DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-2, 4-5, and 8-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 is rejected because the limitations “the preferred flexing zone extends obliquely across the sole such that a longitudinal midpoint of the preferred flexing zone
increase from a lateral edge of the sole to a medial edge of the sole” lacks support in the original specification which filed 07-20-2021; therefore such lack of detailed support in the original disclosure constitutes new matter.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-2, 4-5, and 8-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is rejected because the limitations “the preferred flexing zone extends obliquely across the sole such that a longitudinal midpoint of the preferred flexing zone increase from a lateral edge of the sole to a medial edge of the sole”. It is not clear how the longitudinal midpoint increases (i.e. increase on what).
Any remaining claims are rejected as depending from a rejected base claim.
In the art rejections below the claims have been treated as best understood by the examiner.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 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.
Claim(s) 1-2, 8, 10, and 12-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bunnell et al. (2017/0079376).
Regarding claim 1, Bunnell teaches a sole of a shoe, extending in a longitudinal direction representative of a main axis of the foot, and having an anterior part that is adapted to receive the forefoot, a central part that is adapted to receive the midfoot and a posterior part that is adapted to receive the heel, said sole having in the anterior part a preferred flexing zone that is oriented according to a flexing fold axis, said sole comprising an outsole with a ground facing surface configure to be in contact with a ground (para 0028), wherein said sole has, in the preferred flexing zone, at least one groove (member 30) oriented according to the flexing fold axis, wherein the preferred flexing zone extends obliquely across the sole such that a longitudinal midpoint of the preferred flexing zone increases from a lateral edge of the sole to a medial edge of the sole, and the medial edge of the flexing zone is located further forward than the lateral edge with respect to the main axis of the foot, said at least one groove being formed on the ground facing surface of the outsole and following an orientation of the flexing zone and wherein and said preferred flexing zone being is located in the anterior part and being adapted to position as a projection of the metatarsal phalangeal heads of the foot (figs 1 and 9, para 0025).
Bunnell does not clearly teach the preferred flexing zone adapted to be oriented at an angle between 105° and 120° with respect to the main axis of the foot and the at least one groove is oriented at said angle between 105° and 120° with respect to the main axis of the foot.
However, as seen in figures 1 and 9, the preferred flexing zone has an angle about 105° and 120° with respect to the main axis of the foot. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to understand that the angle could be between 105° and 120° with respect to the main axis of the foot in order to align along the metatarsal phalanges zone, joints, or heads of a user feet and therefore increase flexibility of the forefoot portion.
Regarding claim 2, Bunnell discloses said sole has in the anterior part a plurality of preferred flexing zones extending in an oblique direction with respect to the main axis of the foot (figs 1 and 9, para 0025).
Regarding claim 8, Bunnell discloses said sole is made of a first material and has, in the preferred flexing zone, an inclusion of a second material of a same nature (i.e. both make of thermoplastic polyurethane material) and having a density less than a density of the first material used for the rest of the sole (para 0058 and 0063).
Regarding claim 10, Bunnell discloses said sole is made of a first material and has, in the preferred flexing zone, an inclusion of a second material of a different nature (i.e. one makes of ethylene vinyl acetate and the other makes of nylon) and having a hardness less than a hardness of the first material used for the rest of the sole (para 0058 and 0063).
Regarding claim 12, Bunnell does not clearly teach said preferred flexing zone is located at a distance comprised between 60 and 75% of the total length of the sole from its rear end. However, as seen in figures 1 and 9, the preferred flexing zone is located about 60 and 75% of the total length of the sole from its rear end. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to understand that the preferred flexing zone is located about 60 and 75% of the total length of the sole from its rear end in order to align along the metatarsal phalanges zone, joints, or heads of a user feet and therefore increase flexibility of the forefoot portion.
Regarding claim 13, Bunnell discloses said preferred flexing zone extends over a portion or over the entire width of the sole (figs 1 and 9).
Regarding claim 14, Bunnell discloses said sole has a strip with extra thickness located at an edge of said preferred flexing zone or at two edges of said preferred flexing zone (fig 5, member 60).
Regarding claim 15, Bunnell discloses said strip with extra thickness is oriented according to the flexing fold axis (fig 5, member 60).
Regarding claim 16, Bunnell discloses said strip with extra thickness forms a means of gripping of the anterior part of the outsole (figs 7-8).
Regarding claim 17, Bunnell discloses said sole is a flexible sole with an elastomer base or a rigid sole with a thermoplastic material base (para 0058 and 0063).
Regarding claim 18, Bunnell discloses said sole comprises an outsole intended to come into contact with the ground and a midsole, said preferred flexing zone extending in an oblique direction with respect to the main axis of the foot being arranged in said outsole (para 0040).
Regarding claim 19, Bunnell discloses a shoe comprising a sole according to claim 1 (para 0036).
Regarding claim 20, Bunnell discloses said shoe is a sports shoe, or a running shoe, or a football shoe (para 0036) or a rugby shoe.
Regarding claim 21, Bunnell discloses said sole has, in the preferred flexing zone, a plurality of grooves (members 30) oriented according to the flexing fold axis.
Claim(s) 4, 9 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bunnell et al. (2017/0079376) as applied to claims 1, 8, and 10 above, and further in view of Bacon et al. (2015/0096195).
Regarding claims 4, Bunnell teaches all limitations of the claim and Bacon teaches said sole has, in the preferred flexing zone, a hardness at least 10% lower with respect to the rest of said sole (para 0047 and 0034). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to modify the sole of Bunnell by using the different percentage hardness of Bacon in order to provide a flexible bending which correspond to the natural bending of the foot (Bacon, para 0047).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bunnell et al. (2017/0079376) as applied to claim 1 above, and further in view of Bacon et al. (2018/0000191).
Regarding claim 5, Bunnell teaches all limitations of the claim and Bacon teaches said preferred flexing zone has a height, extending in a longitudinal direction, comprised between 3 and 40 mm (para 0010). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to modify the sole of Bunnell by using Bacon thickness in order to allow the outsole to bend when a golfer walks or swings (Bacon, para 0011).
Response to Arguments
Applicant’s arguments, dated 11-14-2025, with respect to the rejection of claims under 35 U.S.C §112(a) and §112(b) have been fully considered, but not persuasive. The rejection to the claims is maintain.
Applicant's arguments, date 11-14-2025, with respect to the rejections of claims under 35 U.S.C §103 have been fully considered, but they are not persuasive because applicant argues that the prior art does not teach the groove having an angle about 105° and 120° with respect to the main axis of the foot. However, the examiner respectfully disagrees since the prior art does suggest the limitations as analyzed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BAO-THIEU L NGUYEN whose telephone number is (571)270-0476. The examiner can normally be reached M-F 7am-4pm.
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BAO-THIEU L. NGUYEN
Primary Examiner
Art Unit 3732
/BAO-THIEU L NGUYEN/Primary Examiner, Art Unit 3732