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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 4, 2026 has been entered.
Response to Amendment
The amendments filed with the written response received on February 4, 2026 have been considered and an action on the merits follows. As directed by the amendment, claim 1 has been amended; claims 5-10 and 13-18 are withdrawn from further consideration. Accordingly, claims 1-18 are pending in this application, with an action on the merits to follow regarding claims 1-4, 11 and 12.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 19: both instances of “laver” should recite “layer”
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 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.
Claims 1-4, 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Xanthos (US 2018/0338567) in view of Malek (US 2011/0185600).
Regarding independent claim 1, Xanthos discloses a shoe (¶ 0009 of Xanthos indicates a sole structure #10 may be secured to an upper; collectively, an upper and a sole structure secured thereto forms a shoe; Xanthos generally references an “article of footwear” throughout the disclosure), comprising: a sole (#10) comprising a midsole (a “midsole” is constituted by the combination of a midsole #12 and a sockliner (¶ 0010 of Xanthos discloses that the sole structure may include a sockliner positioned between the foot-receiving space and the midsole #12), inasmuch as the midsole has been defined in the claim) formed by a plurality of layer members laminated together (sockliner is disclosed to be positioned atop the midsole #12, wherein the sockliner is a layer and the midsole #12 is a layer; while Xanthos does not disclose explicitly that the midsole and sockliner are “laminated” together, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art for these layers to be laminated together in order to prevent the sockliner from loosely moving about the foot-receiving space during use), the midsole having a bottom surface (see bottom surface of #12 in Figs. 4-5) and the plurality of layer members including at least a first layer (sockliner is a first layer) and a second layer (midsole #12 is a second layer); an outsole bonded to the bottom surface of the midsole (outsole #14; see Figs. 4 and 5 of Xanthos; Examiner notes that the term "bond" (in the verb sense) is very broad and has a definition of "to hold or be held together, as by a rope or an adhesive; bind; connect" (Defn. No. 14 of "Collins English Dictionary – Complete and Unabridged, 12th Edition" entry via TheFreeDictionary.com); since the outsole is bound/connected to the bottom surface of the midsole #12 of the overall midsole, the outsole is “bonded” thereto, absent further distinguishing structural language in the claim), the outsole having a second bottom surface (see bottom surface of #14 in Figs. 4-5); an upper portion joined to the sole (as mentioned above, this is disclosed in ¶ 0009 of Xanthos); and a cut having a linear shape formed in the midsole (superior sipes #42 (see Figs. 2. 4 and 5); each superior sipe is a linear cut that’s been “incised, scored, formed or otherwise integrated into the first surface #40” (¶ 0015 of Xanthos); the end of ¶ 0015 discloses that the sipes #42 can form various polygonal shapes, including triangles, squares, pentagons and the like), and a depth from a first height position to a second height position in a thickness direction (see Figs. 4-5 of Xanthos, which shows superior sipes #42 have a top end and bottom end that correspond to a first height position and a second height position), the cut being disposed in one of the first layer or the second layer (superior sipes #42 (i.e. cut) is disposed in the midsole #12 (i.e. second layer)), with upper and lower heights of the cut being above and spaced apart from the second bottom surface of the outsole (the sipes’ #42 ends are both above and spaced apart from the bottom surface of the outsole #14), the cut configured to alternate between a normal state in which inner walls are in contact between the first height and the second height (see Fig. 4 configuration with no load, which shows the inner walls in contact for each superior sipe #42) and a load state in which the inner walls are separated to form a V-shape in which the cut converges to a point at a bottom of the cut on a cross section of the cut when a load is applied (see Fig. 5 configuration with a load (upward force #70), which shows the inner walls of affected superior sipes #42 being separated to form a V-shape and converging to a point at the bottom of the affected sipes #42), the second layer consisting essentially of: a resin foam made of a polyolefin resin, a polyurethane resin, a nylon resin, or an ethylene-vinyl acetate copolymer (¶ 0009 of Xanthos discloses that the midsole can be made of EVA; while Xanthos does not explicitly use the term “foam”, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art for the EVA to have been EVA foam, in order for the midsole #12 to have adequate cushioning behavior, and further since it is very well known in the art of footwear for EVA to come in a foam form), and each of the first [layer] and the second [layer] extending from a toe region to a heel region of the shoe (see Fig. 3, which shows the sole to extend from an arbitrary toe region to an arbitrary heel region; Examiner notes that the term "region" is very broad and merely means "any large, indefinite, and continuous part of a surface or space" (Defn. No. 1 of "Collins English Dictionary – Complete and Unabridged, 12th Edition 2014" entry via TheFreeDictionary.com); while Xanthos does not explicitly disclose the longitudinal extent of the sockliner (i.e. first layer), it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art for the sockliner to extend from the toe region to the heel region so that the entire bottom of the user’s foot would benefit from the sockliner material). Xanthos is silent as to the material from which the sockliner is constructed, and it cannot be determined from the Xanthos disclosure alone whether the sockliner (i.e. first layer) consists essentially of: a resin foam made of a polyolefin resin, a polyurethane resin, a nylon resin, or an ethylene-vinyl acetate copolymer.
Malek discloses that sockliners can be made of an elastomeric foam, such as EVA or polyurethane foam (¶ 0018 of Malek).
Xanthos and Malek teach analogous inventions in the field of sockliners in footwear. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have used the polyurethane foam as the sockliner layer’s material of choice, as taught by Malek, in order to provide further cushioning for the user’s foot in use. As a result of the modification, the sockliner (i.e. first layer) would consist essentially of: a resin foam made of a polyolefin resin, a polyurethane resin, a nylon resin, or an ethylene-vinyl acetate copolymer.
Regarding claim 2, the modified shoe of Xanthos (i.e. Xanthos in view of Malek, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that the cut is formed on an upper surface of at least part of the plurality of layer members (superior sipes #42 are formed on an upper surface (#40) of the midsole #12 (i.e. second layer of the plurality of layer members)).
Regarding claim 3, the modified shoe of Xanthos (i.e. Xanthos in view of Malek, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that the cut is provided in an area locally lying in at least one of a forefoot region, a midfoot region, or a heel region of the midsole (one of the superior sipes #42 is locally in at least one of the arbitrary forefoot, midfoot or heel regions of the overall midsole (i.e. combination of sockliner and midsole #12 layers)).
Regarding claim 4, the modified shoe of Xanthos (i.e. Xanthos in view of Malek, as applied to claims 1 and 2 above) renders obvious all the limitations of claims 1 and 2, as set forth above, and further that the cut is provided in an area locally lying in at least one of a forefoot region, a midfoot region, or a heel region of the midsole (one of the superior sipes #42 is locally in at least one of the arbitrary forefoot, midfoot or heel regions of the overall midsole (i.e. combination of sockliner and midsole #12 layers)).
Regarding claim 11, the modified shoe of Xanthos (i.e. Xanthos in view of Malek, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that the cut is one of a plurality of cuts provided at a plurality of discrete positions and having a predetermined linear shape (there are several examples of superior sipes #42 (i.e. cuts) that are discrete from one another and have a predetermined shape (see Figs. 2, 4 and 5)).
Regarding claim 12, the modified shoe of Xanthos (i.e. Xanthos in view of Malek, as applied to claims 1 and 2 above) renders obvious all the limitations of claims 1 and 2, as set forth above, and further that the cut is one of a plurality of cuts provided at a plurality of discrete positions and having a predetermined linear shape (there are several examples of superior sipes #42 (i.e. cuts) that are discrete from one another and have a predetermined shape (see Figs. 2, 4 and 5)).
Response to Arguments
In view of Applicant's amendment, the search has been updated, and new prior art has been identified and applied. Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection.
Conclusion
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/JAMESON D COLLIER/Primary Examiner, Art Unit 3732