ReebokInternational Limited
`Application No. 16/778,741
`
`Remarks
`
`Reconsideration of this Application is respectfully requested.
`
`Uponentry of the foregoing amendment, claims 1—20 are pendingin the application. Claims
`
`1, 9, and 14 are independentclaims. Claims 1, 9, and 14 are amended. Claim 16 is canceled without
`
`prejudice or disclaimer. These changes introduce no new matter, and their entry is respectfully
`
`requested.
`
`Based on the above amendmentand the following remarks, Applicant respectfully requests
`
`that the Examiner reconsiderall outstanding rejections and that they be withdrawn.
`
`Rejections under 35 U.S.C. § 102
`
`Claims 14, 15 and 20 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by U.S. Patent
`
`Application Publication No. 2016/0219982 to Waattt.
`
`Independent claim 14
`
`Without agreeing to the propriety of the rejection, and solely to expedite prosecution, claim
`
`14 1s amendedand nowrecites, in part, “wherein the bonded segmentis directly bonded to a portion
`
`of the sole due to hardening of the extruded component.” Waatti does not disclose at least this
`
`feature of claim 14.
`
`Waatti discloses a 3D printed structure 200 formed by a three-dimensional printing process
`
`(allegedly an extruded component) on an upper 102, and structure 200 further includes strip
`
`portions 220 attached to the surface of the upper and fastener receiving portions 230 bending up
`
`away from the upper. Waatti, J] [0037] and [0042]. The Office relies on Waatti’s strip portions 220
`
`for allegedly disclosing the recited bonded segment and receiving portions 230 for allegedly
`
`disclosing the recited non-bonded segment. Office Action, 2. However, Waatti’s strip portions 220
`
`are not directly bondedto a portion of the sole due to hardeningofit.
`
`As shown in FIG. 7 of Waatti, the printable material forming structure 200 is disposed on
`
`upper 102 when upper 102is laid flat. Therefore, Waatti’s sole is secured to upper 102 after
`
`structure 200 is printed on upper 102, such that structure 200 is not directly bondedto the sole.
`
`Atty. Dkt. No. 2073.3760003
`
`

`

`ReebokInternational Limited
`Application No. 16/778,741
`
`Waatti,
`
`[0031]. Indeed, Waatti discloses that “printable material forming attached portion 270
`
`may absorb into porous regions of upper 102 and bond with individualfibers in upper 102 before
`
`the printable material cures.” /d., § [0055]. A person of skill in the art would have therefore
`
`understood that Waatti’s the printable material cannot be printed on a sole that does not have porous
`
`regions and fibers to bond with the printable material.
`
`Accordingly, because Waatti fails to disclose each and every feature of claim 14, claim 14
`
`and its dependentclaimsare not anticipated by Waatti. Applicant respectfully requests
`
`reconsideration and withdrawal of the § 102 rejections of claims 14, 15 and 20.
`
`Rejections under 35 U.S.C. § 103
`
`Claims 1—7 and 16-19 are rejected under 35 U.S.C. § 103 as unpatentable over U.S. Patent
`
`Application Publication No. 2016/0219982 to Waatti in view of U.S. Patent Application Publication
`
`No. 2017/0231319 to Bohnsackef al.
`
`Independent claim 1
`
`Without agreeing to the propriety of the rejection, and solely to expedite prosecution, claim
`
`1 is amended and nowrecites, in part, “a non-extruded component comprising afabric and having a
`
`portion embedded within the extruded component.” The applied references do not teach or suggest
`
`at least this feature of claim 1.
`
`The Office acknowledges that Waatti does not disclose a non-extruded component
`
`embedded within printed structure 200 and instead relies on Bohnsack’s lace attachment elements
`
`49 for this feature. Office Action, 4-5.
`
`Bohnsackdiscloses a footwear having a support cage 40 at least partially free floated over
`
`an upper 20, and support cage 40 can be minimally stitched to upper 20 in preselected locations.
`
`Bohnsack, {J [0028] and [0047]. Bohnsack’s support cage 40 can further include lace attachment
`
`elements 49. /d., § [0063]. However, While lace attachment elements 49 can be in the form of
`
`grommets, rings or holes, Bohnsackfails to disclose that lace attachment elements 49 can include a
`
`fabric. /d.
`
`Atty. Dkt. No. 2073.3760003
`
`

`

`ReebokInternational Limited
`Application No. 16/778,741
`
`Accordingly, claim 1 and its dependent claim would not have been obvious overthe applied
`
`references. Applicant respectfully requests reconsideration and withdrawal of the § 103 rejections of
`
`claims 1-7.
`
`Dependent claims 16—19
`
`Claims 16-19 depend from claim 14. As discussed before with respect to claim 14, Waatti
`
`fails to disclose a bonded segmentdirectly bondedto a portion of the sole due to hardening of the
`
`extruded component. Bohnsack fails to cure the deficiencies of Waatti, as Bohnsack’s support cage
`
`40 is not directly bondedto a sole due to the hardeningofit, but it is molded separately from sole
`
`assembly 50 and upper 20 and thenstitched to upper 20. Bohnsack, 4] [0064]-[0065].
`
`Accordingly, claim 14 and dependent claims 16—19 would not have been obvious overthe
`
`applied references. Applicant respectfully requests reconsideration and withdrawal of the § 103
`
`rejections of claims 16—19.
`
`Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over Waatti in view of Bohnsack
`
`and further in view of U.S. Patent Application Publication No. 2015/0013187 to Taniguchi ef al.
`
`Claim 8 depends from claim 1. As discussed before with respect to claim 1, Waatti and
`
`Bohnsackfail to disclose a non-extruded component comprising a fabric and having a portion
`
`embedded within the extruded component. Taniguchi fails to cure the deficiencies of Waatti and
`
`Bohnsack, as Taniguchi also does not disclose a non-extruded component comprising a fabric and
`
`having a portion embedded within the extruded component.
`
`Accordingly, claim 1 and dependent claim 8 would not have been obvious overthe applied
`
`references. Applicant respectfully requests reconsideration and withdrawal of the § 103 rejection of
`
`claim 8.
`
`Claims 9, 12, and 13 are rejected under 35 U.S.C. § 103 as unpatentable over Bohnsack in
`
`view of U.S. Patent Application Publication No. 2016/0286898 to Manzet al.
`
`Independent claim 9
`
`Atty. Dkt. No. 2073.3760003
`
`

`

`ReebokInternational Limited
`Application No. 16/778,741
`
`Without agreeing to the propriety of the rejection, and solely to expedite prosecution, claim
`
`9 is amended and now recites, in part, “wherein the bonded segmentis directly bondedto a portion
`
`of the upper due to hardening of the extruded component, wherein the portion of the upper to which
`
`the bonded segmentis directly bonded does not comprise the non-stick material.” The applied
`
`references do not teach or suggestat least this feature of claim 9.
`
`The Office relies on Bohnsack’s support cage 40 as allegedly correspondingto the recited
`
`extruded component, and the portion stitched to upper as allegedly corresponding to a bonded
`
`segment. Office Action, 14. However, support cage 40 is molded separately from sole assembly 50
`
`and upper 20, and then joined with sole assembly 50 andstitched to upper 20. Bohnsack, {Jj [0064]-
`
`[0065]. That is, support cage 40 is attached to the article of footwearby stitching after it is molded
`
`to shape.
`
`At least because Bohnsack’s support cage 40 is attached bystitching,it is not directly
`
`bonded tothe article of footwear as provided by claim 9. Moreover, for the same reason, the
`
`stitched portion is not bondedto the article of footwear due to hardening of the extruded
`
`component. As one ofskill in the art would understand, such bond by hardening of the extruded
`
`component would result in a fundamentally different structure than Bohnsack’s attachment by
`
`stitching.
`
`Manz also does not disclose an extruded componentdirectly bonded to a portion of the
`
`upper that does not comprise the non-stick material due to hardening of the extruded component.
`
`Accordingly, claim 9 and its dependent claims would not have been obvious over the
`
`applied references. Applicant respectfully requests reconsideration and withdrawal of the § 103
`
`rejection of claims 9, 12, and 13.
`
`Claim 10 is rejected under 35 U.S.C. § 103 as allegedly being unpatentable over Bohnsack
`
`in view of Manz and further in view of U.S. Patent Application Publication No. 2012/0011744 to
`
`Bell et al. (“Bell”).
`
`Claim 10 depends from claim 9. As discussed before with respect to claim 9, Bohnsack and
`
`Manz fail to disclose an extruded componentdirectly bondedto a portion of an upper that does not
`
`Atty. Dkt. No. 2073.3760003
`
`

`

`ReebokInternational Limited
`Application No. 16/778,741
`
`comprise a non-stick material due to hardening of the extruded component. Bell fails to cure the
`
`deficiencies of Bohnsack and Manz.
`
`Accordingly, claim 9 and dependent claim 10 would not have been obviousoverthe applied
`
`references. Applicant respectfully requests reconsideration and withdrawal of the § 103 rejection of
`
`claim 10.
`
`Claim 11 is rejected under 35 U.S.C. § 103 as allegedly being unpatentable over Bohnsack
`
`in view of Manz andfurther in view of Taniguchi.
`
`Claim 11 depends from claim 9. As discussed before with respect to claim 9, Bohnsack and
`
`Manz fail to disclose an extruded componentdirectly bondedto a portion of an upper that does not
`
`comprise a non-stick material due to hardening of the extruded component. Taniguchi fails to cure
`
`the deficiencies of Bohnsack and Manz.
`
`Accordingly, claim 9 and dependent claim 11 would not have been obviousoverthe applied
`
`references. Applicant respectfully requests reconsideration and withdrawal of the § 103 rejection of
`
`claim 11.
`
`Atty. Dkt. No. 2073.3760003
`
`

`

`-10-
`
`Conclusion
`
`ReebokInternational Limited
`Application No. 16/778,741
`
`All of the stated groundsof rejection have been properly traversed, accommodated, or
`
`rendered moot. Applicant therefore respectfully requests that the Office reconsiderall presently
`
`outstanding rejections and that they be withdrawn. A full and complete reply has been madeto the
`
`outstanding Office Action and, as such, the present application is in condition for allowance. If the
`
`Office believes, for any reason, that personal communication will expedite prosecution of this
`
`application, the Office is invited to telephone the undersigned at the numberprovided.
`
`Promptand favorable consideration of this Amendment and Reply is respectfully requested.
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Yangbeini Wang #800,005/
`
`Yangbeini Wang
`Attorney for Applicant
`Registration No. 800,005
`
`Date: October 19, 2023
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`Atty. Dkt. No. 2073.3760003
`
`