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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/23/26 has been entered.
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, 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 Chou, U.S. Patent No. 8,772,401, JP 2018-015149A, Gilbert et al, U.S. Patent No. 3,735,511 and Cohen, U.S. Patent No. 4,405,730.
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.
With regard to the claims as amended 1/23/26, the polymer can further comprise acid-modified polyethylene, (see paragraph 0132 which teaches employing a polyethylene copolymer derived from monomers of monolefins 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, Chou teaches that in addition to acrylic acid or methacrylic acid, it was known to modify polyolefins with maleic acid. See col. 2, line 59 – col. 3, line 7.
Therefore, it would have been obvious to have used other known and useful carboxylic acids such as maleic acid to modify the polyethylene of Edwards, in view of the teaching of Chou that maleic acid was a known equivalent to acrylic acid and methacrylic acid for use in forming compositions for use in shoes.
The composition can further comprise fillers such as talc, calcium and magnesium carbonate and silica and cellulose fibers. 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.
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.
Edwards teaches silica particles but does not clearly teach fumed silica.
However, Cohen teaches employing fumed silica as a filler in polymer compositions comprising cellulose flock which are useful for forming shoes. See abstract and Table III.
Therefore, it would have been obvious to have added fumed silica in the composition of Edwards in view of its art recognized suitability as a filler for such compositions.
Applicant's amendments and arguments filed 1/23/26 have been fully considered and are sufficient to overcome the previous rejection. A new rejection is set forth above.
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