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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10 November 2025 has been entered.
Response to Amendments
The amendments filed with the written response received on 10 November 2025 have been considered and an action on the merits follows. As directed by the amendment, claim(s) 1, 6-8, 11-12, 20-21, 23, 25, 27-29, and 32 has/have been amended, claim(s) 2-5, 9-10, 13-15, 22, and 24 is/are canceled, claim(s) 33-36 has/have been added. Accordingly, claim(s) 1, 6-8, 11-12, 16-21, 23, and 25-36 is/are pending in this application with an action on the merits to follow.
Because of the applicant's amendment, the following in the office action filed 08 August 2025, are hereby withdrawn:
Previous Claim Objections and
Previous Rejections under 35 USC 112(b)
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “midsole” of claims 1, 12, and 23 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
Claims 1 and 12 recite, “A sole comprising: a midsole; a first sole component formed of a unitary material; the first sole component having an upper surface, a first lower surface, and a sidewall surface; the upper surface defining a top surface of the midsole” which is not found in the Specification nor shown in the Drawings. The Specification mentions a midsole in ¶0075-0076 in relation to a massage layer but does not reference a midsole further. The Drawings do not show a midsole, only a “sole component” which is not described as a midsole. There is no mention of a midsole as being part of the upper surface nor the first sole component.
Claim 23 recites, “a sole comprising: a midsole; a first sole portion formed of a unitary material and a second sole portion; the first sole portion located centrally to the second sole portion; the first sole portion comprising an upper surface and a lower surface opposite of the upper surface; the upper surface defining a top surface of the midsole” which is not found in the Specification nor shown in the Drawings. The Specification mentions a midsole in ¶0075-0076 in relation to a massage layer but does not reference a midsole further. The Drawings do not show a midsole, only a “sole component” which is not described as a midsole. There is no mention of a midsole as being part of the upper surface nor the first sole portion.
Claim Objections
Claim(s) 7, 11-12, 16, 18, 30 and 32 is/are objected to because of the following informalities:
Claim 7, lines 2-3 should recite, “and a second sole component is located adjacent to [[the]] a medial sidewall and a lateral sidewall of the first sole component”.
Claim 11, lines 1-4 should recite, “wherein at least one depression of the alternating depressions in the midfoot region
Claim 12, lines 12 and 20 should recite, “the same vertical longitudinal plane; a second sole component which is located along”.
Claim 12, lines 27 and 35 should recite, “exposing a portion of the sidewall of the first sole component[[;.]].”
Claim 16 depends from claim 14, which has been cancelled. Claim 16 will be interpreted as depending from claim 12.
Claim 18, lines 1-2 should recite, “wherein [[the]] at least one elevated region of the alternating elevated regions has a concave upper surface along the mediolateral direction of the sole”.
Claim 30, lines 1-3 should recite, wherein the upper surface comprises at least one elevated region of the alternating elevated regions disposed on a lateral side of the sole, and at least one elevated region of the alternating elevated regions disposed on a medial side of the sole.”
Claim 32, lines 1-3 should recite, “wherein the upper surface has a first concavity with a lower focal point along a mediolateral axis in a first area corresponding to an elevated region of the alternating elevated regions, and the upper surface has a greater degree of curvature with a greater focal point along the mediolateral axis in a second area corresponding to a depression of the alternating depressions.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 1, 12, and 23 (and claims 6-8, 11, 16-21, 25, 27-29, and 32-36 at least for depending from a rejected claim) is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 12 recite the limitation “A sole comprising: a midsole; a first sole component formed of a unitary material; the first sole component having an upper surface, a first lower surface, and a sidewall surface; the upper surface defining a top surface of the midsole” on lines 2-5 which is considered new matter. The written description does not disclose this structure and the structure is not clearly discernable in the drawings. With regards to the written description, there is discussion of “The massage unit or components of the massage unit responsible for providing a vibrational sensation may be located in a component of the article of footwear, such as the midsole layer” in ¶0075 and again with “In one embodiment, the massage unit is located in a shank of the article of footwear located under the insole but above a midsole component” in ¶0076, however neither of these statements specify what the “midsole” is/are as it is stated that the limitation “a midsole; a first sole component formed of a unitary material; the first sole component having an upper surface, a first lower surface, and a sidewall surface; the upper surface defining a top surface of the midsole”. Further, the Applicant’s Drawings do not clarify what “a midsole” is/are.
Claim 23 recites the limitation “a sole comprising: a midsole; a first sole portion formed of a unitary material and a second sole portion; the first sole portion located centrally to the second sole portion; the first sole portion comprising an upper surface and a lower surface opposite of the upper surface; the upper surface defining a top surface of the midsole” on lines 2-7 which is considered new matter. The written description does not disclose this structure and the structure is not clearly discernable in the drawings. With regards to the written description, there is discussion of “The massage unit or components of the massage unit responsible for providing a vibrational sensation may be located in a component of the article of footwear, such as the midsole layer” in ¶0075 and again with “In one embodiment, the massage unit is located in a shank of the article of footwear located under the insole but above a midsole component” in ¶0076, however neither of these statements specify what the “midsole” is/are as it is stated that the limitation “a midsole; a first sole portion formed of a unitary material and a second sole portion; the first sole portion located centrally to the second sole portion; the first sole portion comprising an upper surface and a lower surface opposite of the upper surface; the upper surface defining a top surface of the midsole”. Further, the Applicant’s Drawings do not clarify what “a midsole” is/are.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 1, 12, and 23 (and claims 6-8, 11, 16-21, 25, 27-29, and 32-36 at least for depending from a rejected claim) is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 12 is/are indefinite as it/they recite(s) “A sole comprising: a midsole; a first sole component formed of a unitary material; the first sole component having an upper surface, a first lower surface, and a sidewall surface; the upper surface defining a top surface of the midsole”. It is unclear if the midsole is part of the first sole component or a separate structure. The claim is written as to indicate that the midsole is a separate structure from the first sole component, but if the upper surface (which is recited as part of the first sole component) defines a top surface of the midsole, then the first sole component and the midsole would have to be the same structure. The Applicant’s Specification and Drawings do not clear up this deficiency. The Specification mentions a midsole in ¶0075-0076 in relation to a massage layer but does not reference a midsole in the Drawings. The Drawings do not show a midsole, only a “sole component” which is not described as a midsole. Since a midsole is defined as a layer between an insole and an outsole, it is unclear if any of the sole components in election Figs. 1-7 qualify as a midsole since both the first and second sole components are ground-contacting outsoles. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as the midsole being the first sole component, as shown in elected Figs. 1-7.
Claim(s) 23 is/are indefinite as it/they recite(s) “a sole comprising: a midsole; a first sole portion formed of a unitary material and a second sole portion; the first sole portion located centrally to the second sole portion; the first sole portion comprising an upper surface and a lower surface opposite of the upper surface; the upper surface defining a top surface of the midsole”. It is unclear if the midsole is part of the first sole portion or a separate structure. The claim is written as to indicate that the midsole is a separate structure from the first sole portion, but if the upper surface (which is recited as part of the first sole portion) defines a top surface of the midsole, then the first sole portion and the midsole would have to be the same structure. The Applicant’s Specification and Drawings do not clear up this deficiency. The Specification mentions a midsole in ¶0075-0076 in relation to a massage layer but does not reference a midsole in the Drawings. The Drawings do not show a midsole, only a “sole component” which is not described as a midsole. Since a midsole is defined as a layer between an insole and an outsole, it is unclear if any of the sole components in election Figs. 1-7 qualify as a midsole since both the first and second sole portions are ground-contacting outsoles. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as the midsole being the first sole portion, as shown in elected Figs. 1-7.
Claim Rejections - 35 USC § 103
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, 6-8, 11-12, 16, 18-20, 23, 25-30, and 32-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Christensen US 20120167416 in view of Antonelli US 7954259.
Regarding Independent Claim 1, Christensen discloses a sole (Figs. 7-12 #30) comprising: a midsole (Figs. 7-12 #200); a first sole component (Figs. 7-12 #200) formed of a unitary material (¶0050); the first sole component having an upper surface (Fig. 9 #221), a lower surface (Figs. 7-12 #223), and a sidewall surface (Christensen Annot. Fig. 12); the upper surface defining a top surface of the midsole (Figs. 7-12); the upper surface comprising alternating depressions and elevated regions arranged longitudinally (Christensen Annot. Fig. 12), forming a first continuous wave-like profile (Fig. 12; ¶0008-0009, 0038, 0043, 0056); the lower surface comprising alternating first ground-contacting regions and first raised regions arranged longitudinally (Christensen Annot. Fig. 12), forming a second continuous wave-like profile (Fig. 12; ¶0008-0009, 0038, 0043, 0056); but does not expressly disclose the first continuous wave-like profile being out of phase with the second continuous wave-like profile on the same vertical longitudinal plane.
Antonelli teaches a wavy outsole (Figs. 5-7 #312) with a first continuous wave-like profile (Figs. 5-7 #300 top) being out of phase with the second continuous wave-like profile (Figs. 5-7 #300 bottom) on the same vertical longitudinal plane (Figs. 5-7).
Both Christensen and Antonelli teach analogous inventions in the art of shoe outsoles with wavy formations. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Christensen with the teachings of Antonelli such that the first wave-like configuration would be and out of phase with the second wave-like configuration so as, “to provide the highest wearing comfort for the substantial loads arising during the repeated push-off from the ground and, in particular, protect the sensitive heads of the metatarsals against excessive loads. At the same time, the recess 371 contributes to a reduction in the overall weight of the shoe 305.,” (Antonelli Col. 8:3-8).
Regarding Claim 6, the modified sole of Christensen discloses the sole of claim 1 wherein a second sole component (Figs. 7-12 #100) is located adjacent to a medial sidewall (Christensen Annot. Fig. 11) and a lateral sidewall of the first sole component (Christensen Annot. Fig. 12), and second ground contacting regions on the second sole component (Christensen Annot. Fig. 12) are aligned with the first raised regions along the mediolateral axis of the sole (Christensen Annot. Fig. 12).
Regarding Claim 7, the modified sole of Christensen discloses the sole of claim 1 wherein a sidewall surface of the first sole component has a medial surface (Christensen Annot. Fig. 11) and a lateral surface (Christensen Annot. Fig. 12), and a second sole component (Figs. 7-12 #100) is located adjacent to the medial sidewall (Figs. 7-12) and lateral sidewall of the first sole component (Figs. 7-12) wherein the first sole component is at least a portion of a central area of the sole (Figs. 7-12; ¶0050-0054).
Regarding Claim 8, the modified sole of Christensen discloses the sole of claim 7 wherein the first sole component is constructed of a less dense material than the second sole component (¶0009, 0045-0048, note, “the material density of the outer midsole 100 is about 0.35 to about 0.4 g/cm3 and the material density of the inner midsole 200 is about 0.25 to about 0.3 g/cm3”).
Regarding Claim 11, the modified sole of Christensen discloses the sole of claim 1 wherein at least one depression in the midfoot region is concave component is concave in a longitudinal and mediolateral direction when no downward pressure is applied on the upper surface (Figs. 7-12).
Examiner notes that italicized limitations in the Prior Art rejections are functional and do not positively recite a structural limitation, but instead require the ability of the structure to perform and/or function. As the Prior Art of Christensen discloses the structure of the sole, there would be a reasonable expectation for the sole to perform such functions as explained after each functional limitation.
Regarding Independent Claim 12, Christensen discloses a sole (Figs. 7-12 #30) comprising: a midsole (Figs. 7-12 #200); a first sole component (Figs. 7-12 #200) formed of a unitary material (¶0050); the first sole component having an upper surface (Fig. 9 #221), a first lower surface (Figs. 7-12 #223), and a sidewall surface (Christensen Annot. Fig. 12); the upper surface defining a top surface of the midsole (Figs. 7-12); the upper surface comprising alternating depressions and elevated regions arranged longitudinally (Christensen Annot. Fig. 12), forming a first continuous wave-like profile (Fig. 12; ¶0008-0009, 0038, 0043, 0056); the lower surface comprising alternating first ground-contacting regions and first raised regions arranged longitudinally (Christensen Annot. Fig. 12), forming a second continuous wave-like profile (Fig. 12; ¶0008-0009, 0038, 0043, 0056); a second sole component (Figs. 1-7 #100) which is located along at least a portion of a perimeter of the sole (Christensen Annot. Fig. 11) and is adjacent to the first sole component (Fig. 11), the second sole component being positioned adjacent to the sidewall surface of the first sole component (Fig. 11), the second sole component having a second lower surface (Christensen Annot. Fig. 12) comprising alternating second ground-contacting regions (Christensen Annot. Fig. 12) and second raised regions arranged longitudinally (Fig. 12 #122), forming a third continuous wave-like profile (Fig. 12): the third continuous wave-like profile being longitudinally out of phase with the second continuous wave-like profile (Fig. 12), exposing a portion of the sidewall of the first sole component (Fig. 9 shows #200 through the waves in #100; ¶0051);
Christensen does not expressly disclose the first continuous wave-like profile being out of phase with the second continuous wave-like profile on the same vertical longitudinal plane.
Antonelli teaches a wavy outsole (Fig. 2 #1) with a first continuous wave-like profile (Fig. 2 #4) being out of phase with the second continuous wave-like profile (Fig. 2 #3) on the same vertical longitudinal plane (Fig. 2).
Both Christensen and Antonelli teach analogous inventions in the art of shoe outsoles with wavy formations. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Christensen with the teachings of Antonelli such that the first wave-like configuration would be and out of phase with the second wave-like configuration so as, “to provide the highest wearing comfort for the substantial loads arising during the repeated push-off from the ground and, in particular, protect the sensitive heads of the metatarsals against excessive loads. At the same time, the recess 371 contributes to a reduction in the overall weight of the shoe 305.,” (Antonelli Col. 8:3-8).
Regarding Claim 16, the modified sole of Christensen discloses the sole of claim 14 wherein the sidewall surface of the first sole component has a medial surface (Christensen Annot. Fig. 11) and a lateral surface (Christensen Annot. Fig. 11), and the second sole component is located adjacent to the medial sidewall and lateral sidewall of the first sole component (Figs. 11-12) and wherein the first sole component is at least a portion of a central area of the sole (Fig. 11; ¶0040).
Regarding Claim 18, the modified sole of Christensen discloses the sole of claim 12 wherein the at least one elevated region has a concave upper surface along the mediolateral direction of the sole (Christensen Annot. Fig. 11 shows the curve of the elevated regions which would be concave if cross-sectioned).
Regarding Claim 19, the modified sole of Christensen discloses the sole of claim 12 wherein a hardness of the first sole component is greater than the second sole component (¶0009, 0046-0047).
Regarding Claim 20, the modified sole of Christensen discloses the sole of claim 19 wherein the material hardness of the first sole component is greater in a forefoot region (¶0054) than in a heel region of the first sole component (¶0054).
Regarding Independent Claim 23, Christensen discloses a sole (Figs. 7-12 #30) comprising: a midsole (Figs. 7-12 #200); a first sole portion (Figs. 7-12 #200) formed of a unitary material (¶0050) and a second sole portion (Figs. 7-12 #100); the first sole portion located centrally to the second sole portion (Fig. 11); the first sole portion comprising an upper surface (Fig. 9 #221) and a lower surface opposite of the upper surface (Fig. 9 #223); the upper surface defining a top surface of the midsole (Figs. 7-12); the upper surface having an upper sinusoidal wave configuration extending along a longitudinal axis of the sole (Christensen Annot. Fig. 12; ¶0008-0009, 0038, 0043, 0056); the lower surface having a lower sinusoidal wave configuration extending along the longitudinal axis of the sole (Christensen Annot. Fig. 12; ¶0008-0009, 0038, 0043, 0056); wherein the upper surface has elevated regions and depressions (Christensen Annot. Fig. 12); and the lower surface has a plurality of ground-contacting regions and first raised regions (Christensen Annot. Fig. 12).
Christensen does not expressly disclose that the lower surface lower sinusoidal wave configuration is out of phase with the upper sinusoidal wave configuration.
Antonelli teaches a wavy outsole (Fig. 2 #1) with a lower surface (Fig. 2 #4) having a lower sinusoidal wave configuration (Fig. 2) that is and out of phase with an upper sinusoidal wave configuration (Fig. 2 #3).
Both Christensen and Antonelli teach analogous inventions in the art of shoe outsoles with wavy formations. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Christensen with the teachings of Antonelli such that the lower sinusoidal wave configuration would be and out of phase with the upper sinusoidal wave configuration so as, “to provide the highest wearing comfort for the substantial loads arising during the repeated push-off from the ground and, in particular, protect the sensitive heads of the metatarsals against excessive loads. At the same time, the recess 371 contributes to a reduction in the overall weight of the shoe 305.,” (Antonelli Col. 8:3-8).
Regarding Claim 25, the modified sole of Christensen discloses the sole of claim 23 wherein first sole portion has at least a medial sidewall (Christensen Annot. Fig. 11) and a lateral sidewall (Christensen Annot. Fig. 11), and the medial and the lateral sidewalls are angled inwardly (Fig. 8 #30 heel is angled) from either the upper surface or lower surface of the first sole portion (Fig. 8 shows #30 is angled inwardly), and the central cavity is reciprocally angled to receive the medial and lateral sidewalls (Fig. 11).
Regarding Claim 26, the modified sole of Christensen discloses the sole of claim 25 wherein the first sole portion extends (Figs. 7-12) from a heel region (Figs. 7-12 #32 of #200) to a toe region (Figs. 7-12 #36 of #200), but does not expressly disclose that the upper surface has no less than four troughs and no more than five troughs, each of the no less than four troughs and no more than five troughs having a splay angle greater than 50 degrees.
Antonelli teaches a wavy outsole (Figs. 5-7 #300) with an upper surface that has no less than four troughs and no more than five troughs (Fig. 7), each of the no less than four troughs and no more than five troughs having a splay angle greater than 50 degrees (Fig. 7 shows the upper troughs are obtuse).
Both Christensen and Antonelli teach analogous inventions in the art of shoe outsoles with wavy formations. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Christensen with the teachings of Antonelli such that there would be no less than four troughs and no more than five troughs on the upper surface and each of the no less than four troughs and no more than five troughs having a splay angle greater than 50 degrees so that, “when the load is transferred from the heel portion through the midfoot portion to the forefoot portion, a smooth load transfer is made possible,” (Antonelli Col. 2, l. 56-59).
Regarding Claim 27, the modified sole of Christensen discloses the sole of claim 23, wherein the upper surface of the first sole portion is a first upper surface (Christensen Annot. Fig. 11), the second sole portion has a second upper surface (Christensen Annot. Fig. 11) that meets with and is flush with the first upper surface (¶0051 notes the first and second sole “fit snugly within the one or more voids 114 such that adhesive is not required”).
Regarding Claim 28, the modified sole of Christensen discloses the sole of claim 12, wherein the upper surface of the first sole portion is a first upper surface (Christensen Annot. Fig. 11), the second sole portion has a second upper surface (Christensen Annot. Fig. 11) that meets with and is flush with the first upper surface (¶0051 notes the first and second sole “fit snugly within the one or more voids 114 such that adhesive is not required”).
Regarding Claim 29, the modified sole of Christensen discloses the sole of claim 12, wherein the upper surface of the first sole portion is a first upper surface having a first elevated region (Christensen Annot. Fig. 1), wherein the second sole portion further comprises a second upper surface having a second elevated region (Christensen Annot. Fig. 11), the second elevated region is aligned with the first elevated region (Fig. 12) on the same vertical mediolateral plane (Fig. 12), and the second elevation region is located along a declined slope from a perimeter sidewall toward a midline of the sole (Fig. 12 shows a declining slope of the perimeter sidewall where the two elevated regions are located).
Regarding Claim 30, the modified sole of Christensen discloses the sole of claim 1, wherein the upper surface comprises at least one elevated region disposed on a lateral side of the sole (Christensen Annot. Fig. 12), and at least one elevated region disposed on a medial side of the sole (Fig. 11 shows the medial sidewall with at least one elevated region).
Regarding Claim 32, the modified sole of Christensen discloses the sole of claim 1, wherein the upper surface has a first concavity with a lower focal point along a mediolateral axis in a first area corresponding to an elevated region (Christensen Annot. Fig. 11), and the upper surface has a greater degree of curvature with a greater focal point along the mediolateral axis in a second area corresponding to a depression (Christensen Annot. Fig. 11).
Regarding Claim 33, the modified sole of Christensen discloses the sole of claim 1, wherein, in a mediolateral cross-section (Figs. 11-12), the upper surface defines a plurality of convex portions (Christensen Annot. Fig. 11) and at least one concave portion (Christensen Annot. Fig. 11; while not a cross-section, the shapes required would be the same in a cross-section).
Regarding Claim 34, the modified sole of Christensen discloses the sole of claim 12, wherein the second sole component further comprises a second upper surface (Christensen Annot. Fig. 11), and in a mediolateral cross-section, the first upper surface and second upper surface define a plurality of convex portions (Christensen Annot. Fig. 11) and at least one concave portion (Christensen Annot. Fig. 11).
Regarding Claim 35, the modified sole of Christensen discloses the sole of claim 12, wherein the second sole component further comprises a second upper surface (Christensen Annot. Fig. 11), the second upper surface comprising alternating depressions and rounded elevated regions arranged longitudinally (Christensen Annot. Fig. 11), forming a fourth continuous wave-like profile (Fig. 11), and the fourth continuous wave-like profile is in phase with the third continuous wave-like profile (Fig. 11).
Regarding Claim 36, the modified sole of Christensen discloses the sole of claim 23, wherein the upper surface of the first sole portion is a first upper surface (Christensen Annot. Fig. 11), the second sole portion has a second upper surface (Christensen Annot. Fig. 11), and in a mediolateral cross-section, the first upper surface and the second upper surface define a plurality of convex portions (Christensen Annot. Fig. 11) and at least one concave portion (Christensen Annot. Fig. 11).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Christensen and Antonelli as applied to claim 12 above, and further in view of Stockbridge US 20200281314.
Regarding Claim 17, the modified sole of Christensen discloses the sole of claim 12 wherein at least one of the sole components is constructed of a polymer material (¶0045) but does not expressly disclose that the polymer material is formed by supercritical fluid expansion of the polymer material into a final form of the polymer material.
Stockbridge discloses a foamed sole (Figs. 1A-4E #100; Abstract) constructed of a polymer material (Abstract, ¶0099-0102) is formed by supercritical fluid expansion of the polymer material (¶Abstract, ¶0099-0102) into a final form of the polymer material (Fig. 4E).
Both Christensen (as modified by Antonelli) and Stockbridge teach analogous inventions in the art of shoe soles composed of polymer materials. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Christensen (as modified by Antonelli) with the teachings of Stockbridge such that the polymer material used to construct the sole would be formed by supercritical fluid expansion because, “The use of supercritical fluid (SCF), especially compounds that do not participate in atmospheric photochemistry, as a physical blowing agent has several advantages. One advantage of using such SCFs lacking photochemical reactivity, as compared to using volatile organic compounds (VOCs) and ozone depleting substances (ODSs), includes reduced harm to the environment. SCFs also provide more cost effective and safer alternatives from other foaming or extracting agents. The use of SCFs in foaming processes has been known to improve impact strength and toughness of the resulting foam products. The resulting foam product may also have improved surface appearance, a low dielectric constant, improved thermal insulation, and greater mechanical properties. Such foams may provide for both savings on material and weight reduction. SCFs also have a higher diffusion rate than traditional blowing agents,” (Stockbridge ¶0007). Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07
Further, the Examiner notes that “constructed of a material formed by” recites a product-by-process limitation. Even though product-by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. See MPEP 2113. As the prior art of Christensen disclose(s) the claimed structure, the process by which the product is obtained is not germane to the issue of patentability.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Christensen and Antonelli as applied to claim 12 above, and further in view of Benseler US 4161828.
Regarding Claim 21, the modified sole of Christensen discloses the sole of claim 12, but does not expressly disclose wherein in the midfoot region, the first ground-contacting regions project farther toward the ground than the second ground-contacting regions when no downward pressure is applied on the sole of footwear.
Benseler teaches an outsole (Figs. 1 & 6-7 #31) wherein in the midfoot region (Fig. 1 shows the midfoot region), first ground-contacting regions (Figs. 6-7 #60/61) project farther toward the ground (Figs. 6-7) than the second ground-contacting regions (Figs. 6-7 #59) when no downward pressure is applied on the sole of footwear (Col. 6:15-40).
Both Christensen (as modified by Antonelli) and Benseler teaches analogous inventions in the art of shoe soles with at least two sole components. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Christensen (as modified by Antonelli) with Benseler such that in the midfoot region, the first ground-contacting regions project farther toward the ground than the second ground-contacting regions when no downward pressure is applied on the sole of footwear so that, “project slightly with respect to the outer or tread surface 47 formed by the edge profiling 32, as a result of which the spring-elastic step is assured,” (Benseler Col. 6:15-40).
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Christensen and Antonelli as applied to claim 12 above, and further in view of a different embodiment of Christensen.
Regarding Claim 31, the modified sole of Christensen discloses the sole of claim 12, but does not expressly disclose wherein the upper surface of the first sole component is covered entirely by the second sole component.
A different embodiment of Christensen discloses a sole (Figs. 13-21 #31; Abstract) with an upper surface of a first sole component (Fig. 16 shows an upper surface of #400) that is covered entirely by a second sole component (Fig. 16 shows an upper surface of #400 under second sole #300).
Both Christensen (as modified by Antonelli) teaches analogous inventions in the art of shoe soles composed of polymer materials with undulations. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Christensen (as modified by Antonelli) with the second embodiment of Christensen to have the first sole covered completely by the second sole component so that, “to provide a desired combination of cushioning, stability, and ride characteristics to the article of footwear,” (Christensen ¶0062).
PNG
media_image1.png
1048
801
media_image1.png
Greyscale
Response to Arguments
Applicant’s arguments, filed 10 November 2025, with respect to the 35 USC 102 of claims 1-2, 6-9, 11-14, 16, 18-21, 28-30, and 32 and the 35 USC 103 of claims 17, 23, 25-27, and 31 have been considered but are moot because the arguments do not apply to the current grounds of rejection. In view of Applicant’s amendment, the search has been updated, and new prior art has been identified and applied. Applicant’s arguments, which appear to be drawn only to the newly amended limitations and previously presented rejections, have been considered but are moot in view of the new ground(s) of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAQUEL M. WEIS whose telephone number is 571-272-6804. The examiner can normally be reached Mon-Fri: 0800-1700.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ALISSA J. TOMPKINS can be reached on 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 published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RAQUEL M. WEIS/Examiner, Art Unit 3732
/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732