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 .
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, 3-5, 9-10, 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Edwards, U.S. Patent Application Publication No. 2019/0125029 in view of Nakata et al, WO 2004/104087, JP 2018-015149A and Gilbert et al, U.S. Patent No. 3,735,511.
Edwards discloses a material suitable for use in making shoes. See paragraph 0002. Edwards teaches the composition can include polyolefin copolymers including random or block copolymers and polyvinyl acetate copolymers and mixtures thereof. See paragraph 0138-0143. Edwards teaches incorporating inorganic fillers in amounts of 10 parts based on the weight of the polymer. See paragraph 0148.
The polymer can further comprise acid-modified polyethylene, (see paragraph 0132 which teaches employing a polyethylene copolymer derived from monomers of mono olefins and diolefins copolymerizing with acrylic acid or methacrylic acid which are carboxylic acids), however, Edwards does not teach employing maleic acid to modify the polyethylene.
However, Nakata teaches a polymer composition which can be used to form shoes, (see page 39, line 4), with a base polymer of EVA and polyolefin copolymers which can include a component D in amounts of 0-20 parts by weight of a maleic acid graft modified polyethylene, (see page 21, lines 12 and 19-20) in order to provide compositions having an excellent balance between flexibility and heat resistance, (page 22, lines 1-3).
Therefore, it would have been obvious to one of ordinary skill in the art to have incorporated 0-20 parts by weight of a maleic acid graft modified polyethylene into the composition of Edwards in order to form a composition having an excellent balance between flexibility and heat resistance as taught by Nakata.
The composition of Edwards can further comprise fillers such as talc, calcium and magnesium carbonate and silica and cellulose fibers in amounts of 10 parts by weight based on the weight of the polymer. See paragraph 0148.
Edwards differs from the claimed invention because it does not teach that the cellulose fibers are nanofibers.
However, JP 2018-015149A teaches that cellulose fibers having a fiber diameter of 2-1000 nm and a length of 0.1-1000 microns are suitable for use as filler in shoes and that the nanocellulose improves the anti-slip properties of the shoe and also decreases the weight of the shoe. See paragraph 0020 of the translation supplied in the IDS filed 5/3/22. The nanofibers can also be present in amounts of 0.05-35 weight per 100 parts of resin. See paragraph 0057.
Therefore, it would have been obvious to have employed nano sized cellulose fibers in the composition of Edwards in order to improve the anti-slip properties and reduce the weight of the shoe.
Edwards differs from the claimed invention because it does not disclose that the resin is foamed.
However, Gilbert teaches employing foamed resins to form a portion of a shoe. See col. 4, line 32 – col. 5, line 56. Gilbert teaches that the resulting shoes have excellent comfort and adhesion of the various layers together. Further, one of ordinary skill would have expected that the shoes comprising foam would be lighter and have more cushioning properties due to the presence of the foam.
Therefore, it would have been obvious to one of ordinary skill in the art to have foamed the resin of Edwards in order to provide a shoe having excellent comfort, adhesion between layers, which was also lighter and had good cushioning. Further, with regard to new claims 13-14, Gilbert teaches employing the foamed polymers as soles and insoles and therefore, it would have been obvious to have employed the structure of Edwards as modified as an insole or midsole or outer sole in a footwear structure, in order to provide a comfortable, strongly bonded midsole to the shoe.
Applicant's amendments and arguments filed 3/30/26 have been fully considered and are sufficient to overcome the previous rejection. A new rejection is set forth above.
With regard to the showing of unexpected results, the examples all include a single value for the maleic acid modified polyethylene, and not a range of values. Additionally, there is no showing that the results are significant and unexpected, since the values of tensile strength, elongation at break and tear strength are often either the same or vary by 0.1 as shown in Table 1. For example, example 2-1 has the same tensile elastic modulus. Example 20-4 has a higher elongation at break. Additionally, the compositions are different because they include different fillers, different amounts of activators, and different amounts of foaming agents. Therefore, the showing is not sufficient to overcome the rejection of record considering the totality of the evidence.
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 ELIZABETH M IMANI whose telephone number is (571)272-1475. The examiner can normally be reached Monday-Wednesday 7AM-7:30; Thursday 10AM -2 PM.
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/ELIZABETH M IMANI/ Primary Examiner, Art Unit 1789
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