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
Acknowledgment is made to applicant’s amendment of claims 1 and 17. Currently claims 1, 3-6, 8-11 and 13-20 are pending.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-6, 8-11, 13 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hansen (WO 2008/049430 A1: figures 1 and 2a-2c; and page 5, lines 20-30) taken together with Zago (WO 02/070239 A1: figures 1-6; specification page 1, lines 14-22; page 2, lines 8-26; page 4, lines 4-30; page 5, lines 23-31 and page 7, lines 8-31) and Dean (2009/0072436 A1: figures 1-3 and paragraph 57) or Schneider et al (2018/0317606 A1: figure 24a and paragraph 149).
Hansen discloses an injection mold for forming an article of footwear (1) by attaching a sole to an upper (2), the apparatus comprising: a split mold (5) having a protrusion (figures 2a, 2b) for pressing against the upper (2) positioned on a last (6) to seal the top of the molding cavity, the split mold is shown clearly in figure 1; and a bottom mold (4) to form the bottom of the sole of the composite shoe. The external coupling elements for attaching the mold to an injection press is inherent. It is noted that applicant did not consider this feature important enough to illustrate it in the drawings of this application due to the well-known nature of such an arrangement. The reference does not disclose a replaceable mold attached to a base mold frame or the replaceable mold being formed by additive manufacturing.
Zago discloses an injection mold (1) for forming a sole (2) directly on an upper (3) mounted on a last as illustrated in figure 1. The mold has a first mold portion (5) that extends around the upper along the upper edge and comprises a rim (8) which is formed of a separate resin material (page 4, lines 20-28) in the form of an annular element (9) which is the secondary mold element referred to by applicant. The annular element (9) is formed with a mechanical grip in the form of an appendage (11) that fits in a cavity (12) of the first mold portion (5), as illustrated in figures 5 and 6. The annular element has a protrusion as illustrated in figure 5 wherein the rim (8) has a height lower than the height at the start of the protrusion at the edge of the first mold portion (5). As illustrated in figure 5, the top portion of the protrusion has more volume and mass than the bottom portion of the protrusion if measured at the center of rim (8).
The reference discloses that the use of a resilient mold that contacts the upper helps to adjust to uppers of different thicknesses to prevent undesired leakage. It is noted that the coupling elements between the insert and base mold extend completely around the mold. It is inherent that the coupling force is greater than the force of gravity to prevent the mold falling apart upon opening of the mold. The annular element (9) contacts the first mold portion (5) with a minor portion of the first mold portion as illustrated in figure 2. It is clear that this is much lower than ½ of the contact surface. The inner portion of the seal (9), illustrated in figure 2 on the following page, has a curved lower surface that forms a portion of the molding cavity that shapes the sole (2) of the shoe. The portion of the seal (9) that is directly above the arrow pointing to the mold cavity denoted by reference numeral 7 in figure 2 of the reference is the curved lower surface. This is supported by figure 1 of the reference that illustrates a sole (2) with a curved top surface that is formed by molding cavity (7). The examiner considers this curved part of the seal (9) to form a proximal portion of the mold as it faces the injection chamber or mold cavity as defined by applicant. Seal (9) is positioned against tan inner surface part of each of the first and second side frames and disposed between the injection chamber and the first and second side frames as shown in Fig. 2. The annular element extends along the lateral (side) surface of the mold and the frame of the primary injection mold to which it is coupled. Zago also teaches that the first and second side frames of the secondary injection mold frames include an upper lip (Fig 2 element 9).
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It would have been obvious at the time of the effective filing date of the application to one of ordinary skill in the art to modify the mold of Hansen by using resilient mold inserts attached to a base mold as disclosed by Zago for the purpose of sealing the mold protrusion of the outer mold to the upper supported by the last to account for differences in thicknesses of footwear uppers to avoid leakage of the injection molded material from the molding cavity. Such leakage would result in unwanted flash and wasted or undesirable molded articles.
Dean discloses a mold frame (102, 106) that supports a plurality of different mold inserts (112, 150) that are formed by rapid prototyping techniques (paragraph 57).
Schneider et al disclose a mold having mold inserts (1700) formed by rapid prototyping, see paragraph 149. The reference has mold inserts positioned in base molds (2300). The mold of Schneider et al is for forming footwear and has molds (2300) having inserts (1700) that mate with an inner mold (220) to form a piece of footwear. The mold inserts are formed of silicone having a thermal conductivity of equal to or less than 1 W/M-K.
It would have been obvious at the time of the effective filing date of the application to one of ordinary skill in the art to modify the combination of Hansen and Zago by forming the annular element (secondary mold portion) by rapid prototyping as disclosed by either Dean or Schneider et al for the purpose of forming different shaped articles with the flexibility of rapid prototyping to form the replaceable elements without expensive molds associated with injection molding or traditional molding. It is noted that the Zago reference forms the secondary mold element or annular element by injection molding.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Hansen taken together with Zago and Dean or Schneider et al as applied to claims 1, 3-6, 8-11 and 13 above, and further in view of Kilgore (2017/0239903 A1: figures 1-6 and paragraphs 23 and 25).
The previous combination discloses all claimed features except for the base mold having a thermal conductivity of at least 10 W/M/degrees K.
Kilgore discloses a mold for forming a shoe sole (700) comprising a base mold made of aluminum (paragraph 23) and an insert mold made of silicon. It is well-known that Aluminum has a thermal conductivity of greater than 10/W/M/degrees K.
It would have been obvious at the time of the effective filing date of the application to one of ordinary skill in the art to modify the apparatus of the previous combination by forming the base mold out of aluminum as disclosed by Kilgore as having a base mold of high thermal conductivity supporting a sole insert was well-known in the art for the purpose of quickly heating and cooling the mold.
Response to Arguments
Applicant's arguments filed 12 November 2025 have been fully considered but they are not persuasive.
Applicant argues that the prior art reference “Zago” teaches an annular element secured to an upper facing surface and that therefore the first mold portion would still form part of the surface of the injection chamber in the applied combination. This argument is not commensurate in scope to the limitations of the claimed subject matter, which only require that the element taught by “Zago” be positioned against an inner surface part of the first and second side frames of the primary injection mold such that the secondary mold is disposed between the injection chamber and first and second primary mold side frames, which is shown in Fig 2 of “Zago”. It is not required by the claims as instantly drafted that the secondary injection mold form the entirety of the surface of the injection chamber.
Conclusion
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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/JPR/Examiner, Art Unit 1743
/GALEN H HAUTH/Supervisory Patent Examiner, Art Unit 1743