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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/08/2026 has been entered.
Claims 1, 15, 21, and 22 have been amended, claims 11-14, 16-17, and 19 have been canceled, and claims 1-5, 8-10, 15, and 20-22 remain pending in this application.
Claim Objections
Claim 22 objected to because of the following informalities: Claim 22 recites the limitations “the thermoplastic polyurethane” and “the ethylene-vinyl-alcohol copolymer” in lines 24-25. These limitations lack antecedent basis. Appropriate correction is required.
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 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) 1-5, 8-10, 15, and 20-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chang et al. (US 2016/0075113), herein Chang, in view of Kitano et al. (US 2014/0096882), herein Kitano.
Regarding claim 1, Chang discloses an article of footwear (10) comprising: an upper (12) for an article of footwear; and a sole structure (14), wherein the upper, the sole structure, or both the upper and the sole structure comprise a bladder (28), the bladder comprising a first film secured to a second film to define a sealed internal cavity (Fig. 3); and a fluid disposed within the sealed internal cavity at a pressure of one atmosphere (101 kilopascals) or greater (paragraph 0081); wherein the first film, or the second film, or each of the first film and the second film is a multi-layered film including a core region comprising at least 20 gas-barrier layers (barrier microlayers) and a plurality of elastomeric layers (TPU microlayers), wherein the gas-barrier layers alternate with the elastomeric layers, wherein each of the gas-barrier layers comprises at least one gas-barrier material, and wherein each of the elastomeric layers comprises at least one elastomeric material, and wherein the core region has a total thickness less than 200 micrometers, the gas barrier layers comprising an ethylene-vinyl-alcohol copolymer (paragraph 0059) and the elastomeric layers comprising a thermoplastic polyurethane (paragraph 0038) (paragraphs 0041, 0043-0048, 0059, 0077-0078, 0081; Fig. 1-3, 20).
Kitano teaches an air bladder having alternating gas-barrier layers (2) and elastomeric layers (3). Each gas barrier layer has a thickness which may be in the range of about 0.01 to 0.75 micrometers (paragraph 0046; Table 1, Example 4). Each elastomeric layer has an average thickness which may be in the range of about 2 to 8 micrometers (paragraph 0046; Table 1, Examples 1-8). Kitano further teaches that a ratio of the thickness of the elastomeric layers is preferably 80% or more, which improves the fatigue (crack) resistance of the multilayer structure (paragraphs 0040-0041). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide each gas barrier layer with a thickness in the range of about 0.01 to 0.75 micrometers and each elastomeric layer with an average thickness in the range of about 2 to 8 micrometers in order to improve the fatigue resistance of the bladder.
Chang discloses a gas transmission rate of the bladder (paragraph 0119), but does not specifically disclose that the bladder has a nitrogen gas transmission rate of no more than 120 percent of an original nitrogen gas transmission rate after 350,000 KIM cycles. However, it is noted that the recitation of “a nitrogen gas transmission rate of no more than 120 percent of an original nitrogen gas transmission rate after 350,000 KIM cycles” is a functional limitation. It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the limitation is not patentable and is fully met by the reference. See In re Swinehart, 169 USPQ 226. See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art. The combination of Chang and Kitano discloses the structure as claimed and therefore would have a reasonable expectation of performing such function. See MPEP 2173.05(g).
The combination of Chang and Kitano does not disclose the relative melting temperatures of the thermoplastic polyurethane and the ethylene-vinyl-alcohol copolymer. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize a thermoplastic polyurethane material having a melting temperature within 10 degrees C of the ethylene-vinyl-alcohol copolymer material, in order to aid manufacturing by utilizing materials having similar melt properties which can adhere to each other, and which can be co-extruded. It has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges that would be discovered through routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, would be deemed through routine experimentation and as such is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. See also KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 416 (2007).
Regarding claim 2, Chang discloses that the bladder is disposed in at least a heel region of the article of footwear(Fig. 1).
Regarding claim 3 Chang discloses that the article of footwear further comprises a chassis (midsole) secured to the upper (Fig. 1).
Regarding claim 4, Chang discloses that the sole structure further comprises an outsole (outsole), optionally wherein the outsole is secured to the bladder (Fig. 1, 2).
Regarding claim 5, Chang discloses that the bladder is disposed between the chassis and the outsole (Fig. 1).
Regarding claim 8, Chang discloses that the average total thickness of the core region of the multi-layered film ranges from about 125 micrometers to about 200 micrometers (paragraph 0043-0044), and wherein the multi-layered film further comprises a first structural layer secured to a first side of the core region (paragraphs 0061, 0086; Fig. 19); and a second structural layer secured to a second side of the core region that is opposing to the first side of the core region (paragraphs 0061, 0086; Fig. 19).
Chang shows that the general thickness of the structural layers in relation to the gas barrier layers and elastomeric layers, including the thickness of the structural layers being significantly larger than the thickness of the gas barrier layers and elastomeric layers (see Fig. 19), but does not disclose the specific thickness of the structural layers. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make an average thickness of the structural layers ranging from about 900 micrometers to about 1990 micrometers, in order to provide layers which are sufficiently thin, flexible, and strong, and which fit within the overall structure of the membrane. The claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 9, Chang discloses an initial internal pressure (paragraph 0081), but does not specifically disclose a range of about 20 psi to about 22 psi. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make an initial internal pressure in a range of about 20 psi to about 22 psi, in order to provide a bladder with sufficient cushioning and support for the foot of the user. The claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 10, Chang discloses that the core region of the multi-layered film comprises at least 50 layers (paragraph 0044).
Regarding claim 15, Chang discloses a mole percent ethylene content of the thermoplastic ethylene-vinyl alcohol copolymers (paragraph 0059), but does not specifically disclose a range of about 28 mole percent to about 44 mole percent. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the thermoplastic ethylene-vinyl alcohol copolymers with a mole percent of ethylene content a range of about 28 mole percent to about 44 mole percent, in order to provide a film with sufficient flexibility and strength. The claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 20, Chang discloses a gas transmission rate of the bladder (paragraph 0119), but does not specifically disclose that the bladder has a nitrogen gas transmission rate of from about 0.5 to about 2 cubic centimeters per square meter per day measured at 23 degrees Celsius and 0 percent relative humidity for a structure having a thickness of from about 72 micrometers to about 320 micrometers after from about 0 KIM cycles to about 320,000 KIM cycles. However, it is noted that the recitation of “a nitrogen gas transmission rate of from about 0.5 to about 2 cubic centimeters per square meter per day measured at 23 degrees Celsius and 0 percent relative humidity for a structure having a thickness of from about 72 micrometers to about 320 micrometers after from about 0 KIM cycles to about 320,000 KIM cycles” is a functional limitation. It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the limitation is not patentable and is fully met by the reference. See In re Swinehart, 169 USPQ 226. See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art. The combination of Chang and Kitano discloses the structure as claimed and therefore would have a reasonable expectation of performing such function. See MPEP 2173.05(g).
Regarding claim 21, Chang discloses an article of footwear (10) comprising: an upper (12) for an article of footwear; and a sole structure (14), wherein the upper, the sole structure, or both the upper and the sole structure comprise a bladder (28), the bladder comprising a first film secured to a second film to define a sealed internal cavity (Fig. 3); and a fluid disposed within the sealed internal cavity; wherein the first film, or the second film, or each of the first film and the second film is a multi-layered film including a core region comprising at least 20 gas-barrier layers (barrier microlayers) and a plurality of elastomeric layers (TPU microlayers), wherein the gas-barrier layers alternate with the elastomeric layers, wherein each of the gas-barrier layers comprises at least one gas-barrier material, and wherein each of the elastomeric layers comprises at least one elastomeric material, and wherein the core region has a total thickness less than 200 micrometers, the gas barrier layers comprising an ethylene-vinyl-alcohol copolymer (paragraph 0059) and the elastomeric layers comprising a thermoplastic polyurethane (paragraph 0038) (paragraphs 0041, 0043-0048, 0059, 0077-0078, 0081; Fig. 1-3, 20).
Kitano teaches an air bladder having alternating gas-barrier layers (2) and elastomeric layers (3). Each gas barrier layer has a thickness which may be in the range of about 0.01 to 0.75 micrometers (paragraph 0046; Table 1, Example 4). Each elastomeric layer has an average thickness which may be in the range of about 2 to 8 micrometers (paragraph 0046; Table 1, Examples 1-8). Kitano further teaches that a ratio of the thickness of the elastomeric layers is preferably 80% or more, which improves the fatigue (crack) resistance of the multilayer structure (paragraphs 0040-0041). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide each gas barrier layer with a thickness in the range of about 0.01 to 0.75 micrometers and each elastomeric layer with an average thickness in the range of about 2 to 8 micrometers in order to improve the fatigue resistance of the bladder.
Chang discloses an initial internal pressure (paragraph 0081), but does not specifically disclose a range of about 20 psi to about 22 psi. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make an initial internal pressure in a range of about 20 psi to about 22 psi, in order to provide a bladder with sufficient cushioning and support for the foot of the user. The claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Chang discloses a gas transmission rate of the bladder (paragraph 0119), but does not specifically disclose that the bladder has a nitrogen gas transmission rate of no more than 120 percent of an original nitrogen gas transmission rate after 350,000 KIM cycles. However, it is noted that the recitation of “a nitrogen gas transmission rate of no more than 120 percent of an original nitrogen gas transmission rate after 350,000 KIM cycles” is a functional limitation. It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the limitation is not patentable and is fully met by the reference. See In re Swinehart, 169 USPQ 226. See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art. The combination of Chang and Kitano discloses the structure as claimed and therefore would have a reasonable expectation of performing such function. See MPEP 2173.05(g).
The combination of Chang and Kitano does not disclose the relative melting temperatures of the thermoplastic polyurethane and the ethylene-vinyl-alcohol copolymer. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize a thermoplastic polyurethane material having a melting temperature within 10 degrees C of the ethylene-vinyl-alcohol copolymer material, in order to aid manufacturing by utilizing materials having similar melt properties which can adhere to each other, and which can be co-extruded. It has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges that would be discovered through routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, would be deemed through routine experimentation and as such is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. See also KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 416 (2007).
Regarding claim 22, Chang discloses an article of footwear (10) comprising: an upper (12) for an article of footwear; and a sole structure (14), wherein the upper, the sole structure, or both the upper and the sole structure comprise a bladder (28), the bladder comprising a first film secured to a second film to define a sealed internal cavity (Fig. 3); and a fluid disposed within the sealed internal cavity at a pressure of one atmosphere (101 kilopascals) or greater (paragraph 0081); wherein the first film, or the second film, or each of the first film and the second film is a multi-layered film including a core region comprising at least 20 gas-barrier layers (barrier microlayers) and a plurality of elastomeric layers (TPU microlayers), wherein the gas-barrier layers alternate with the elastomeric layers, wherein each of the gas-barrier layers comprises at least one gas-barrier material, and wherein each of the elastomeric layers comprises at least one elastomeric material, and wherein the core region has a total thickness less than 200 micrometers, the gas barrier layers comprising an ethylene-vinyl-alcohol copolymer (paragraph 0059) and the elastomeric layers comprising a thermoplastic polyurethane (paragraph 0038) (paragraphs 0041, 0043-0048, 0059, 0077-0078, 0081; Fig. 1-3, 20).
Kitano teaches an air bladder having alternating gas-barrier layers (2) and elastomeric layers (3). Each gas barrier layer has a thickness which may be in the range of about 0.01 to 0.75 micrometers (paragraph 0046; Table 1, Example 4). Each elastomeric layer has an average thickness which may be in the range of about 2 to 8 micrometers (paragraph 0046; Table 1, Examples 1-8). Kitano further teaches that a ratio of the thickness of the elastomeric layers is preferably 80% or more, which improves the fatigue (crack) resistance of the multilayer structure (paragraphs 0040-0041). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a ratio of thickness of the elastomeric layers at 80% or more in order to improve the fatigue resistance of the bladder.
Chang discloses that the multi-layered film further comprises a first structural layer secured to a first side of the core region (paragraphs 0061, 0086; Fig. 19); and a second structural layer secured to a second side of the core region that is opposing to the first side of the core region (paragraphs 0061, 0086; Fig. 19).
Chang shows that the general thickness of the structural layers in relation to the gas barrier layers and elastomeric layers, including the thickness of the structural layers being significantly larger than the thickness of the gas barrier layers and elastomeric layers (see Fig. 19), but does not disclose the specific thickness of the structural layers. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make an average thickness of the structural layers ranging from about 900 micrometers to about 1990 micrometers, in order to provide layers which are sufficiently thin, flexible, and strong, and which fit within the overall structure of the membrane. The claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Chang discloses a gas transmission rate of the bladder (paragraph 0119), but does not specifically disclose that the bladder has a nitrogen gas transmission rate of no more than 120 percent of an original nitrogen gas transmission rate after 350,000 KIM cycles. However, it is noted that the recitation of “a nitrogen gas transmission rate of no more than 120 percent of an original nitrogen gas transmission rate after 350,000 KIM cycles” is a functional limitation. It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the limitation is not patentable and is fully met by the reference. See In re Swinehart, 169 USPQ 226. See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art. The combination of Chang and Kitano discloses the structure as claimed and therefore would have a reasonable expectation of performing such function. See MPEP 2173.05(g).
The combination of Chang and Kitano does not disclose the relative melting temperatures of the thermoplastic polyurethane and the ethylene-vinyl-alcohol copolymer. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize a thermoplastic polyurethane material having a melting temperature within 10 degrees C of the ethylene-vinyl-alcohol copolymer material, in order to aid manufacturing by utilizing materials having similar melt properties which can adhere to each other, and which can be co-extruded. It has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges that would be discovered through routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, would be deemed through routine experimentation and as such is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. See also KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 416 (2007).
Response to Arguments
Applicant's arguments filed 01/08/2026 have been fully considered but they are not persuasive.
Applicant argues that claim 1 recites a combination of structural features that defines a specific species of multi-layered film that is neither taught nor suggested by the cited prior art. However, as discussed above, each structural feature is taught or suggested by the combination of Chang and Kitano.
Applicant further argues that neither Chang nor Kitano teaches or suggests selecting TPU and EVOH grades based on relative melting temperatures, and the melting temperature limitation defines a physical property of the materials themselves. Applicant further argues that a person of ordinary skill in the art would have no reason to select materials having melting temperatures within 10 degrees C of each other, and to combine such materials with the other specific structural parameters.
However, a melting temperature is an inherent property of a material, and Chang clearly discloses the use of TPU and EVOH materials. With the same materials disclosed, the relative melting temperatures would be a matter of obviousness, as discussed above, in order to aid manufacturing by utilizing materials having similar melt properties which can adhere to each other, and which can be co-extruded. It has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges that would be discovered through routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, would be deemed through routine experimentation and as such is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. See also KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 416 (2007).
Applicant argues that the Office has not established that a multi-layered film meeting the structural parameters of Chang and Kitano would necessarily exhibit the claimed gas transmission performance. However, as seen in the rejection above, the prior art teaches each element of the structure cited by Applicant. Even if the gas transmission is a measurable outcome of recited structure, the prior art teaches such structure. Therefore, the combination of Chang and Kitano would have a reasonable expectation of performing such function, as previously stated.
Conclusion
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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732
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