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 .
Status of Claims
This Office Action is in response to the amendment filed 3/6/26. As directed by the amendment, claims 1, 7 and 19 have been amended. Claims 1-2 and 7-20 are pending in this application.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke § 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke § 112(f) except as otherwise indicated in an Office action.
In the instant case there does not appear to be any means for language in the claims and/or language to be considered under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 103 AIA
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 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 2, 7, and 10-17are rejected under 35 U.S.C. 103 as being unpatentable over Auger US 20050016029 A1 (herein after Auger) in view of Avar US 20150143720 A1 (herein after Avar), Constantinou US 20190116926 A1 (herein after Constantinou ‘926) and Craig US 20140137433 A1 (herein after Craig).
Regarding claim 1, Auger discloses an article of footwear comprising: an upper (as seen in annotated Figure 2, 8, 9), a plate (46) having a first side and a second side and a perimeter (as seen in annotated Figure 2, 8, 9), wherein the first side is configured to be ground-facing and ground-contacting (as seen in annotated Figure 2, 8, 9).
[AltContent: arrow][AltContent: textbox (A plate. )][AltContent: arrow][AltContent: textbox (A second side.)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Perimeter)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (An article of footwear. )][AltContent: textbox (Wherein the first side is configured to be ground-facing and ground-contacting. )][AltContent: textbox (A first side.)][AltContent: textbox (An upper. )][AltContent: textbox (A perimeter. )]
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Auger is silent to a rand, wherein the rand is operably coupled to at least a portion of the perimeter of the plate and at least a portion of the upper, a rand polymeric material that is different from the first polyolefin resin.
Avar discloses a rand (156 and paragraph 0065), wherein the rand (156) is operably coupled (paragraph 0066) to at least a portion of the perimeter of the plate (as seen in annotated Figure 1, 158, paragraph 0064, 0065 and 0072 – “…intermediate member 156 may be referred to as "foxing" or "rand". Intermediate member 156 can have an inner surface 174 and an outer surface 176. Inner surface 174 can face upper 112. Outer surface 176 can face away from upper 112 and can at least partially define side external surface 157 of sole structure 114…”, paragraph 0065) and at least a portion of the upper (as seen in annotated Figure 1), a rand polymeric material (0071) that is different from the first polyolefin resin (0071 – rubber being different than TPU).
[AltContent: arrow][AltContent: textbox (The rand (156) is operably coupled to at least a portion of the perimeter of the plate (158) and at least a portion of the upper.)][AltContent: arrow][AltContent: textbox (Plate)][AltContent: arrow][AltContent: textbox (Upper)][AltContent: arrow][AltContent: arrow][AltContent: arrow]
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Auger and Avar are analogous art to the claimed invention in that it relates to footwear with layered sole structure including a rand.
It would have been obvious to one having ordinary skill in the art before the effective filing date
of the invention to have modified the footwear sole structure of Auger, by including a rand, wherein the rand is operably coupled to at least a portion of the perimeter of the plate and at least a portion of the upper, with the rand polymeric material being different from the first polyolefin resin as taught by Avar in order to form a layer of protection, support and stabilization to the shoe. The modification of the footwear would be a simple modification to provide support and structure to the knitted upper where it joins the sole.
However, Auger and Avar are silent to the plate comprising a first polyolefin resin.
Constantinou’926 discloses the plate (paragraph 0071) comprising a first polyolefin resin (paragraph 0287).
Constantinou is analogous art to the claimed invention in that it relates to materials used in footwear.
It would have been obvious to one having ordinary skill in the art before the effective filing date
of the invention to have modified the material of the plate of Auger and Avar by constructing the plate using polyolefin resin as taught by Constantinou’926, in order to provide a lightweight, strong and flexible footwear. The modification would be a simple modification to, ensure the footwear is lite, comfortable to wear, provides the necessary support and strength to the sole of the footwear.
However, Auger, Avar and Constantinou are silent to wherein the rand is operably coupled to the upper and overlaps at least a portion of the perimeter of the plate and at least a portion of a bite line of the article of footwear, the bite line located at a junction of the perimeter of the plate.
Craig discloses wherein the rand is operably coupled to the upper (as seen in annotated Figure 12E) and overlaps at least a portion of the perimeter of the plate (as seen in annotated Figure 12E) and at least a portion of a biteline of the article of footwear (as seen in annotated Figure 12E), the biteline located at a junction of the perimeter of the plate (as seen in annotated Figure 12E).
[AltContent: textbox (The biteline located at a junction of the perimeter of the plate.)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (The rand is operably coupled to the upper and overlaps at least a portion of the perimeter of the plate and at least a portion of a biteline of the article of footwear. )]
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Craig is analogous art to the claimed invention in that it relates to footwear having reinforced supportive sole structures.
It would have been obvious to one having ordinary skill in the art before the effective filing date
of the invention to have modified the footwear of Auger and Avar Constantinou ‘926 by constructing the rand being operably coupled to the upper and overlaps at least a portion of the perimeter of the plate and at least a portion of a bite line of the article of footwear, with the bite line located at a junction of the perimeter of the plate as taught by Craig, in order to reinforce the footwear in areas that have the most strain. The modification would be a simple modification to, ensure the footwear provides the necessary support and strength to the sole of the footwear.
Regarding claim 2, the modified article of footwear of the combined references discloses wherein the plate (46 of Auger) is configured to extend from a medial side to a lateral side of the article of footwear (as seen in annotated Figure 9 of Auger).
[AltContent: textbox (The plate is configured to extend from a medial side to a lateral side of the article of footwear.)][AltContent: arrow][AltContent: arrow][AltContent: connector][AltContent: textbox (Wherein a length of the plate is configured to extend from a toe region to a heel region of the article of footwear.)][AltContent: arrow]
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Regarding claim 7, the modified article of footwear of the combined references discloses, wherein the rand (156 of Avar) attaches to the upper above a biteline, wherein the rand (as seen in annotated Figure 1 of Avar) has a height as measured from the biteline to an upper edge of the rand (as seen in annotated Figure 1 of Avar).
While the combined references do not disclose the rand having a height of about 1 millimeter to about 25 millimeters, since 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 10, the modified article of footwear of the combined references discloses wherein the first side of the plate (46 of Auger) includes one or more traction elements (18 of Auger).
Regarding claim 11, the modified article of footwear of the combined references discloses wherein the one or more traction elements (18 of Auger) are integrally formed with the plate (46, paragraph 0027 of Auger).
Regarding claim 12, the modified article of footwear of the combined references discloses wherein the rand (156 of Avar) is disposed at least partially between the plate (158 of Avar) and the upper (as seen in annotated Figure 1 of Avar).
[AltContent: arrow][AltContent: textbox (Plate)][AltContent: arrow][AltContent: textbox (Upper)][AltContent: arrow][AltContent: textbox (Rand)]
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Regarding claim 13, the modified article of footwear of the combined references discloses wherein the rand (156, as seen in annotated Figure 1 of Avar) is disposed on an outer surface of the upper and on an outer surface of the plate (as seen in annotated Figure 1 of Avar).
Regarding claim 14, the modified article of footwear of the combined references discloses wherein the rand (156 of Avar) is disposed about substantially an entire perimeter of the article of footwear (as seen in annotated Figure 1 of Avar).
Regarding claim 15, the modified article of footwear of the combined references discloses, wherein the rand (156 of Avar) is adhesively bonded to the plate (paragraph 0069 of Avar), the upper (as seen in annotated Figure 1 of Avar), or both; or wherein the rand is thermally bonded to the plate (paragraph 0066 and 0069 of Avar), the upper, or both; or wherein the rand is mechanically bonded to the plate (paragraph 0066 and 0069 of Avar), the upper, or both.
Regarding claim 16, the modified article of footwear of the combined references discloses, wherein the rand (156 of Avar) has a thickness of about 1 millimeter to about 5 millimeters (paragraph 0131 of Avar) and wherein the rand has a flexural modulus that is lower than a flexural modulus of the plate (paragraph 0102 of Avar).
While the combined references do not disclose the rand having a flexural modulus that is at least 10 percent lower than a flexural modulus of the plate, since 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 17, the modified article of footwear of the combined references discloses, wherein the rand (156 of Avar) attaches to the upper above a biteline formed at a junction of the perimeter of the plate (as seen in annotated Figure 1 of Avar) and the upper, wherein the rand (as seen in annotated Figure 1 of Avar) has a height as measured from the biteline to an upper edge of the rand (as seen in annotated Figure 1 of Avar).
While the combined references do not disclose the rand having a height of about 1 millimeter to about 25 millimeters, since 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).
Claims 9, 18, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Auger US 20050016029 A1 (herein after Auger) in view of Avar US 20150143720 A1 (herein after Avar) and Constantinou US 20190116926 A1 (herein after Constantinou’926) as applied to claim 1 and further in view of Constantinou US 20190118515 A1 (herein after Constantinou).
Regarding claim 9, the article of footwear of the combined references discloses all the limitations of claim 9 except the combined references does not disclose wherein the rand polymeric material comprises a polystyrene, a polyethylene, an ethylene-α-olefin copolymer, an ethylene-propylene rubber (EPDM) a polybutene, a polyisobutylene, a poly-4-methylpent-1-ene, a polyisoprene, a polybutadiene, an ethylene-methacrylic acid copolymer, a copolymer thereof, or a blend or mixture thereof.
Constantinou discloses wherein the rand polymeric material comprises a polystyrene, a polyethylene, an ethylene-α-olefin copolymer, an ethylene-propylene rubber (EPDM) (paragraphs 0119 of Constantinou), a polybutene, a polyisobutylene, a poly-4-methylpent-1-ene, a polyisoprene, a polybutadiene, an ethylene-methacrylic acid copolymer, a copolymer thereof, or a blend or mixture thereof (paragraphs 0119 of Constantinou).
Constantinou is analogous art to the claimed invention in that it relates to footwear and the composite materials used to make the structure of the shoe.
It would have been obvious to one having ordinary skill in the art before the effective filing date
of the invention to have modified the article of footwear of Auger, Avar and Constantinou’926 by constructing the rand polymeric material comprises a polystyrene, a polyethylene, an ethylene-α-olefin copolymer, an ethylene-propylene rubber (EPDM) a polybutene, a polyisobutylene, a poly-4-methylpent-1-ene, a polyisoprene, a polybutadiene, an ethylene-methacrylic acid copolymer, a copolymer thereof, or a blend or mixture thereof. The modification of the materials of the sole would be a simple modification to obtain predictable results, footwear still provided stability and support but had properties of a degree of flexibility.
Regarding claim 18, the modified article of footwear of the combined references discloses, wherein the rand polymeric material is a foamed material (paragraphs 0246 of Constantinou).
Regarding claim 19, the modified article of footwear of the combined references discloses, wherein the first polyolefin resin comprises a polyolefin copolymer and an effective amount of a resin modifier (paragraphs 0121, 0130, 0249, 0250, 0252 of Constantinou).
While the combined references do not disclose the rand polymeric material comprising a polymeric component that is substantially similar to the polymeric component of first polyolefin resin, except the polymeric component of the rand polymeric material comprising a greater concentration of polymeric resin modifier than the polymeric component of the first polyolefin resin, since 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 20, the modified article of footwear of the combined references discloses, wherein the rand polymeric material (0151 of Constantinou) comprises an elastomeric material, wherein the rand polymeric material comprises an olefin elastomer (0230 of Constantinou).
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance:
Applicant’s amendments have included the below limitations that have not been found in the prior art searches. As a result of the included limitations the claims dated 6/18/25 are deemed allowable.
The closest piece of prior art is Auger US 20050016029 A1, Avar US 20150143720 A1, Constantinou US 20190116926 A1, Constantinou US 20190118515 A1 and Craig US 20140137433 A1. The current claims are distinguished from Auger, Avar, Constantinou’926, and Constantinou at least because Auger, Avar, Constantinou’926, Constantinou and Craig do not teach, suggest, or disclose “…an article of footwear wherein the first polyolefin resin comprises a resin composition comprising: a polypropylene copolymer which is a random copolymer of ethylene and propylene having an ethylene repeat unit content of 1 percent to 5 percent based on a total weight of the polypropylene copolymer; and an effective amount of a polymeric resin modifier is a copolymer comprising isotactic propylene repeat units and ethylene repeat units having an ethylene repeat unit content of 10 percent to 15 percent by weight based upon a total weight of the polymeric resin modifier, wherein the effective amount is 5 percent to 30 percent by weight based upon the total weight of the resin composition…”..The prior art of record would not be combinable to result in the claimed invention without substantial rearrangement and/or hindsight reasoning. Dependent claims are allowable at least by virtue of their dependencies on an allowable claim.
Arguments
Applicant’s arguments have been fully considered but are not convincing. Applicant’s arguments are directed towards structural elements included in the amended claims and thus do not apply to the combinations of references used to teach the limitations of the amended claims in the current rejection and/or the manner in which prior art has been applied in the current rejection. In view of Applicant's amendments, the search has been updated, and a rejection on the amended claims is applied above.
In response to the applicant’s arguments that the Office does not teach or suggest the limitations of the claims or the use of such material compositions in footwear plates, the examiner respectfully disagrees. As stated above and before, Constantinou, paragraphs 0010 and 0015 0019 teaches the use of the claimed compositions in footwear plates as disclosed in the combined references, and Constantinou, paragraph 0239 and 0256 teaches the resin composition including both the base copolymer and the resin modifier.
In response to the applicant’s arguments that the plate of Avar is not configured to be ground-facing and ground-contacting, the examiner respectfully disagrees. As disclosed above, Avar teaches wherein the rand (156) is operably coupled (paragraph 0066) to at least a portion of the perimeter of the plate (158, as seen in annotated Figure 1, paragraph 0064, 0065 and 0072 – specifically, “…intermediate member 156 may be referred to as "foxing" or "rand". Intermediate member 156 can have an inner surface 174 and an outer surface 176. Inner surface 174 can face upper 112. Outer surface 176 can face away from upper 112 and can at least partially define side external surface 157 of sole structure 114…”, paragraph 0065). The plate being capable of facing the ground and coming in contact with the ground as ground surfaces and an individual’s gait and stride are varied and would be capable in coming in contact with the ground surface when worn.
[AltContent: arrow][AltContent: textbox (The plate being capable of being ground-facing and ground-contacting.)][AltContent: arrow]
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Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE M FERREIRA whose telephone number is (571)270-5916, fax number (571) 270-6916. The examiner can normally be reached on Monday - Thursday 9:00 am- 5:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, ALISSA J. TOMPKINS, at (571) 272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Catherine M. Ferreira/
Examiner, Art Unit 3732
/ALISSA J TOMPKINS/Supervisory Patent Examiner, Art Unit 3732
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