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 .
Response to Amendment
Applicant’s amendments of 3/17/2026 are acknowledged. Claim 1 is amended. Claims 10 and 20 remain canceled. Claims 16-19 and 21-23 remain withdrawn. Claims 1-9, 11-15, and 24 are presented for examination on the merits.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-9, 11-15, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Polegato Moretti (US 2013/0239444 A1), in view of Peikert (US 2011/0167678 A1), and in further view of Adams (US 2016/0157554 A1).
Regarding claim 1, Polegato Moretti discloses an outsole (12, 112, 212; Fig. 2) for a safety footwear (at least paras. 52 & 54 disclose footwear 10 includes a protective element 17, and therefore, 10 is “a safety footwear” inasmuch as claimed) comprising:
a top surface (see annotated Fig. 2 below, see all gray highlighted surfaces of 112 as “a top surface” because they are surfaces that face upward, above, or on top of/in relation to the ground) designed to support the foot of the wearer (see annotated Fig. 2 below & para 50, as assembled, the top surface supports the foot of the wearer), a bottom surface (Fig. 2, the ground facing surface of 14 is “a bottom surface”; para. 57) designed to be in contact with the ground (Fig. 2; para. 57), and a side surface (Fig. 2, where the side surface is the side edge of 112 looking into Fig. 2, which is also from the heel perspective of the shoe; para. 58) designed to connect the top surface and the bottom surface (see annotated Fig. 2 below);
a heel portion (Fig. 2 shows a cross section of the shoe, and therefore, also shows the cross section at a heel portion, the heel portion being in the heel area of the wearer’s foot) with at least one ventilation passage (plurality of top 15a) designed to put into fluidic communication a lateral or medial portion of the side surface (see annotated Fig. 2 below, lateral portion; Examiner notes the term “portion” is very broad and merely means “a part of a whole; fraction”, see defn. no. 1 of Collins English Dictionary- Complete and Unabridged, 12th Edition, 2014, entry via thefreedictionary.com/portion, and therefore, the annotated lateral portion of Polegato Moretti meets the limitation inasmuch as claimed) with the top surface of the outsole (see annotated Fig. 2 below, where the annotated lateral portion of 112 is in fluidic communication with 15a, and plurality of top 15a exists above 16 and the top surface of the outsole);
a tread (14) and a midsole (22), the tread being positioned at the bottom surface of the outsole (Fig. 2) and the midsole occupying a volume delimited by the top surface (see annotated Fig. 2 below, where “a volume” is the volumetric space of 112) and the side surface of the outsole (Fig. 2);
and a vapor-permeable membrane layer (16, 17) arranged between the bottom surface of the outsole (Fig. 2) and the at least one ventilation passage at the heel portion of the outsole (Fig. 2) and is arranged close to the top surface at a forefoot portion of the outsole (Fig. 2, where the cross section shown runs the entire longitudinal length of the shoe, which includes the forefoot portion-the shoe includes a forefoot portion), and wherein the vapor-permeable membrane layer at the forefoot portion of the outsole is free of contact with the tread (Fig. 2, where 16 and 17 are free from contact with 14).
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Polegato Moretti does not directly disclose the vapor-permeable membrane layer is an anti-perforation layer, the anti-perforation layer at the forefoot portion of the outsole is free of contact with the tread.
However, Peikert teaches a shoe with an anti-perforation layer (39, 45; abstract, where 39 and 45 are a water-vapour-permeable barrier layer; claim 16 discloses the barrier layer is also puncture-proof for protection).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the vapor-permeable membrane of Polegato Moretti for an anti-perforation layer, as taught by Peikert, as a simple substitution of one well known footwear vapor-permeable membrane material for another vapor-permeable membrane material, in order to yield the predictable result of providing a pliable and durable fabric structure for an aesthetically pleasing design. Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07. Further, a change in aesthetic (ornamental) design generally will not support patentability. See MPEP 2144.04. Once Polegato Moretti’s vapor-permeable membrane layer is substituted by Peikert’s vapor-permeable membrane/fibrous layer, modified Polegato Moretti discloses the anti-perforation layer at the forefoot portion of the outsole is free of contact with the tread.
Modified Polegato Moretti discloses the claimed invention except for wherein the anti-perforation layer is positioned at a greater distance from the top surface at the heel portion than at the forefoot portion.
However, Adams teaches an anti-perforation layer (2), wherein the anti-perforation layer is positioned at a greater distance from the top surface at the heel portion than at the forefoot portion (Fig. 2).
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 the position of the anti-perforation layer of Polegato Moretti to be positioned at a greater distance from the top surface at the heel portion than at the forefoot portion, as taught by Adams, in order to provide more comfort to the wearer’s heel. Further, it has been held that rearranging parts of an invention involves only routine skill in the art. See MPEP 2144.04 VI.
Regarding claim 2, modified Polegato Moretti discloses the outsole according to claim 1, characterized in that the at least one ventilation passage is designed to put into fluidic communication, at the heel portion of the outsole, the side surface and the top surface (see annotated Fig. 2 above of claim 1 rejection; para. 58; Fig. 2, where the cross section shown runs the entire longitudinal length of the shoe, which includes the heel portion).
Regarding claim 3, when in combination, Polegato Moretti, Peikert, and Adams disclose the outsole according to claim 1, characterized in that a top portion of the anti-perforation layer (of Polegato Moretti: where the top portion of 16 is the top surface, and as evidenced by Peikert: where the top portion of 39 and 45 is a top surface of 39 and 45) coincides at least partially with the top surface of the outsole (of Peikert, as evidenced by Polegato Moretti: see annotated Fig. 2 above of claim 1 rejection, where 16 coincide at least partially with the annotated top surface of the outsole; Polegato Moretti: para. 73 discloses 18 is a mesh, and therefore, coincides at least partially with the top surface of the outsole because the apertures of the mesh allow for 16 to also coincide at least partially with the top surface of the outsole) at the forefoot portion of the outsole (Fig. 2, where the cross section shown runs the entire longitudinal length of the shoe, which includes the forefoot portion-the shoe includes a forefoot portion).
Regarding claim 4, Polegato Moretti, Peikert, and Adams disclose the outsole according to claim 1. Polegato Moretti discloses further comprising a separate heel insert (11; 11 is “a heel insert” inasmuch as claimed because a wearer’s heel is inserted into 11) which is positioned at the top surface of the outsole (see annotated Fig. 2 above of claim 1); said at the least one ventilation passage being provided into the heel insert (Fig. 2).
Regarding claim 5, when in combination, Polegato Moretti, Peikert, and Adams disclose the outsole according to claim 1, further comprising a heel insert (Polegato Moretti: 11; 11 is “a heel insert” inasmuch as claimed because a wearer’s heel is inserted into 11) which is integral with the anti-perforation layer (of Polegato Moretti and Peikert: once assembled and elements are attached, 11 of Polegato Moretti is integral with Peikert’s 39 & 45); said at the least one ventilation passage being provided into the heel insert (Fig. 2 shows at least one ventilation passage top 15a against the heel insert 11; Examiner notes the term “into” is very broad and merely means “against”, see defn. no. 5 of American Heritage Dictionary of the English Language, 5th Edition, 2016, entry via thefreedictionary.com/into, and therefore, the at least one ventilation passage of Polegato Moretti is being provided “into” the heel insert, inasmuch as claimed when assembled).
Regarding claim 6, Polegato Moretti, Peikert, and Adams disclose the outsole according to claim 4. Polegato Moretti further discloses characterized in that the anti-perforation layer is provided with a spacer element (18; para. 63) covering at least partially the top portion of the anti-perforation layer (Fig. 2); the spacer element being designed to be in contact with the bottom portion of the heel insert (Fig. 2; Examiner notes the term “contact” is very broad and merely means “communication”, see defn. no. 2a of American Heritage Dictionary of the English Language, 5th Edition, 2016, entry via thefreedictionary.com/contact, and therefore, 18 of Polegato Moretti is “in contact” with 11 inasmuch as claimed).
Regarding claim 7, Polegato Moretti, Peikert, and Adams disclose the outsole according to claim 1. Polegato Moretti further discloses wherein characterized in that the at least one ventilation passage connects a first opening (bottom left 15a; Fig. 2 shows top 15a connects with bottom left 15a via 18/16/17), provided at the side surface of the outsole (Fig. 2), with a second opening (top middle left 15a connects with bottom middle left 15a via 18/16/17), provided at the top surface of the outsole (see annotated Fig. 2 above of claim 1 rejection).
Regarding claim 8, Polegato Moretti, Peikert, and Adams disclose the outsole according to claim 1. Polegato Moretti further discloses wherein characterized in that said at least one ventilation passage comprises a transverse channel (left middle top 15a is a “transverse channel” because Fig. 2 is a cross section to show the channel running transversely along the longitudinal length of the shoe, inasmuch as claimed), connecting opposite openings (top middle left 15a connects a plurality of bottom 15a when assembled via 16/17/18, and the plurality of bottom 15a are opposite to top left 15a and are openings), provided at the side surface of the outsole (Fig. 2), and a vertical channel (middle right top 15a is “vertical” because it has a length in the y-axis, inasmuch as claimed), extending from the transverse channel to an opening of the top surface of the outsole (Fig. 2, middle right top 15a is “extending from” middle left top 15a via 16/17/18 because middle right top 15a is next to middle left top 15a, and middle right top 15a runs to the opening of the top surface of the outsole, which is an opening between annotated top surface at top 15a areas as shown in Fig. 2 above of claim rejection 1).
Regarding claim 9, Polegato Moretti, Peikert, and Adams disclose the outsole according to claim 8. Polegato Moretti further discloses wherein characterized in that the transverse channel and the vertical channel of the at least one ventilation passage intersects close to the top surface of the outsole (see annotated Fig. 2 above of claim 1 rejection, where middle right top 15a intersects close to the annotated top surface of the outsole).
Regarding claim 11, Polegato Moretti, Peikert, and Adams disclose the outsole according to claim 7. Polegato Moretti further discloses characterized in that the opening of said at least one ventilation passage is covered by an additional protective layer (18; Fig. 2 & para. 54, where 18 is a protective screen).
Regarding claim 12, Polegato Moretti further discloses the outsole according to claim 11, characterized in that the additional protective layer is a protective mesh material or a waterproof and breathable membrane or a combination of both (paras. 54 & 73, where 18 is a protective screen/mesh).
Regarding claim 13, when in combination, Polegato Moretti, Peikert, and Adams disclose the outsole according to claim 1, characterized in that the anti-perforation layer is made of woven textile in combination with non-woven textiles (of Polegato Moretti, as evidenced by Peikert: abstract & para. 29, where 39 is a textile layer and the decor layer 45 is knit, which is non-woven).
Peikert does not directly disclose wherein the anti-perforation layer is made of woven textile.
However, Adams teaches an outsole (1, 2, 3) of a safety footwear (para. 28) with an anti-perforation layer that is made of woven textile (para. 54).
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 the anti-perforation textile layer of Peikert to be a woven textile, as taught by Adams, in order to provide more durability and comfort during wear. Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Regarding claim 14, Polegato Moretti, Peikert, and Adams disclose the outsole according to claim 1. Polegato Moretti further discloses the front part of the tread (“the front part of the tread” is in the forefoot of the outsole of 14 as shown in Fig. 2, where the cross section shown runs the entire longitudinal length of the shoe, which includes the forefoot of the outsole).
Polegato Moretti and Peikert do not directly disclose the outsole characterized in that a plurality of bosses is provided between the top surface of the tread and a bottom surface of the anti-perforation layer at the front part of the tread; the plurality of bosses, positioned at the front part of the tread, being suitable to keep the anti-perforation layer not in contact with a top surface of the tread at the forefoot portion of the outsole.
However, Adams teaches an outsole (1, 2, 3), characterized in that a plurality of bosses is provided between the top surface of the tread and a bottom surface of the anti-perforation layer at the front part of the tread (see Fig. 3 and annotated Figs. 4 below; where annotated Fig. 4 is the cross section at the front part of the tread as shown in Fig. 3); the plurality of bosses, positioned at the front part of the tread (Fig. 3 & annotated Fig. 4 below), being suitable to keep the anti-perforation layer not in contact with a top surface of the tread at the forefoot portion of the outsole (see annotated Fig. 4 below).
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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 the outsole and tread of Polegato Moretti to include a plurality of bosses, as taught by Adams, in order to provide more traction and improve the safety for the wearer during activities. When in combination, Polegato Moretti, Peikert, and Adams disclose the outsole characterized in that a plurality of bosses is provided between the top surface of the tread and a bottom surface of the anti-perforation layer at the front part of the tread; the plurality of bosses, positioned at the front part of the tread, being suitable to keep the anti-perforation layer not in contact with the top surface of the tread at the forefoot portion of the outsole.
Regarding claim 15, modified Polegato Moretti further discloses the safety footwear (10; Fig. 2) comprising the outsole (12, 112, 212; Fig. 2) according to claim 1.
Regarding claim 24, when in combination, Polegato Moretti, Peikert, and Adams disclose the outsole according to claim 1, characterized that the anti-perforation layer at the forefoot portion of the outsole is free of surface contact with the tread (of Polegato Moretti: Fig. 2, where the cross section shown runs the entire longitudinal length of the shoe, and therefore, the anti-perforation layer at the forefoot portion is free of surface contact with 14, and as evidenced by Peikert, once Polegato Moretti’s vapor-permeable membrane layer is substituted by Peikert’s vapor-permeable membrane/fibrous layer, modified Polegato Moretti discloses “the anti-perforation layer at the forefoot portion is free of surface contact with the tread”).
Response to Arguments
Applicant’s arguments filed on 3/17/2026 have been fully considered but they are not persuasive. In view of Applicant’s amendment, the search has been updated, and newly modified grounds of rejection have been identified and applied. Applicant’s arguments, which are drawn solely to the newly amended limitations, have been considered but are moot in view of the newly modified ground(s) of rejection.
Conclusion15
15 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.
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/G.Q.H./Examiner, Art Unit 3732
/KHOA D HUYNH/Supervisory Patent Examiner, Art Unit 3732
