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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/25/2026 has been entered.
Claims 1, 4, and 6 have been amended, claims 2, 5, 7, and 13-15 have been canceled, claims 1, 3-4, 6, and 8-12 remain pending, and claims 8-12 are withdrawn from consideration in this application.
Claim Rejections - 35 USC § 102
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 4, and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bathum (US 5,860,228).
Regarding claim 1, Bathum discloses a block type outsole use for a shoe, comprising: a fixing portion (21) fitted and fixed to a base portion (25) of the shoe in which at least one insertion portion (26) is formed; a protrusion portion (2) formed to face the fixing portion; and a connecting portion (stem as seen in Fig. 7) connecting the fixing portion and the protruding portion, wherein the block type outsole is fitted into the insertion portion without an adhesive (column 6, lines 13-20) and is coupled to the base portion, wherein the at least one insertion portion has a shape corresponding to the shape of the block type outsole to fit the block type outsole into the at least one insertion portion while minimizing gaps and without the adhesive (Fig. 8), and wherein the block type outsole satisfies Formula 1: Formula 1 AF> Ac, wherein AF is a cross-sectional area of the fixing portion, and Ac is a cross-sectional area of the connecting portion (Fig. 3) (column 5, lines 33-51; column 4, lines 6-21; Fig. 1-8).
The limitations “wherein the block type outsole is inserted into the at least one insertion portion while the base portion is shrinking to securely fix the block type outsole within the at least one insertion portion upon complete shrinkage of the base portion, wherein the base portion shrinks according to a shape of the block type outsole” are product-by-process limitations. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above) The cavity in the base portion matches the shape of the block type outsole (Fig. 8), and therefore the product of the prior art is the same as the product in the claim.
Regarding claim 4, Bathum discloses that at least one anti-slip pin (6) is disposed on a protruding outer surface of the protrusion portion, and the anti-slip pin protrudes toward a walking path and is exposed to an outside (Fig. 1).
Regarding claim 6, Bathum discloses the shoe comprising the outsole of claim 1, wherein the base portion includes a base outsole to which the block type outsole is coupled (column 6, lines 6-10; Fig. 8).
Claim(s) 1 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bemis (US 5,657,556).
Regarding claim 1, Bemis discloses a block type outsole (18) used for a shoe, comprising: a fixing portion (22) fitted and fixed to the base portion (14) of the shoe in which at least one insertion portion (26) is formed; a protrusion portion (29) formed to face the fixing portion; and a connecting portion (28) connecting the fixing portion and the protruding portion, wherein the block type outsole is fitted into the insertion portion without an adhesive (column 7, lines 9-12) and is coupled to the base portion (column 5, line 63-column 6, line 38; Fig. 4-10), wherein the at least one insertion portion has a shape corresponding to the shape of the block type outsole to fit the block type outsole into the at least one insertion portion while minimizing gaps and without the adhesive (Fig. 9), and wherein the block type outsole satisfies Formula 1: Formula 1 AF> Ac, wherein AF is a cross-sectional area of the fixing portion, and Ac is a cross-sectional area of the connecting portion (Fig. 7).
The limitations “wherein the block type outsole is inserted into the at least one insertion portion while the base portion is shrinking to securely fix the block type outsole within the at least one insertion portion upon complete shrinkage of the base portion, wherein the base portion shrinks according to a shape of the block type outsole” are product-by-process limitations. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above) The cavity in the base portion matches the shape of the block type outsole (Fig. 9), and therefore the product of the prior art is the same as the product in the claim.
Regarding claim 6, Bemis discloses a shoe (10) comprising the outsole of claim 1, wherein the base portion is a midsole.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bemis, as applied to claim 1, in view of Cooper (US 2022/0079284).
Regarding claim 3, Bemis does not disclose the specific tread pattern on the protruding outer surface. Cooper teaches a block type outsole member pad (74, 76) having an intaglio pattern (sipes) formed on the outer ground-contacting surface. The intaglio pattern defines a tread pattern (paragraphs 0098, 0099; Fig. 5). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide an intaglio pattern, as taught by Cooper, to the protrusion portion of Bemis in order to provide sufficient friction and an anti-slip feature to the ground-contacting surface.
Response to Arguments
Applicant's arguments filed 01/28/2026 have been fully considered but they are not persuasive.
Applicant argues that the "configured to" language has been removed, and “this limitation must now be afforded its full patentable weight, and none of the cited reference anticipate or render obvious the positively recited limitation "the block type outsole is inserted into the at least one insertion portion while the base portion is shrinking to securely fix the block type outsole within the at least one insertion portion upon complete shrinkage of the base portion" of amended claim 1.”
However, as discussed above, this limitation is a product-by-process limitation. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above) Both Bathum and Bemis show a base portion that fits securely around the block type outsole with no gaps (as seen in Fig. 8 and 9, respectively).
Applicant argues that Bathum teaches adhesive bonding, or replaceable cleats using threaded studs or mechanical fasteners. Applicant further argues that the snap-in mechanism inherently requires mechanical tolerances (gaps) to enable easier insertion and removal, and therefore it is physically impossible to achieve an air-tight coupling with minimal gap without using an adhesive. However, gaps are not inherently required in a snap-fit mechanism. The properties of the materials (i.e. elastomeric properties) can allow for a snap/interference fit without gaps (column 4, lines 42-46; column 6, lines 13-17). As seen in Fig. 8, there are no gaps between the base portion and block type outsole. The base portion clearly has a shape complementing the shape of the block type outsole.
Further, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., permanent integration with minimal gaps, air-tight coupling) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that in Bemis, the shape of a pre-defined opening determines the final shape of the outsole, and therefore Bemis fails to disclose the limitation “the base portion shrinks according to the shape of the block type outsole.” However, as discussed above, this limitation is a product-by-process limitation. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above) Bemis clearly shows that the cavity in the base portion matches the shape of the block type outsole (Fig. 9), and therefore the product of the prior art is the same as the product in the claim.
Applicant further points to Fig. 14 to argue that Bemis mechanically joins multiple separate parts. However, Fig. 14 is only one alternate embodiment, and Bemis clearly discloses embodiments without additional separate parts (see at least Fig. 9-11).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 EST.
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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732