Reply to Office Action of May 22, 2024
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`Remarks
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`ReebokInternational Limited
`Application No. 16/778,741
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`Reconsideration of this Application is respectfully requested.
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`Upon entry of the foregoing amendment, claims 1—15 and 17-20 are pending in the
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`application, claims 1, 9, and 14 are independent claims. Claims 1, 9, and 14 are amended. These
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`changes introduce no new matter, and their entry 1s respectfully requested.
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`Based on the above amendmentand the following remarks, Applicant respectfully requests
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`that the Office reconsiderall outstanding rejections and that they be withdrawn.
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`Statementof the Substance of the Interview
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`Applicant thanks Examiner Smith for taking the time to speak with Applicant’s
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`representative Yangbeini Wang (#800,005) during a telephonic interview on August 15, 2024. The
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`parties discussed the § 103 rejections of claims 1, 9, and 14 and potential amendments to overcome
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`the rejections. The amendments and arguments submitted herewith are consistent with what was
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`discussed during the interview, and Examiner Smith agreed the submitted amendments would
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`overcomecurrent rejections.
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`Rejections under 35 U.S.C. § 103
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`Claims 1-8 are rejected under 35 U.S.C. § 103 as unpatentable over U.S. Patent Application
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`Publication No. 2016/0219982 to Waatti in view of U.S. Patent Application Publication No.
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`2013/0025157 to Wanetal.
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`Independent claim 1
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`Without agreeing to the propriety of the rejection, and solely to expedite prosecution,
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`independent claim 1 is amended and nowrecites, in part, “a non-extruded component comprising a
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`fabricforming loops to receive laces and having a portion embedded within the extruded
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`component.” The applied references do not discloses this feature of claim 1.
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`The Office acknowledged that Waatti does not disclose the recited a non-extruded
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`component comprising a fabric and instead relies on Wanfor this feature. Office Action, 3-4. Wan
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`discloses a mesh outer panel 19 that wraps around the sides and front of a foot of a shoe 10, which
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`allegedly can be combined with Waatti’s 3D printed structure 200. /d.; Wan, § [0016]. However,
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`Wan’s outer panel 19 does not form loops to receive laces, and Wan hasa separate eyelet
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`Atty. Dkt. No. 2073.3760003
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`Reply to Office Action of May 22, 2024
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`-6-
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`Reebok International Limited
`Application No. 16/778,741
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`reinforcing strip 21 for receiving laces. Wan, { [0017], FIG. 1B. Also Waatti’s printed structure 200
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`already includes fastener receiving portions 230 for receiving laces, and they are not fabric.
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`Accordingly, neither Waatti nor Wan discloses “a non-extruded component comprising a
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`fabric forming loops to receive laces and having a portion embedded within the extruded
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`component.” Therefore, independent claim 1 and its dependent claims would not have been obvious
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`over the applied references. Applicant respectfully requests reconsideration and withdrawn of the §
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`103 rejections of claims 1-8.
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`Claims 9-13 are rejected under 35 U.S.C. § 103 as unpatentable over Waatti in view of U.S.
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`Patent Application Publication No. 2005/0055843 to Morlacchi.
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`Independent claim 9
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`Without agreeing to the propriety of the rejection, and solely to expedite prosecution,
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`independent claim 9 is amended and nowrecites, in part, “wherein a portion of an outer surface of
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`the upper comprises a non-stick material.” The applied references do not discloses this feature of
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`claim 9.
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`The Office acknowledged that Waatti does not disclose the recited a non-stick material and
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`instead relies on Morlacchi’s membrane 6 for this feature. Office Action, 8-9. However,
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`Morlacchi’s membrane6 is a lining on the inner surface of upper4, and it is not on an outer surface
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`ofthe upper. Morlacchi, §] [0014]. Neither Waatti nor Morlacchi discloses “a portion of an outer
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`surface of the upper comprises a non-stick material.”
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`Therefore, independent claim 9 and its dependent claims would not have been obvious over
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`the applied references. Applicant respectfully requests reconsideration and withdrawn of the § 103
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`rejections of claims 9-13.
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`Claims 14, 15, and 20 are rejected under 35 U.S.C. § 103 as unpatentable over Waatti in
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`view of U.S. Patent Application Publication No. 2012/0055044 to Dojanetal.
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`Independent claim 14
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`Without agreeing to the propriety of the rejection, and solely to expedite prosecution,
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`independent claim 14 is amendedand nowrecites, in part, “wherein the bonded segmentis directly
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`Atty. Dkt. No. 2073.3760003
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`Reply to Office Action of May 22, 2024
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`-7-
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`Reebok International Limited
`Application No. 16/778,741
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`bonded to and embedded within a portion of the sole due to hardening of the extruded component.”
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`The applied references do not discloses this feature of claim 14.
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`The Office acknowledged that Waatti does not disclose a bonded segmentdirectly bonded a
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`portion of the sole and instead relies on Dojan for this feature. Office Action, 12-13. Waatti
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`discloses 3D printing structures 200 directly on an upper 102 while upperis laid flat and sole is not
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`attached. See Waatti, FIG. 7. That is, a sole is only assembled to upper 102 after structures 200 are
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`printed and hardened on upper 102, such that structures 200 cannot be embedded within the sole
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`due to hardening of the extruded component.
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`Therefore, independent claim 14 andits dependent claims would not have been obvious over
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`the applied references. Applicant respectfully requests reconsideration and withdrawn of the § 103
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`rejections of claims 14, 15, and 20.
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`Claims 17-19 are rejected under 35 U.S.C. § 103 as unpatentable over Waatti in view of
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`Dojan and further in view of U.S. Patent Application Publication No. 2017/0231319 to Bohnsacket
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`al.
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`Claims 17—19 depend from independent claim 14. As discussed above, Waatti and Dojan
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`fail to disclose “wherein the bonded segmentis directly bonded to and embedded within a randing
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`portion of the sole due to hardening of the extruded component.” Bohnsack does not cure the
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`deficiencies of Waatti and Dojan. Accordingly, claims 17-19 would not have been obvious overthe
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`applied references. Applicant respectfully requests reconsideration and withdrawn ofthe § 103
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`rejections of claims 17-19.
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`New Claims
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`Newclaim 21 is added and depends from independentclaim 14. In additionto its
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`dependency, claim 21 recites the bonded segment bondedto “a randing portion of the sole,” which
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`is not disclosed in any of the applied references. Accordingly, claim 21 is in condition for
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`allowance.
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`Atty. Dkt. No. 2073.3760003
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`Reply to Office Action of May 22, 2024
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`Conclusion
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`ReebokInternational Limited
`Application No. 16/778,741
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`All of the stated groundsof rejection have been properly traversed, accommodated, or
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`rendered moot. Applicant therefore respectfully requests that the Office reconsiderall presently
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`outstanding rejections and that they be withdrawn. Applicant believes that a full and complete reply
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`has been madeto the outstanding Office Action and, as such, the present application is in condition
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`for allowance. If the Office believes, for any reason, that personal communication will expedite
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`prosecution of this application, the Office is invited to telephone the undersigned at the number
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`provided.
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`Promptand favorable consideration of this Amendment and Reply is respectfully requested.
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Yangbeini Wang #800,005/
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`Yangbeini Wang
`Agent for Applicant
`Registration No. 800,005
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`Date: August 20, 2024
`1101 K Street, NW, 10" Floor
`Washington, D.C. 20005
`Main: 202-371-2600
`Direct: 202-772-8833
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`23002448.1
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`Atty. Dkt. No. 2073.3760003
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