www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/778,741
`
`01/31/2020
`
`Brian CHRISTENSEN
`
`2073.3760003
`
`6239
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`(Reebok)
`1101 K Street, NW
`
`SMITH, HALEY ANNE
`
`WASHINGTON, DC 20005
`
`3732
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/22/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time 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 STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof 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 10/19/2023.
`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) 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)(2) 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*
`1-15 and 17-20 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) 1-15 and 17-20 is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] 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://www.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)£) 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
`1.1) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No. |
`3.2.) 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)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240517
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA orAIA Status
`
`1.
`
`The presentapplication,filed on or after March 16, 2013, is being examined under the first
`
`inventorto file provisions of the AIA.
`
`Continued Examination Under 37 CFR 1.114
`
`2.
`
`A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR
`
`1.17(e), was filed in this application after final rejection. Since this applicationis eligible for continued
`
`examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the
`
`finality of the previous Office action has been withdrawn pursuant to 37 CFR1.114. Applicant's
`
`submission filed on 10/19/2023 has been entered. Claims 1-15 and 17-20 remain pending in the
`
`application, with Claims 1, 9, and 14 being newly amended and Claim 16 being newly canceled.
`
`Claim Rejections - 35 USC § 103
`
`3.
`
`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 forthin 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.
`
`4.
`
`Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 are unpatentable over Waatti (US
`
`2016/0219982) in view of Wan etal. (US 2013/0025157).
`
`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 byaprinter,” 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
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 3
`
`the second segment(paragraph [0056], “FIG. 2 further showsfirst printed structure 201 havingfirst
`
`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 comprising a fabric and having a portion
`
`embedded within the extruded component.
`
`Attention is drawn to Wan etal., which teaches an analogousarticle of footwear. Wan etal.
`
`teaches an article of footwear (10) comprising: an upper (11); and an extruded component (33) having a
`
`first segment, aninner surface facing the upper, and an outer surface, wherein the inner surface is
`
`bonded to the upper at the first segment(fig. 2 showsthe first segment of the extruded component (33)
`
`having an inner surface facing and bonded to the upper (where 29 is part of the upper) and an outer
`
`surface adjacent to non-extruded component 19); paragraph [0035], “sufficient heat and pressure are
`
`applied by platen 72 soastoat least partially activate the hot-melt bonding agent on backing 29. This
`
`results ina partial bonding of backing 29, contouring elements 31-34 and outer panel 29”): and a non-
`
`extruded component (19) comprising a fabric (paragraph [0034], “outer panel 19 is a relatively fine
`
`mesh”) and having a portion embedded within the extruded component (paragraph [0033] discloses
`
`“the exterior surfaces of contouring elements 31-34 may have a pre-applied layer of unactivated hot-
`
`melt bonding agent,” and paragraph [0039] discloses “At the conclusion of the second pressing
`
`operation, stack 70 has been transformed into composite panel 15. Outer panel 19 is bonded to backing
`
`29 and tightly conforms to contouring elements 31-34,” therein the non-extruded fabric componentis
`
`obviously embedded in the extruded component by the bonding agent and the pressing operation).
`
`Examiner notes that the limitation “extruded component”is being treated as a product-by-
`
`process limitation. The determination of patentability in a product-by-process claimis based on the
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 4
`
`product itself, even though the claim may be limited and defined by the process. That is, the product in
`
`such aclaim is unpatentable if it is the same as or obvious from the product of the prior art, even if the
`
`prior product was made by a different process. Inre Thorpe, 777 F.2d 695, 697, 227 USPQ964, 966 (Fed.
`
`Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, andis
`
`unpatentable if the claimed product is the same as a product of the prior art (see MPEP § 2113).
`
`In
`
`regards to Wan, the extruded component(3) meets these limitations as Wan teaches the component
`
`being madeof synthetic leather, whichis a plastic and is therefore capable of being extruded (paragraph
`
`[0033], “each of contouring elements 31-34 is formed from a synthetic leather and has a thickness”).
`
`Therefore, it would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to modify Waattito include the teachings of Wan etal. suchthat the
`
`footwear includes anon-extruded component comprising a fabric and having a portion embedded
`
`within the extruded componentso as to reinforce and increase the durability of the extruded
`
`components byproviding a protective layer thereover.
`
`Regarding Claim 2, Waatti teaches all 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 may include any of the features described in this embodiment forfirst printed
`
`structure 201” therein as the third segmentincludes a mirror image of the first segment,it is also
`
`bonded to 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 segmentand the third segment being disposed on the opposite side,
`
`therein positioning the second segment between thefirst and third segments).
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page5S
`
`Regarding Claim 3, Waatti teaches all 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, Waatti teaches all 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), referredto in paragraph [0045] as the lacing region, which is considered as equivalent to
`
`the tongue region).
`
`Regarding Claim 5, Waatti teaches all of the limitations of the article of footwear of Claim 2, as
`
`discussed in 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, whereinthefirst 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 lateralside 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 segmenton 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
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 6
`
`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 teaches all of the limitations of the article of footwear of Claim 2, as
`
`discussed in the rejections above. Waatti further teaches whereina 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 toa
`
`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 movefreely in relation to one another).
`
`Regarding Claim 7, Waatti teaches all 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 8, Waatti teaches all of the limitations of the article of footwear of Claim 1, as
`
`discussed in the rejections above.
`
`Waatti does not teach wherein the upper comprises a knitted fabric.
`
`Attention is drawn to Wan etal., which teaches an analogousarticle of footwear. Wan etal.
`
`teachesan article of footwear (10) comprising: an upper (11, 29); and an extruded component(33)
`
`having a first segment, aninner surface facing the upper, and an outer surface, wherein the inner
`
`surface is bonded to the upper at the first segment(fig. 2 showsthe first segment of the extruded
`
`component (33) having an inner surface facing and bonded to the upper (where 29 is part of the upper)
`
`and an outer surface adjacent to non-extruded component 19); paragraph [0035], “sufficient heat and
`
`pressure are applied by platen 72 so as to at least partially activate the hot-melt bonding agent on
`
`backing 29. This results in a partial bonding of backing 29, contouring elements 31-34 and outer panel
`
`29”); and a non-extruded component (19) comprising a fabric (paragraph [0034], “outer panel 19 isa
`
`relatively fine mesh”) and having a portion embedded within the extruded component(paragraph
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 7
`
`[0033] discloses “the exterior surfaces of contouring elements 31-34 may have a pre-applied layer of
`
`unactivated hot-melt bonding agent,” and paragraph [0039] discloses “At the conclusion of the second
`
`pressing operation, stack 70 has been transformed into composite panel 15. Outer panel 19 is bonded to
`
`backing 29 and tightly conforms to contouring elements 31-34,” therein the non-extruded fabric
`
`componentis obviously embedded in the extruded component by the bonding agent and the pressing
`
`operation). Wan etal. further teaches wherein the upper (11, 29) comprises a knitted fabric (paragraph
`
`[0032], “backing 29 is a polyester knit material”).
`
`Therefore, it would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to modify Waattito include the teachings of Wan etal. suchthat the
`
`upper comprises a knitted fabric so as to give the upper somestretchto improve the wearer’s ease of
`
`donning the shoe,as it is no more than a simple substitution of one material known in the art for
`
`another known for 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 obviousness is appropriate (see MPEP § 2144.07).
`
`5.
`
`Claim(s) 9-13 is/are rejected under 35 U.S.C. 103 as being unpatentable Waatti(US
`
`2016/0219982) in view of Morlacchi (US 2005/0055843).
`
`Regarding Claim 9, Waatti teaches an article of footwear (100) comprising: a sole (110); an
`
`upper (102) coupled to the sole (paragraph [0031], “Sole system 110 is secured to upper 102”); and an
`
`extruded component (200) having a bonded segment (220) and a non-bonded segment (230) (paragraph
`
`[0038] discloses “printed structures 200 are printed at least partially onto upper 102 bya printer,”
`
`wherein printing is considered equivalent to extrusion; fig. 2 shows the bonded (220) and non-bonded
`
`(230) segments), whereinthe bonded segmentis directly bonded to a portion of the upper due to
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 8
`
`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 with individual fibers in
`
`upper 102 before the printable material cures,” wherein fig. 2 shows portion 270 being the lower
`
`surface of the bonded segment (220)), wherein the portion of the upper to which the bonded segment
`
`is directly bonded does not comprise the non-stick material (Waattiteaches the upper being made of
`
`“leather, synthetic material (suchas plastic or synthetic leather), mesh, or acombination thereon”
`
`(paragraph [0034]) and as these are not non-stick materials and as the bonded segmentis bonded to the
`
`outer surface of the upper, the bonded segmentis clearly directly bonded to a portion of the upper that
`
`does not comprise a non-stick material).
`
`Waatti does not teach wherein a portion of the upper comprises a non-stick material and
`
`wherein the non-bonded segmentis disposed over the non-stick material.
`
`Attention is drawn to Morlacchi, which teaches an analogousarticle of footwear. Morlacchi
`
`teaches anarticle of footwear comprising: asole (paragraph [0008], “anarticle of footwear comprises a
`
`sole (1)”; see fig. 1); an upper (4, 6) coupled to the sole (fig. 1 shows the upper (4, 6) coupled to the sole
`
`(1)), wherein a portion of the upper comprises a non-stick material (paragraph [0019], “the inner surface
`
`of upper 4 is lined by a waterproof or semi-permeable membrane 6... Membrane 6 preferably comprises
`
`a sheet of polyurethane, polytetrafluoroethylene, polyester or other polymeric material which is non-
`
`porous,” wherein polytetrafluoroethylene is a non-stick material, as disclosed by the instant
`
`specification).
`
`Therefore, it would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to modify Waattito include the teachings of Morlacchi such that a
`
`portion of the upper comprises a non-stick material so as to provide a waterproof and breathable layer
`
`to the upper, thereinimproving the wearer’s comfort during use (paragraph [0019], “the inner surface
`
`of upper 4 is lined by a waterproof or semi-permeable membrane6... Inthe present embodiment,
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 9
`
`membrane6 is semi-permeable,i.e., suitable for preventing water, not steam,from going through”).
`
`Examiner notes that neither Waatti or Morlacchi teach explicitly wherein the non-bonded segmentis
`
`disposed over the non-stick material, however as the upper of modified Waatti includes a non-stick layer
`
`of PTFE disposed alongits entire inner side, the non-bonded segment would clearly be disposed over the
`
`non-stick material in the modified article of footwear. Similarly, Examiner notes that the bonded -
`
`segment of the modified footwear of Waattiwould still be bonded to a portion of the upper that does
`
`not comprise non-stick material, as the bonded segmentis bonded to the outer portion of the upper
`
`and the non-stick material is disposed on the inner surface of the upper.
`
`Regarding Claim 10, modified Waatti teaches all of the limitations of the article of footwear of
`
`Claim 9, as discussed in the rejections above. Waatti further teaches wherein the bonded segment(230)
`
`comprises twoportions {see annotated Fig.} and the non-bonded segment (220) is disposed between
`
`the two portions of the bonded segment (annotatedfig. 1 shows the non-bonded segment (220) being
`
`disposed between the two portion of the bonded segment).
`
`Regarding Claim 11, modified Waatti teachesall of the limitations of the article of footwear of
`
`Claim 9, as discussed in the rejections above. Waatti further teaches wherein the upper (102) comprises
`
`one of a knit, woven, or non-woven material (paragraph [0034], “Some embodiments of upper 102
`
`include a textile material made of leather, synthetic material (such as plastic or synthetic leather), mesh,
`
`or a combination thereon,” wherein the upper of Waattican clearly be formed of a knit (referring toa
`
`mesh) or a non-woven material (referring to the natural and synthetic material).
`
`Regarding Claim 12, modified Waatti teaches all of the limitations of the article of footwear of
`
`Claim 9, as discussed in the rejections above.
`
`Waatti does not teach wherein the non-stick material comprises a coating.
`
`Attention is drawn to Morlacchi, which teaches an analogousarticle of footwear. Morlacchi
`
`teachesanarticle of footwear comprising: asole (paragraph [0008], “anarticle of footwear comprises a
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 10
`
`sole (1)”; see fig. 1); an upper (4, 6) coupled to the sole (fig. 1 shows the upper (4, 6) coupled to the sole
`
`(1)), wherein a portion of the upper comprises a non-stick material (paragraph [0019], “the inner surface
`
`of upper 4 is lined by a waterproof or semi-permeable membrane 6... Membrane 6 preferably comprises
`
`a sheet of polyurethane, polytetrafluoroethylene, polyester or other polymeric material which is non-
`
`porous,” wherein polytetrafluoroethylene is a non-stick material, as disclosed by the instant
`
`specification). Morlacchi further teaches wherein the non-stick material comprises a coating (paragraph
`
`[0019], “the inner surface of upper 4 is lined by a waterproof or semi-permeable membrane 6, whose
`
`surface turned toward upper 4 is preferably provided witha pattern of glue, in particular thermo-active
`
`glue. It may thus be hot-laminated... Membrane 6 preferably comprises a sheet,” wherein a sheet
`
`laminated to the upper is considered equivalent to a coating).
`
`Therefore, it would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to modify Waattito include the teachings of Morlacchi such that the
`
`non-stick material comprises a coating so as to ensure that the non-stick material remainsin its desired
`
`position on the upper and so as to minimize and or eliminate movement of the non-stick material
`
`relative to the rest of the upper.
`
`Regarding Claim 13, modified Waatti teaches all of the limitations of the article of footwear of
`
`Claim 9, as discussed in the rejections above.
`
`Waatti does not explicitly wherein the portion of the upper comprising the non-stick material is
`
`configured to move independently of the non-bonded segment. However, Waatti as modified in Claim1
`
`has an upper with a coating of non-stick material on theinner layer. Waatti also teaches wherein the
`
`non-bonded segment can move independently of the upper and the bonded componerts, as it is
`
`completely free from attachment tothe upper (paragraph [0048], “fastener receiving portions 230 may
`
`be capable of flexing relative to extended portions 220,” wherein extended portion 220 is considered as
`
`equivalent to the bonded segment). Further, the non-bonded segmentof Waattiis adjacent to the outer
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 11
`
`surface of the upper. Given this, it is clear that the portion of the upper comprising the non-stick
`
`material of modified Waattiis configured to move independently of the non-bonded segment.
`
`<
`
`fret
`bonded
`portion — !
`Sy
`Ne
`
`3 & ~~
`
`ag
`
`sel,
` 39
`
`ot
`Waatti'982
`annotated fig. 1
`for reference with Claims 9-13
`
`a
`<4
`
`iE
`OS second
`Yea eee
`“Ss bonded"
`PA
`Toeoh
`BEN
`sam
`
`.
`
`283
`
`6.
`
`Claim(s) 14, 15, and 20 is/are rejected under 35 U.S.C. 103 are unpatentable over Waatti (US
`
`2016/0219982) in view of Dojan et al. (US 2012/0055044).
`
`Regarding Claim 14, Waattiteaches 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
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`footwear (fig. 5 shows the non-bonded segment provided in the midfoot region (12) and paragraph
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`[0041] discloses “fastener receiving portions 230, including apertures 240, may function as eyelets for
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`receiving a lace or other similar fastener,” wherein as the non-bonded segmentreceives laces it would
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`necessarily form an upper support element to provide support to the wearer of the article of footwear).
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`

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`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 12
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`Waatti does not teach wherein the bonded segmentis directly bonded to a portion of the sole
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`due to hardening of the extruded component.
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`Attention is drawn to Dojan et al., which teaches an analogousarticle of footwear. Meschter et
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`al. teaches an article of footwear (10) comprising: a sole (20); an upper (30) coupled to the sole (fig. 1
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`showsthe upper (30) coupled to the sole (20)); and an extruded component (44) having a bonded
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`segment(paragraph [0037] discloses “Deposition layer 44 may be formed from any material that is
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`deposited upon base layer 43 and strands 41 and 42. As utilized herein, the term "deposit" or variants
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`thereof(e.g., deposited, depositing) is intended to encompass the formation of a layer through spraying,
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`printing, electroplating, filament accumulation, or similar processes ,” wherein depositing is considered
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`as equivalent to extruding, and therein the entire extruded component (44) forms the bonded segment),
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`and wherein the bonded segmentis directly bonded to a portion of the sole due to hardening of the
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`extruded component(fig. 3 shows the bonded segment being directly bonded toaportion of the sole
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`(20); paragraph [0038] teaches “When deposited through printing, ink, toner, paint, or an at least
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`partially liquid material may be printed upon base layer 43 and strands 41 and 42. Uponsetting, curing,
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`or drying, the material is joined, bonded, or otherwise secured to base layer 43 and strands 41 and 42”
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`and paragraph [0039] teaches “spraying, printing, electroplating, filament accumulation, or similar
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`processes have the potential toimpart strong bonding between deposition layer 44 and each of base
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`layer 43 and strands 41 and 42.” Given this, it is due to the hardening of the extruded component that a
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`strong bond is formed between the extruded component and the rest of the upper, and due to this
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`strong bond, the extruded componentcan be attached to the sole without fear of detaching).
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`Therefore, it would have been obvious to one of ordinary skill in the art before the effective
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`filing date of the claimed invention to modify Waattito include the teachings of Dojan et al. such that
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`the bonded segmentis directly bonded to a portion of the sole due to hardening of the extruded
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`component soas to allow a strong bond betweenthe upper and the sole structure via the bonded
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`

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`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 13
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`component (paragraph [0039] teaches “spraying, printing, electroplating, filament accumulation, or
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`similar processes have the potential to impart strong bonding between deposition layer 44 and each of
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`base layer 43 and strands 41 and 42.”), especially as Waatti appears to show the bonded segmentbeing
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`directly bonded toa portion of the sole, however does not clearly show this in a cross-sectional view,for
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`example.
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`Regarding Claim 15, Waatti teachesall of the limitations of the article of footwear of Claim 14,
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`as discussed in the rejections above. Waatti further teaches whereinthe bonded segment (220) of the
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`extruded component (200) is bonded to a portion of the upper (102) (fig. 2 shows the bonded segment
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`(220) bonded to a portion of the upper; paragraph [0055] discloses “The printable material forming
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`attached portion 270 may absorb into porous regions of upper 102 and bond with individual fibers in
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`upper 102,” wherein the attached portion (270) is part of the bonded segments (220)(see fig.2)).
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`Regarding Claim 20, Waatti teachesall of the limitations of the article of footwear of Claim 14,
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`as discussedin the rejections above. Waatti further teaches a second extruded component (202) having
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`a bonded segment anda non-bonded segment(paragraph [0040] discloses “second printed structure
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`202 could vary in any manner, and may include any of the features described in this embodiment for
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`first printed structure 201,” therefore the second printed structure (202) can have the bonded (220) and
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`non-bonded (230) segments as described forthe first extruded component (201)), the second extruded
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`component disposed on an opposite side of the article of footwear from the extruded component(fig. 4
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`showsthe second extruded component(202) on the opposite side of the article of footwear).
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`7.
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`Claim(s) 17-19 is/are rejected under 35 U.S.C. 103 are unpatentable over Waatti (US
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`2016/0219982) in view of Bohnsack et al. (US 2017/0231319).
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`Regarding Claim 17, Waatti teachesall of the limitations of the article of footwear of Claim 14,
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`as discussed in the rejections above.
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`

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`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 14
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`Waatti does not teach wherein the upper support element comprises a non-extruded
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`component.
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`Attention is drawn to Bohnsack et al. which teaches an analogous article of footwear. Bohnsack
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`et al. teaches anarticle of footwear (10) comprising: a sole (50): an upper (20) coupled to the sole (50)
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`(paragraph [0047], “the support cage 40 and its components can be minimally stitched to the upper in
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`preselected locations depending on the function,” wherein the support cage (40) includes the extruded
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`component (40L) and as the extruded componentis bonded to the upper via mechanical interlocking via
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`sewing, wherein the preselected location including stitching is considered the bonded segment and
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`remaining portion of the extruded component is considered the non-bonded segment), the non-bonded
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`segment forming an upper support element configured to provide support to a wearer of the article of
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`footwear in a midfoot region of the article of footwear (fig. 1 shows the entire extruded component
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`(40L) including the non-bonded segment disposed in the midfoot region and paragraph [0029] discloses
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`“the support cage 40 can be constructed as a semi-rigid and flexible unit,” therein the non-bonded
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`segmentof the extruded component(part of the support cage (40)) is alsosemi-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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`alsoannotated fig.). Bohnsack et al. further teaches wherein the upper suppor