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
`
`11/27/2024
`
`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 08/22/2024.
`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) 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*
`1-21 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) 1-21 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 01/31/2023 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 20241114
`
`

`

`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 08/22/2024 have been entered. Claims 1-15 and 17-21 remain
`
`pendingin the application, with Claims 1, 9, and 14 being newly amended and Claim 21 being newly
`
`added.
`
`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 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 ordinaryskill 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 Sterman etal. (US
`
`2017/0202309) in view of Waatti (US 2016/0219982).
`
`Regarding Claim 1, Sterman et al. teaches an upper (1502); and an extruded component (1520)
`
`having a first segment, a second segment, an inner surface {see annotated Fig.) facing the upper, and an
`
`outer surface {see annotated Fig.}, wherein the inner surface is bonded to the upper at thefirst segment
`
`and is not bonded to the upper at the second segment(paragraph [0113] teaches “only some portions
`
`of a traced element may bejoined to a base layer,” wherein the first segment is considered to beafirst
`
`joined portion of the traced element and the second segmentis the unjoined portion of the traced
`
`element); and a non-extruded component (1524) comprising a fabric forming loops to receive laces and
`
`having a portion embedded within the extruded component(fig. 15 shows the non-extruded component
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 3
`
`(1524) comprising a fabric (wherein a strand is considered to be a fabric) and forming loops to receive
`
`laces and being embeddedin the extruded component(as shownin fig. 9)).
`
`Sterman et al. does not teach the upper being a part of an article of footwear.
`
`Attention is drawn to Waatti, which teaches an analogous article of footwear. 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 bondedto
`
`upper 102, free portion 280 may generally be free of any bonding with individual fibers of upper 102,”
`
`wherein fig. 2 showsthe attached portion (270) being a part of the first segment (220) and the free
`
`portion (280) being a part of the second segment (230)).
`
`Therefore, it would have been obvious to one ofordinaryskill in the art before the effective
`
`filing date of the claimed invention to modify Sterman etal. to include the teachings of Waatti et al.
`
`such that the upper is a part of an article of footwear as it would have been obvious that a person of
`
`ordinary skill has good reason to pursue the knownoptions within his or her technical grasp. If this leads
`
`to the anticipated success,it is likely that the product was not of innovation but of ordinaryskill in and
`
`common sense.In this instance, the fact that a combination was obvious to try might show that it was
`
`obvious under 35 USC § 103. In the instant case, one has good reason to pursue the option of using an
`
`upper in an article of footwear with a reasonable expectation of success as Sterman teaches “the traced
`
`element maybe incorporated into an upper for an article of footwear,” (Abstract) wherein the traced
`
`element includes the extruded and non-extruded elements.
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 4
`
`Regarding Claim 2, Sterman et al. teachesall of the limitations of the article of footwear of
`
`Claim 1, as discussed in the rejections above. Sterman etal. further teaches a third segmentof the
`
`extruded componentthat is bonded to the upper (1502) (paragraph [0113] teaches “only some portions
`
`of a traced element maybe joined to a base layer,” wherein the third segment is considered to be a
`
`second joined portion of the traced element).
`
`Sterman does not teach wherein the second segmentis between the first and third segments.
`
`Attention is drawn to Waatti, which teaches an analogous article of footwear. 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 outersurface (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 showsthe 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 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 any of the features described in this embodiment for
`
`first printed structure 201” therein as the third segment includes 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
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 5
`
`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).
`
`Therefore, it would have been obvious to one of ordinaryskill in the art before the effective
`
`filing date of the claimed invention to modify Sterman to include the teachings of Waatti such that the
`
`second segmentis betweenthe first and third segments so as to allow the non-bonded second segment
`
`to be flexed while anchored bythe first and third segments on either side (paragraph [0048], “fastener
`
`receiving portions 230 may be capable of flexing relative to extended portions 220”), especially as
`
`Sterman doesnot explicitly disclose where the bonded and non-bonded segments of the extruded
`
`componentare disposed.
`
`Regarding Claim 3, Sterman et al. teachesall of the limitations of the article of footwear of
`
`Claim 2, as discussed in the rejections above.
`
`Sterman et al. does not teach wherein the second segmentis disposed over a void in the upper.
`
`Attention is drawn to Waatti, which teaches an analogous article of footwear. 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 showsthe attached portion (270) being a part of the first segment (220) and the free
`
`portion (280) being a part of the second segment (230)), and 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
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 6
`
`extruded component(200), wherein paragraph [0040] discloses “second printed structure 202 could
`
`vary in any manner, and mayinclude anyof the features described in this embodimentfor first printed
`
`structure 201” therein as the third segment includes a mirror image of the first segment, it is also
`
`bondedto the upper as cited above), wherein the second segmentis between the first and third
`
`segments(figs. 1 and 4 show opposite sides of the article of footwear, the first segment being disposed
`
`on the first side below the second segment and the third segment being disposed on the opposite side,
`
`therein positioning the second segment between the first and third segments). 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)).
`
`Therefore, it would have been obvious to one of ordinaryskill in the art before the effective
`
`filing date of the claimed invention to modify Sterman to include the teachings of Waatti such that
`
`wherein the second segmentis disposed over a void in the upper so as to allow the non-bonded second
`
`segmentto be flexed in response to movementfrom the wearer’s foot during the gait cycle (paragraph
`
`[0048], “fastener receiving portions 230 may be capable of flexing relative to extended portions 220”),
`
`especially as Sterman doesnotexplicitly disclose where the bonded and non-bonded segmentsof the
`
`extruded componentare disposed.
`
`Regarding Claim 4, Sterman et al. teachesall of the limitations of the article of footwear of
`
`Claim 2, as discussed in the rejections above. Sterman etal. further teaches a tongue region {see
`
`annctated Fig}.
`
`Sterman does not teach wherein the second segmentis disposed over the tongue region.
`
`Attention is drawn to Waatti, which teaches an analogous article of footwear. 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
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 7
`
`(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 showsthe attached portion (270) being a part of the first segment (220) and the free
`
`portion (280) being a part of the second segment(230)) and 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
`
`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). 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).
`
`Therefore, it would have been obvious to one of ordinaryskill in the art before the effective
`
`filing date of the claimed invention to modify Sterman to include the teachings of Waatti such that
`
`wherein the second segmentis disposed over the tongue region so as to allow the non-bonded second
`
`segmentto be flexed in response to movementfrom the wearer’s foot during the gait cycle (paragraph
`
`[0048], “fastener receiving portions 230 may be capable of flexing relative to extended portions 220”),
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 8
`
`especially as Sterman doesnotexplicitly disclose where the non-bonded segments of the extruded
`
`componentare disposed.
`
`Regarding Claim 5, Sterman etal. teachesall of the limitations of the article of footwear of
`
`Claim 2, as discussed in the rejections above.
`
`Sterman et al. does not teach wherein the first segment is disposed on a medial side of the
`
`upper and the third segmentis disposed on a lateral side of the upper.
`
`Attention is drawn to Waatti, which teaches an analogous article of footwear. 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 bondedto
`
`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)) and 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
`
`on the first side below the second segment and the third segment being disposed on the opposite side,
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 9
`
`therein positioning the second segment between the first and third segments). Waatti further teaches
`
`wherein the first segment is disposed on a medial side of the upper and the third segmentis disposed
`
`ona lateral side of the upper (paragraph [0040] discloses that the first and third segments (201, 202,
`
`wherein the first and second segmentare collectively referred to as component 200) can have the same
`
`features as one another, and figs. 1 and 4 show thefirst 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 Sterman to include the teachings of Waatti such that the
`
`first segment is disposed on a medial side of the upper and the third segmentis disposed onalateral
`
`side of the upper so as to allow the first and third segments on either side to anchor the second
`
`segment and provide midfoot support for the wearer (paragraph [0058] “This configuration may allow
`
`the attached portions of a printed structure (e.g., attached portion 270) to anchor the printed structure
`
`to an upper while allowing the free portions of the printed structure (e.g., free portion 280) to be
`
`unattached or bonded to the upper.”), especially as Sterman doesnot explicitly disclose where the
`
`bonded segmentsof the extruded componentare disposed.
`
`Regarding Claim 6, Sterman et al. teachesall of the limitations of the article of footwear of
`
`Claim 2, as discussed in the rejections above. Sterman etal. further teaches wherein a portion of the
`
`upper (1502) disposed underneath the second segmentis configured to move independently of the
`
`second segment(paragraph [0113] teaches “only some portions of a traced element may be joined to a
`
`base layer,” wherein the second segmentis the unjoined portion of the traced element as noted above
`
`and as the second segmentis unjoined from the upper the portion of the upper disposed underneath
`
`the second segment is clearly configured to move independently of the second segment).
`
`Regarding Claim 7, Sterman et al. teachesall of the limitations of the article of footwear of
`
`Claim 1, as discussed in the rejections above. Sterman etal. further teaches wherein the upper
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 10
`
`comprises a textile fabric (upper (1502) is disclosed to be a “base layer” (paragraph [0113]) and
`
`paragraph [0055] teaches “base layer materials such as textile, natural fabric, synthetic fabric, knit,
`
`woven material, nonwoven material, mesh, leather, synthetic leather, polymer, rubber, and foam, or
`
`any combination of them,” therein the upper clearly comprises a textile fabric).
`
`RegardingClaim 8, Sterman et al. teachesall of the limitations of the article of footwear of
`
`Claim 1, as discussed in the rejections above. Sterman etal. further teaches wherein the upper
`
`comprises a knitted fabric (upper (1502) is disclosed to be a “base layer” (paragraph [0113]) and
`
`paragraph [0055] teaches “base layer materials such as textile, natural fabric, synthetic fabric, knit,
`
`woven material, nonwoven material, mesh, leather, synthetic leather, polymer, rubber, and foam, or
`
`any combination of them,” therein the upper clearly comprises a knitted fabric).
`
`outer
`surface
`&
`
`389
`fo
`re
`
`TS ae
`
`.
`tongue
`feg iOfr
`
`
`
`meEee
`Sterman‘309
`
`
`surface:
`annotated fig. 15
`
`5.
`
`Claim(s) 9-13 is/are rejected under 35 U.S.C. 103 as being obvious over Waatti (US
`
`2016/0219982) in view of a second embodiment of Waatti, hereinafter referred to as Waatti2.
`
`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
`
`

`

`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 11
`
`[0038] discloses “printed structures 200 are printed at least partially onto upper 102 by a printer,”
`
`wherein printing is considered equivalent to extrusion; fig. 2 shows the bonded (220) and non-bonded
`
`(230) segments), wherein the bonded segment is directly bonded to a portion of the upper 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 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 (Waatti teaches the upper being made of
`
`“leather, synthetic material (such as plastic or synthetic leather), mesh, or a combination 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 an outer surface of the upper comprises a non-stick
`
`material and wherein the non-bonded segmentis disposed over the non-stick material.
`
`Attention is drawn to Waatii2, which teaches an analogous article of footwear. Waatti2 teaches
`
`an article of footwear (500) comprising: a sole {see annotated Fig.}; an upper (502) coupled to the sole
`
`(annotated fig. 18 shows the upper (502) coupled to the sole), wherein a portion of an outer surface of
`
`the upper comprises a non-stick material (900) (fig. 18 shows the upper (502) having an outer portion
`
`with a non-stick material (900); paragraph [0071] teaches “both surfaces of release layer 900 are
`
`generally “non-destructively removable” meaning release layer 900 can be removed from upper 502 and
`
`one or morefastener receiving portions without destroying, tearing, and/or breaking either upper 502
`
`and/or fastener receiving portions,” therein the portion (900) is clearly non-stick); and an extruded
`
`component(620, 630) having a bonded segment (620) and a non-bonded segment (630), wherein the
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`bonded segmentis directly bonded to a portion of the upper due to hardening of the extruded
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`

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`Application/Control Number: 16/778, 741
`Art Unit: 3732
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`Page 12
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`component(paragraph [0076] discloses “fastener receiving portions 630 do not bond directly to a
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`surface of upper 502. In contrast, extended portions 620 may remain at least partially embeddedin
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`upper 502”: paragraph [0077] teaches “first extended portions 620 and fastener receiving portions 630
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`are printed,” wherein printing is considered as equivalent to extruding), wherein the portion of the
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`upper to which the bonded segmentis directly bonded does not comprise the non-stick material (fig. 18
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`showsthe bonded segment(620) being positioned off of the non-stick material (900)), and wherein the
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`non-bonded segmentis disposed over the non-stick material (fig. 18 shows the non-bonded segment
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`)630) being disposed over the non-stick material (900)).
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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 with the teachings of Waatti2 such that a portion
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`of an outer surface of the upper comprises a non-stick material and wherein the non-bonded segmentis
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`disposed over the non-stick material so as to allow the non-bonded segmentsto be printed directly on
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`the upper without any worry of damaging the non-bonded segmentsor the upper (paragraph [0071],
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`“both surfacesof release layer 900 are generally “non-destructively removable” meaning release layer
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`900 can be removed from upper 502 and one or morefastener receiving portions without destroying,
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`tearing, and/or breaking either upper 502 and/or fastener receiving portions.”).
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`Regarding Claim 10, modified Waatti teachesall of the limitations of the article of footwear of
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`Claim 9, as discussedin the rejections above. Waatti further teaches wherein the bonded segment(230)
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`comprises twoportions (see anriitated Fig.) and the non-bonded segment(220) is disposed between
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`the two portions of the bonded segment(annotated fig. 1 shows the non-bonded segment(220) being
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`disposed between the two portion of the bonded segment).
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`Regarding Claim 11, modified Waatti teachesall of the limitations of the article of footwear of
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`Claim 9, as discussed in the rejections above. Waatti further teaches wherein the upper (102) comprises
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`one of a knit, woven, or non-woven material (paragraph [0034], “Some embodiments of upper 102
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`Application/Control Number: 16/778, 741
`Art Unit: 3732
`
`Page 13
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`include a textile material made of leather, synthetic material (such as plastic or synthetic leather), mesh,
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`or a combination thereon,” wherein the upper of Waatti can clearly be formed of a knit (referring to a
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`mesh) or a non-woven material (referring to the natural and synthetic material).
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`Regarding Claim 12, modified Waatti teachesall of the limitations of the article of footwear of
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`Claim 9, as discussed in the rejections above.
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`Waatti does not teach wherein the non-stick material comprises a coating.
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`Attention is drawn to Waatii2, which teaches an analogous article of footwear. Waatti2 teaches
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`an article of footwear (500) comprising: a sole {se¢ annotated Fig.}; an upper (502) coupled to the sole
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`(annotatedfig. 18 shows the upper (502) coupled to the sole), wherein a portion of an outer surface of
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`the upper comprises a non-stick material (900) (fig. 18 shows the upper (502) having an outer portion
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`with a non-stick material (900); paragraph [0071] teaches “both surfaces of release layer 900 are
`
`generally “non-destructively removable” meaning release layer 900 can be removed from upper 502 and
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`one or morefastener receiving portions without destroying, tearing, and/or breaking either upper 502
`
`and/or fastener receiving portions,” therein the portion (900) is clearly non-stick); and an extruded
`
`component(620, 630) having a bonded segment (620) and a non-bonded segment (630), wherein the
`
`bonded segmentis directly bonded to a portion of the upper due to hardening of the extruded
`
`component(paragraph [0076] discloses “fastener receiving portions 630 do not bond directly to a
`
`surface of upper 502. In contrast, extended portions 620 may remain at least partially embeddedin
`
`upper 502”: paragraph [0077] teaches “first extended portions 620 and fastener receiving portions 630
`
`are printed,” wherein printing is considered as equivalent to extruding), wherein the portion of the
`
`upper to which the bonded segmentis directly bonded does not comprise the non-stick material (fig. 18
`
`showsthe bonded segment(620) being positioned off of the non-stick material (900)), and wherein the
`
`non-bonded segmentis disposed over the non-stick material (fig. 18 shows the non-bonded segment
`
`)630) being disposed over the non-stick material (900)). Waatti2 further teaches wherein the non-stick
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`Application/Control Number: 16/778, 741
`Art Unit: 3732
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`Page 14
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`material comprises a coating (fig. 14 shows the non-stick material being a thin layer, and therein being
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`considered as a coating; paragraph [0071] further teaches “release layer has a height 805 approximately
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`in the range of 0.2 mm to 3 mm,”clarifying again that Waatti2 teaches the non-stick material being a
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`thin layer, or a coating)
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`Therefore, it would have been obvious to one ofordinaryskill in the art before the effective
`
`filing date of the claimed invention to modify Waatti with the teachings of Waatti2 such that the non-
`
`stick material comprises a coating so as to allow a minimal height different between the bonded and
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`non-bonded portions when printing (as shownin fig. 16 for example).
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`Regarding Claim 13, modified Waatti teachesall of the limitations of the article of footwear of
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`Claim 9, as discussed in the rejections above. Modified Waatti further teaches wherein the portion of
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`the upper comprising the non-stick material is configured to move independently of the non-bond