 shows the attached portion (270) being a
`
`part of the first segment (220) and the free portion (280) being a part of the second segment (230)).
`
`Regarding Claim 2, Waatti teachesall of the limitations of the article of footwear of Claim 1, as
`
`discussed in the rejections above. Waatti further teaches a third segment(202) of the extruded
`
`

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`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 5
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`component (200)that is bonded to the upper (102) (fig. 4 shows the third segment (202) being part of
`
`extruded component(200), wherein paragraph [0040] discloses “second printed structure 202 could
`
`vary in any manner, and mayinclude anyof the features described in this embodimentfor first printed
`
`structure 201” therein as the third segment includes a mirror image of the first segment, it is also
`
`bondedto the upper as cited above), wherein the second segmentis between the first and third
`
`segments(figs. 1 and 4 show opposite sides of the article of footwear, the first segment being disposed
`
`on the first side below the second segment and the third segment being disposed on the opposite side,
`
`therein positioning the second segment between the first and third segments).
`
`Regarding Claim 3 in view of the indefiniteness as explained above, Waatti teachesall of the
`
`limitations of the article of footwear of Claim 2, as discussed in the rejections above. Waatti further
`
`teaches wherein the second segment(230) is disposed over a void in the upper (102) (fig. 1 shows the
`
`second segment(230) placed at the top of the upper and therein being disposed over a void in the
`
`upper (102)).
`
`Regarding Claim 4 in view of the indefiniteness as explained above, Waatti teachesall of the
`
`limitations of the article of footwear of Claim 2, as discussed in the rejections above. Waatti further
`
`teaches a tongue region (105), wherein the second segment(230) is disposed over the tongue region
`
`(fig. 1 shows the second segment (230) placed in the region (105), referred to in paragraph [0045] as the
`
`lacing region, which is considered as equivalent to the tongue region).
`
`Regarding Claim 6, Waatti teachesall of the limitations of the article of footwear of Claim 2, as
`
`discussed in the rejections above. Waatti further teaches wherein a portion of the upper (502) disposed
`
`underneath the second segment (630) is configured to move independently of the second segment
`
`(paragraph [0076], “This method ensures fastener receiving portions 630 do not bond directly to a
`
`surface of upper 502,” wherein as the second segmentis not bonded to the upper, the second segment
`
`and the portion of the upper disposed beneath it are able to move freely in relation to one another).
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 6
`
`Regarding Claim 7, Waatti teachesall of the limitations of the article of footwear of Claim 1, as
`
`discussed in the rejections above. Waatti further teaches wherein the upper (102) comprises a textile
`
`fabric (paragraph [0034] “Some embodiments of upper 102 include a textile material”).
`
`9.
`
`Claim(s) 14-16 and 20is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by
`
`Bohnsacket al. (US 2017/0231319)
`
`Regarding Claim 14, Bohnsack et al. teaches an article of footwear (10) comprising: a sole (50):
`
`an upper (20) coupled to the sole (50) (paragraph [0047], “the support cage 40 and its components can
`
`be minimally stitched to the upper in preselected locations depending on the function,” wherein the
`
`support cage (40) includes the extruded component(40L) and as the extruded componentis bonded to
`
`the upper via mechanical interlocking via sewing, wherein the preselected location including stitching is
`
`considered the bonded segment and remaining portion of the extruded componentis considered the
`
`non-bonded segment), the non-bonded segment forming an upper support element configured to
`
`provide support to a wearerof the article of footwear in a midfoot region of the article of footwear (fig.
`
`1 showsthe entire extruded component(40L) including the non-bonded segmentdisposed in the
`
`midfoot region and paragraph [0029] discloses “the support cage 40 can be constructed as a semi-rigid
`
`and flexible unit,” therein the non-bonded segment of the extruded component(part of the support
`
`cage (40)) is also semi-rigid and flexible and provides support to the wearer in the midfoot region,
`
`therein forming an upper support element, see also annotatedfig.).
`
`Examiner notes that the limitation “extruded component”is being treated as a product-by-
`
`process limitation. The determination of patentability in a product-by-processclaim is based on the
`
`productitself, even though the claim may be limited and defined by the process. Thatis, the productin
`
`such a claim is unpatentable if it is the same as or obvious from the productof 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
`
`

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`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 7
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`unpatentable if the claimed product is the same as a productof the prior art (see MPEP § 2113). In the
`
`instant case, the support cage (reference character 40 whichincludesthe first and second extruded
`
`components (40L, 40M) of the Bohnsack reference are considered as equivalent to the “extruded
`
`component”as they have the same structure as claimed and can be formed of a thermoplastic material,
`
`which is capable of being extruded, even thoughit is formed by a different method (paragraph [0055]
`
`“The components of the support cage 40 mentioned abovecan beintegrally joined with one another,
`
`formed as a unitary, monolithic structure constructed from a polymeric material that is semi-rigid but
`
`flexible. Optionally, the support cage can be constructed from thermoplastic polyurethane elastomer,
`
`other thermoplastic elastomers”).
`
`Regarding Claim 15, Bohnsack et al. teachesall of the limitations of the article of footwear of
`
`Claim 14, as discussed in the rejections above. Bohnsack etal. further teaches wherein the bonded
`
`segment of the extruded componentis bondedto a portion of the upper (paragraph [0047], “the
`
`support cage 40 and its components can be minimally stitched to the upper in preselected locations
`
`depending on the function,” wherein the support cage (40) includes the extruded component(40L) and
`
`as the extruded componentis bonded to the upper via mechanical interlocking via sewing, wherein the
`
`preselected location including stitching is considered the bonded segment).
`
`Regarding Claim 16, Bohnsack et al. teachesall of the limitations of the article of footwear of
`
`Claim 14, as discussed in the rejections above. Bohnsack etal. further teaches wherein the bonded
`
`segment of the extruded component(40L) is bonded to a portion of the sole (fig. 1 shows the extruded
`
`componenthaving a segment bonded to a portion of the sole (50) between the midsole (52) and the
`
`outsole (55).
`
`Regarding Claim 17, Bohnsack et al. teachesall of the limitations of the article of footwear of
`
`Claim 14, as discussed in the rejections above. Bohnsack etal. further teaches wherein the upper
`
`support element comprises a non- extruded component(49) (annotated fig. 8 shows the upper support
`
`

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`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 8
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`element comprising lace attachment elements (49), and paragraph [0063] discloses “the support cage
`
`40 can include one or more lace attachment elements 49 adapted for use with the lacing system 39.
`
`These lace attachment elements 49 can be disposed at the upper portions of the lateral and medial cage
`
`elements. The lace elements can be in the form of grommets,rings or holes,” wherein grommets are not
`
`extruded and the upper support elementis part of the support cage (40)).
`
`Regarding Claim 18, Bohnsack et al. teachesall of the limitations of the article of footwear of
`
`Claim 17, as discussed in the rejections above. Bohnsack etal. further teaches wherein the non-extruded
`
`component(49) comprises loops configured to receive laces (paragraph [0063] discloses “the support
`
`cage 40 can include one or morelace attachment elements 49 adapted for use with the lacing system
`
`39. These lace attachment elements 49 can be disposed at the upper portions of the lateral and medial
`
`cage elements. The lace elements can be in the form of grommets, rings or holes,” wherein the
`
`grommetsform loops, as fig. 8 shows the non-extruded component(49) being round).
`
`Regarding Claim 19, Bohnsack et al. teachesall of the limitations of the article of footwear of
`
`Claim 17, as discussed in the rejections above. Bohnsack etal. further teaches wherein the non-extruded
`
`component (49) is embedded within the extruded component (40L) (fig. 8 shows the non-extruded
`
`components (49) extending through the extruded component (40L) of the support cage (40) therein
`
`grommets(as cited above) would also extend through and be embeddedin the extruded component).
`
`Regarding Claim 20, Bohnsack et al. teachesall of the limitations of the article of footwear of
`
`Claim 14, as discussed in the rejections above. Bohnsack etal. further teaches a second extruded
`
`component (40M) having a bonded segment and a non-bonded segment(paragraph [0047], “the
`
`support cage 40 and its components can be minimally stitched to the upper in preselected locations
`
`depending on the function,” wherein the support cage (40) includes the second extruded component
`
`(40M) and as the second extruded component is bonded to the upper via mechanical interlocking via
`
`sewing, wherein the preselected location including stitching is considered the bonded segment and
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 9
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`remaining portion of the extruded componentis considered the non-bonded segment, wherein this
`
`would occur on both the first and second extruded componentsas they are mirror images of one
`
`another), the second extruded componentdisposed on an opposite side of the article of footwear from
`
`the extruded component(fig. 6 showsthe first (40L) and second (40M) extruded components disposed
`
`on opposite sides of the footwear).
`
`cd3
`Bahnsackefal. 319
`
`dara
`
`annotated Fig@2 Bs
`
`upper support
`element
`
`Fig. 8
`
`Claim Rejections - 35 USC § 103
`
`10.
`
`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 ordinary skill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 10
`
`11.
`
`Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Waatti (US
`
`2016/0219982).
`
`Regarding Claim 5, Waatti teachesall of the limitations of the article of footwear of Claim 2, as
`
`discussedin the rejections above.
`
`Waatti does not explicitly teach wherein the first segment (220) is disposed on a medial side of
`
`the upper and the third segment(202) is disposed on a lateral side of the upper, however, as paragraph
`
`[0040] discloses that the first and third segments (201, 202, wherein the first and second segment are
`
`collectively referred to as component 201) can have the same features as one another, and figs. 1 and 4
`
`show the first and third components being mirror images of one another on the lateral and medial sides
`
`of the upper. Therefore, it would have been obvious to one of ordinaryskill in the art before the
`
`effective filing date of the claimed invention to modify Waatti such that he first segmentis disposed on
`
`a medial side of the upper and the third segmentis disposed on a lateral side of the upper as it is noted
`
`that there is no evidenceofcriticality by use of only the first segment on the lateral side and the third
`
`segment on the medial side. Further the same predictable result would be obtained by using the first
`
`segment on the medial side and the third segment on the lateral side (see MPEP § 2143). It has also
`
`been held that when the only difference between the prior art and the claimed invention is a reversal of
`
`parts that does not alter the function of a device, a finding of prima facie obviousness is appropriate
`
`(see MPEP § 2144.04 A, in respect to in re Gazda).
`
`12.
`
`Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Waatti (US
`
`2016/0219982) and further in view of Taniguchi et al. (US 2015/0013187).
`
`Regarding Claim 8, Waatti teachesall of the limitations of the article of footwear of Claim 1, as
`
`discussedin the rejections above.
`
`Waatti does not teach wherein the upper comprises a knitted fabric.
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 11
`
`Attention is drawn to Taniguchi et al., which teaches an analogous article of apparel. Taniguchi
`
`et al. teaches an article of footwear (fig. 2A) comprising: an upper (1); and an extruded component(2)
`
`(Examiner notes that “extruded component”is a product by process limitation that is interpreted as
`
`explained above) having a first segment (2a) and a second segment (2b). Taniguchi et al. further teaches
`
`wherein the upper (1) comprises a knitted fabric (paragraph [0015], “sock-shaped base member 1 of a
`
`knit fabric, a knit-like fabric and/or a woven fabric”).
`
`Therefore, it would have been obvious to one ofordinaryskill in the art before the effective
`
`filing date of the claimed invention to modify Bohnsacketal. to include the teachings of Taniguchi et al.
`
`such that the upper comprises a knitted fabric as it is no more than a simple substitution of one material
`
`knownin the art for another knownfor the use of an upper that would produce no unexpected results,
`
`especially as Waatti teaches the upper may be mesh, which can be a knitted fabric. Further, it has been
`
`held that when the only difference between the prior art and the claimed invention is the provision of a
`
`specific material recognized in the art as being suitable for the intended use of the claimed component a
`
`finding of prima facie obviousnessis appropriate (see MPEP § 2144.07).
`
`13.
`
`Claim(s) 9 and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bohnsack
`
`et al. (US 2017/0231319) in view of Sterman et al. (US 2017/0202309).
`
`Regarding Claim 9, Bohnsacket al. teaches an article of footwear (10) comprising: a sole (50); an
`
`upper (20) coupled to the sole (50) (paragraph [0028], “The upper is joined with a sole assembly 50”),
`
`wherein a portion of the upper comprisesa low friction material (paragraph [0058], “The panels exterior
`
`31E and 32E, and the exterior 20E in general, can be constructed from a mesh material formed from a
`
`nylon or other braided material, and can be generally slippery or low friction,” wherein figs. 1 and 7
`
`show the upperincluding the panels (31, 32, 33)); and an extruded component (40) having a bonded
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`segment and a non-bonded segment (paragraph [0047], “the support cage 40 and its components can
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`be minimally stitched to the upper in preselected locations depending on the function,” wherein the
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`Application/Control Number: 16/778, 741
`Art Unit: 3732
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`Page 12
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`extruded componentis bondedto the upper via mechanical interlocking via sewing, wherein the
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`preselected location including stitching is considered the bonded segment and remaining portion of the
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`extruded componentis considered the non-bonded segment), wherein the non-bonded segmentis
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`disposed over the low friction material (paragraph [0058] discloses “The panels exterior 31E and 32E,
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`and the exterior 20E in general, can be constructed from a mesh material formed from a nylon or other
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`braided material, and can be generally slippery or low friction. This can enable the interior surface 401
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`of the support cage 40 to movefreely and float relative to the exterior of the panels,” wherein as the
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`portion of the extruded componentthat is disposed over the panels is freely movable, obviously it is the
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`non-bonded segmentthat is disposed over the low friction material).
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`Examiner notes that the limitation “extruded component”is being treated as a product-by-
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`process limitation. The determination of patentability in a product-by-processclaim is based on the
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`productitself, even though the claim may be limited and defined by the process. Thatis, the productin
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`such a claim is unpatentable if it is the same as or obvious from the productof the prior art, even if the
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`prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ964, 966 (Fed.
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`Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is
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`unpatentable if the claimed product is the same as a productof the prior art (see MPEP § 2113). In the
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`instant case, the support cage (40) of the Bohnsack reference are considered as equivalent to the
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`“extruded component” as they have the same structure as claimed and can be formed ofa
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`thermoplastic material, which is capable of being extruded, even thoughit is formed by a different
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`method (paragraph [0055] “The componentsof the support cage 40 mentioned above can beintegrally
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`joined with one another, formed as a unitary, monolithic structure constructed from a polymeric
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`material that is semi-rigid but flexible. Optionally, the support cage can be constructed from
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`thermoplastic polyurethane elastomer, other thermoplastic elastomers”).
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`Bohnsack et al. does not teach wherein the low-friction material is a non-stick material.
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`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 13
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`Attention is drawn to Sterman et al., which teaches an analogous article of footwear. Sterman et
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`al. teaches an article of footwear (1700) comprising: a sole (1710); an upper (1750) coupled to the sole,
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`wherein a portion of the upper comprises a non-stick material (paragraph [0095], “Furthermore,in
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`other cases, various portions of the textile strands or the interior of the polymer layers may be coated
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`with or otherwise include a non-stick material or a low friction material,” wherein the polymer layers
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`and textile strands are part of the upper).
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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 Bohnsacketal. to include the teachings of Sterman etal.
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`such that the low-friction material is a non-stick material as it is no more than a simple substitution of
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`one material for another that is known in the art of footwear uppers, and that would haveno criticality,
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`changein function, or synergistic effect, especially as non-stick materials are low friction. Further, it has
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`been held that when the only difference between the prior art and the claimed invention is the
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`provision of a specific material recognized in the art as being suitable for the intended use of the
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`claimed componenta finding of prima facie obviousness is appropriate (see MPEP § 2144.07).
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`Regarding Claim 12, Bohnsack et al. teachesall of the limitations of the article of footwear of
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`Claim 9, as discussed in the rejections above.
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`Bohnsack et al. does not teach wherein the non-stick material comprises a coating.
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`Attention is drawn to Sterman et al., which teaches an analogous article of footwear. Sterman et
`
`al. teaches an article of footwear (1700) comprising: a sole (1710); an upper (1750) coupled to the sole,
`
`wherein a portion of the upper comprises a non-stick material (paragraph [0095], “various portions of
`
`the textile strands or the interior of the polymer layers may be coated with or otherwise include a non-
`
`stick material or a low friction material,” wherein the polymer layers and textile strands are part of the
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`upper). Sterman etal. further teaches wherein the non-stick material comprises a coating (paragraph
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`

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`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 14
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`[0095], “various portions of the textile strands or the interior of the polymer layers may be coated with
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`or otherwise include a non-stick material or a low friction material”).
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`Therefore, it would have been obvious to one ofordinaryskill in the art before the effective
`
`filing date of the claimed invention to modify Bohnsacketal. to include the teachings of Sterman etal.
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`such that the non-stick material comprises a coating as it is no more than a simple substitution of one
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`material for another that is knownin the art of footwear uppers, and that would haveno criticality,
`
`changein function, or synergistic effect, especially as non-stick materials are low friction. Further, it has
`
`been held that when the only difference between the prior art and the claimed invention is the
`
`provision of a specific material recognized in the art as being suitable for the intended use of the
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`claimed componenta finding of prima facie obviousness is appropriate (see MPEP § 2144.07).
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`Regarding Claim 13, Bohnsack et al. teachesall of the limitations of the article of footwear of
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`Claim 9, as discussed in the rejections above.
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`Bohnsack et al. does not explicitly teach wherein the portion of the upper comprising the non-
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`stick material is configured to move independently of the non-bonded segment. However, Bohnsack et
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`al. has been modified as set forth above such that the low friction material of Bohnsack is non-stick
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`material, and as Bohnsackfurther teaches “the panels exterior 31E and 32E, and the exterior 20E in
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`general, can be constructed from a mesh material formed from a nylon or other braided material, and
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`can be generally slippery or low friction. This can enable the interior surface 401 of the support cage 40
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`to movefreely and float relative to the exterior of the panels,” (paragraph [0058]) wherein as the
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`portion of the extruded componentthatis