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
`
`06/29/2023
`
`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.
`16/778, 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 03/13/2023.
`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*
`1-20 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C) Claim(s)__ is/are allowed.
`Claim(s) 1-20 is/are rejected.
`1) Claim(s)__is/are objectedto.
`Cj} Claim(s)
`are subjectto restriction and/or election requirement
`* 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)
`
`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 20230620
`
`

`

`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.
`
`Response to Amendment
`
`2.
`
`The amendmentsfiled on 03/13/2023 have been entered. Claims 1-20 remain pending in the
`
`application with Claims 1, 9 and 14 being newly amended. Applicant’s remarks have overcome each and
`
`every objection and 35 U.S.C. 112(b) rejection previously set forth in the Non-final Office Action mailed
`
`11/14/2022.
`
`Claim Rejections - 35 USC § 102
`
`3.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis
`
`for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale,
`or otherwise available to the public before the effectivefiling date of the claimed invention.
`
`4.
`
`Claim(s) 14, 15, and 20 is/are rejected under 35 U.S.C. 102(a){1) as being anticipated by Waatti
`
`(US 2016/0219982).
`
`Regarding Claim 14, Waatti teaches an article of footwear (100) comprising: a sole (110); an
`
`upper (102) coupled to the sole; and an extruded component (201) having a bonded segment (220) and
`
`a non-bonded segment (230), wherein the non-bonded segment (230) forms an upper support element
`
`configured to provide support to a wearer of the article of footwear in a midfoot region of the article of
`
`footwear (fig. 5 shows the non-bonded segmentprovided in the midfoot region (12) and paragraph
`
`[0041] discloses “fastener receiving portions 230, including apertures 240, may function as eyelets for
`
`receiving a lace or other similar fastener,” wherein as the non-bonded segmentreceiveslaces it would
`
`necessarily form an upper support element to provide support to the wearer of the article of footwear),
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 3
`
`and wherein the bonded segment is directly bonded to the article of footwear due to hardening of the
`
`extruded component(paragraph [0055] discloses “The printable material forming attached portion 270
`
`may absorb into porous regions of upper 102 and bond withindividual fibers in upper 102 before the
`
`printable material cures. The term “cure” or “curing” as used throughoutthis detailed description and in
`
`the claims refers to a process of treating and/or drying,” wherein the attached portion (270)is part of
`
`the bonded segments(220) (see fig.2), and wherein drying would necessarily harden the extruded
`
`component).
`
`Regarding Claim 15, Waatti teachesall of the limitations of the article of footwear of Claim 14,
`
`as discussedin the rejections above. Waatti further teaches wherein the bonded segment(220) of the
`
`extruded component(200) is bonded to a portion of the upper (102) (fig. 2 shows the bonded segment
`
`(220) bondedto a portion of the upper; paragraph [0055] discloses “The printable material forming
`
`attached portion 270 may absorb into porous regions of upper 102 and bond with individual fibers in
`
`upper 102,” wherein the attached portion (270)is part of the bonded segments (220)(see fig.2)).
`
`Regarding Claim 20, Waatti teachesall of the limitations of the article of footwear of Claim 14,
`
`as discussedin the rejections above. Waatti further teaches a second extruded component(202) having
`
`a bonded segment and a non-bonded segment(paragraph [0040] discloses “second printed structure
`
`202 could vary in any manner, and mayinclude any of the features described in this embodiment for
`
`first printed structure 201,” therefore the second printed structure (202) can have the bonded (220) and
`
`non-bonded (230) segments as described for the first extruded component (201)), the second extruded
`
`componentdisposed on an opposite side of the article of footwear from the extruded component(fig. 4
`
`showsthe second extruded component (202) on the opposite side of the article of footwear).
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`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:
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 4
`
`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.
`
`6.
`
`Claim(s) 1-7 and 16-19 is/are rejected under 35 U.S.C. 103 are unpatentable over Waatti (US
`
`2016/0219982) in view of Bohnsack et al. (US 2017/0231319).
`
`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)).
`
`Waatti does not teach a non-extruded component having a portion embedded within the
`
`extruded component.
`
`Attention is drawn to Bohnsacket al., which teaches an analogous article of footwear. Bohnsack
`
`et al. teaches an article of footwear (10) comprising: an upper (20); and an extruded component(40)
`
`having a first segment, a second segment, an inner surface {se¢ annotated Fig.) facing the upper, and an
`
`outer surface (see annotated Fig.}, 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 [0047], “the support cage 40 and its
`
`components can be minimally stitched to the upper in preselected locations depending on the
`
`function,” wherein the extruded component (40) is bonded at the inner surface to the upper via
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 5
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`mechanical interlocking via sewing, wherein the preselected location including stitching is considered
`
`the first segment and remaining portion of the extruded componentis considered the second segment);
`
`and a non-extruded component(49) having a portion embedded within the extruded component(40)
`
`(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 elementscan bein the form of
`
`grommets, rings or holes,” wherein grommets are not extruded and the upper support elementis part
`
`of the support cage (40) and fig. 8 shows the upper support element comprising lace attachment
`
`elements (49) extending through the extruded component(40) therein grommets (as cited above)
`
`would also extend through and be embeddedin the extruded component).
`
`Therefore, it would have been obvious to one ofordinaryskill in the art before the effective
`
`filing date of the claimed invention to modify Waatti to include the teachings of Bohnsacket al. such
`
`that the footwear includes a non-extruded component having a portion embedded within the extruded
`
`componentso as to reinforce and increase the durability of the lace attachments of the extruded
`
`components.
`
`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
`
`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
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 6
`
`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 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 200) 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
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 7
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`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).
`
`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).
`
`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”).
`
`Regarding Claim 16, Waatti teachesall of the limitations of the article of footwear of Claim 14,
`
`as discussed in the rejections above.
`
`Waatti does not teach wherein the bonded segmentof the extruded componentis bonded to a
`
`portion of the sole.
`
`Attention is drawn to Bohnsacket al. which teaches an analogous article of footwear. 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
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 8
`
`segment forming an upper support element configured to provide support to a wearer of the article of
`
`footwear in a midfoot region of the article of footwear (fig. 1 shows the 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
`
`segmentof 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.). Bohnsack et al. further teaches wherein the bonded segment of the extruded
`
`component (40L) is bonded to a portion of the sole (fig. 1 shows the extruded component having a
`
`segment bonded to a portion of the sole (50) between the midsole (52) and the outsole (55)).
`
`Therefore, it would have been obvious to one ofordinaryskill in the art before the effective
`
`filing date of the claimed invention to modify Waatti to include the teachings of Bohnsack et al. such
`
`that the bonded segment of the extruded componentis bondedto a portion of the sole so as to increase
`
`the strength and durability of the connection between the upper and sole via the bonded segment.
`
`Regarding Claim 17, Waatti teachesall of the limitations of the article of footwear of Claim 14,
`
`as discussed in the rejections above.
`
`Waatti does not teach wherein the upper support element comprises a non-extruded
`
`component.
`
`Attention is drawn to Bohnsacket al. which teaches an analogous article of footwear. 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
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 9
`
`segment forming an upper support element configured to provide support to a wearer of the article of
`
`footwear in a midfoot region of the article of footwear (fig. 1 shows the 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
`
`segmentof 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.). Bohnsack et al. further teaches wherein the upper support element comprises a
`
`non- extruded component(49) (annotated fig. 8 shows the upper support 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 element is part of the support cage (40)).
`
`Therefore, it would have been obvious to one ofordinaryskill in the art before the effective
`
`filing date of the claimed invention to modify Waatti to include the teachings of Bohnsacket al. such
`
`that the footwear includes a non-extruded componentso as to reinforce and increase the durability of
`
`the lace attachments of the extruded components.
`
`Regarding Claim 18, Waatti teachesall of the limitations of the article of footwear of Claim 17,
`
`as discussed in the rejections above.
`
`Waatti does not teach wherein the non-extruded component comprises loops configured to
`
`receive laces.
`
`Attention is drawn to Bohnsacket al. which teaches an analogous article of footwear. 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
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 10
`
`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 wearer of the article of
`
`footwear in a midfoot region of the article of footwear (fig. 1 shows the 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
`
`segmentof 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 annotated fig.) and wherein the upper support element comprises a non- extruded component(49)
`
`(annotated fig. 8 shows the upper support element comprising lace attachment elements (49), and
`
`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 elementscan bein the form of
`
`grommets, rings or holes,” wherein grommets are not extruded and the upper support elementis part
`
`of the support cage (40)). 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 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 the grommets form loops,
`
`as fig. 8 shows the non-extruded component(49) being round).
`
`Therefore, it would have been obvious to one ofordinaryskill in the art before the effective
`
`filing date of the claimed invention to modify Waatti to include the teachings of Bohnsacket al. such
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 11
`
`that the non-extruded component comprises loops configured to receive laces so as to reinforce and
`
`increase the durability of the lace attachments of the extruded components.
`
`Regarding Claim 19, Waatti teachesall of the limitations of the article of footwear of Claim 17,
`
`as discussed in the rejections above.
`
`Waatti does not teach wherein the non-extruded componentis embedded within the extruded
`
`component.
`
`Attention is drawn to Bohnsacket al. which teaches an analogous article of footwear. 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 wearer of the article of
`
`footwear in a midfoot region of the article of footwear (fig. 1 shows the entire extruded component
`
`(40L) including the non-bonded segment disposed 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
`
`segmentof the extruded component(part of the support cage (40)) is also semi-rigid and flexible and
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`provides support to the wearer in the midfoot region, therein forming an upper support element, see
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`also annotated fig.) and wherein the upper support element comprises a non- extruded component(49)
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`(annotated fig. 8 shows the upper support element comprising lace attachment elements (49), and
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`paragraph [0063] discloses “the support cage 40 can include one or morelace attachment elements 49
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`adapted for use with the lacing system 39. These lace attachment elements 49 can be disposed at the
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`upper portions of the lateral and medial cage elements. The lace elementscan bein the form of
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`Art Unit: 3732
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`grommets, rings or holes,” wherein grommets are not extruded and the upper support elementis part
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`of the support cage (40)). Bohnsack etal. further teaches wherein the non-extruded component(49) is
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`embedded within the extruded component(40L)(fig. 8 shows the non-extruded components (49)
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`extending through the extruded component(40L) of the support cage (40) therein grommets(as cited
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`above) would also extend through and be embeddedin the extruded component).
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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 Waatti to include the teachings of Bohnsacket al. such
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`that the non-extruded componentis embedded within the extruded componentso as to reinforce and
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`increase the durability of the lace attachments of the extruded components.
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`-
`a
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`Bahnsack ef al. ‘319
`@
`annotated fig. 8
`a
`sas
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`
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`“Ny DEL
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`i” surface
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`
`
`
`
`
`Yn
`ss
`upper support
`element
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`O C 4) “
`surface
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`Application/Control Number: 16/778, 741
`Art Unit: 3732
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`7.
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`Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Waatti (US
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`2016/0219982) in view of Bohnsacket al. (US 2017/0231319) and further in view of Taniguchi et al. (US
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`2015/0013187).
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`Regarding Claim 8, Waatti teachesall of the limitations of the article of footwear of Claim 1, as
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`discussedin the rejections above.
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`Waatti does not teach wherein the upper comprises a knitted fabric.
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`Attention is drawn to Taniguchi et al., which teaches an analogous article of apparel. Taniguchi
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`et al. teaches an article of footwear (fig. 2A) comprising: an upper (1); and an extruded component(2)
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`(Examiner notes that “extruded component”is a product by process limitation that is interpreted as
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`explained above) having a first segment (2a) and a second segment (2b). Taniguchi et al. further teaches
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`wherein the upper (1) comprises a knitted fabric (paragraph [0015], “sock-shaped base member 1 of a
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`knit fabric, a knit-like fabric and/or a woven fabric”).
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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 Bohnsacket al. to include the teachings of Taniguchi etal.
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`such that the upper comprises a knitted fabric as it is no more than a simple substitution of one material
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`knownin the art for another knownfor the use of an upper that would produce no unexpected results,
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`especially as Waatti teaches the upper may be mesh, which can be a knitted fabric. Further, it has been
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`held that when the only difference between the prior art and the claimed invention is the provision of a
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`specific material recognized in the art as being suitable for the intended use of the claimed component a
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`finding of prima facie obviousnessis appropriate (see MPEP § 2144.07).
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`8.
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`Claim(s) 9 and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bohnsack
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`et al. (US 2017/0231319) in view of Manz et al. (US 2016/0286898).
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`Regarding Claim 9, Bohnsacket al. teaches an article of footwear (10) comprising: a sole (50); an
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`upper (20) coupled to the sole (50) (paragraph [0028], “The upper is joined with a sole assembly 50”);
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`Application/Control Number: 16/778, 741
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`and an extruded component(40) having a bonded segment and a non-bonded segment(paragraph
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`[0047], “the support cage 40 and its components can be minimally stitched to the upper in preselected
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`locations depending on the function,” wherein the extruded componentis bonded to the upper via
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`mechanical interlocking via sewing, wherein the preselected location including stitching is considered
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`the bonded segment and remaining portion of the extruded componentis considered the non-bonded
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`segment).
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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. That is, the product in
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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 portion of the upper comprises a non-stick material;
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`wherein the bonded segmentis directly bonded to a portion of the upper that does not comprise the
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`non-stick material, and wherein the non-bonded segmentis disposed over the non-stick