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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/11/2025 has been entered.
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.
The factual inquiries 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.
Claim(s) 1, 8-16, and 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Calle (US2023/0364874 A1) in view of in view of Horn (CA1277471 C) and further in view of Holmes (US 2019/0090581 A1).
Regarding claims 1 and 38, Archer discloses a method for manufacturing a shoe, comprising: a) lasting an upper [0020]
b) providing an open sole casting mold [0020];
d) injecting the foamed sole material into the sole casting mold [0035] to form an injected sole material (claim 6);
and e) bringing the lasted upper into contact with the injected sole material [0056].
c) foaming a thermoplastic polyurethane [0024] sole material outside the sole casting mold [0029-0030] to form a foamed sole material [abstract, 0024];
Caller does not explicitly disclose the density of the injected sole material is in a range between 0.45-0.8 g/cm3; 0.5-0.7 g/cm3 (claim 1/38). However, same field of endeavor, Horn, discloses flexible molded articles preferably have a density from 0.2 to 0.7 g/cm3, more preferably from 0.4 to 0.7 g/cm3 in shoe soles for the benefit of providing improved demolding characteristics (pg. 6 2nd paragraph). MPEP 2131.03 states overlapping ranges are a prima facie evidence of obviousness. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have included the density of the injected sole material is in a range between 0.45-0.8 g/cm3; 0.5-07 g/cm3 as taught by Horn into the method taught by Archer for the benefit of providing improved demolding characteristics.
Archer doesn’t explicitly disclose wherein the sole material experiences a density change of at most 5% relative to the density of the sole material during the injecting in a time of 0.5 seconds after injecting into the sole casting mold. However, analogous art, Holmes, discloses a range of 1% to 150% of changing the density of the foam sole material [0017] which overlaps with Applicant’s range of at most 5% density change relative to a density of the sole material. MPEP 2144.04 states overlapping range is a prima facie evidence of obviousness. Further, MPEP 2144.04 also states In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality.
Regarding claim 8, Calle discloses the direction in which the sole material is injected into the sole casting mold changes relative to the sole casting mold over time (geometry of the shape changes [0046])
Regarding claim 9, Calle discloses wherein the method steps comprise an air entry and/or air exit between the sole casting mold and the [0039].
Regarding claim 10, wherein during at least one of the method step, the sole casting mold has an absolute value of pressure difference between the sole casting mold and the environment of a maximum 10% of the environmental pressure, given that the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977). Further, Applicant requires clarification on this claim limitation. It is unclear if the pressure is created by a the seal during the process of molding or in general the casting mold has a different pressure than the outside surrounding.
Regarding claim 11, Calle teaches the method further comprises changing a geometry of the sole casting mold to bring the injected sole material into a predefined shape [0033]
Regarding claim 12, Calle teaches moving the lasted upper towards the sole casting mold (figures 5-7) [0020].
Regarding claim 13, Archer teaches further comprising molding a lower surface of the lasted upper such that the lower surface substantially forms an upper closing surface of the sole casting mold [0074]
Regarding claim 14, Archer teaches wherein the molding of the lower surface is performed prior to injecting the sole material, wherein the surface continues to exist in further method steps (figures 5-7) [0037-0038].
Regarding claim 15, Archer teaches wherein the injected sole material is configured to form a sole (abstract).
Regarding claim 16, Archer teaches wherein the sole is attached to the lasted upper, wherein the attachment occurs without adhesive [0024, 0047].
23. Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being over Calle (US2023/0364874 A1) in view of in view of Horn (CA1277471 C) and further in view of Holmes (US 2019/0090581 A1) as applied to claim 1, in view of Bischoff (US2018/0055144 A1).
24. Regarding claim 3, Calle discloses providing a first material, the first material comprising at least one selected from thermoplastics, elastomers or thermosets [0030]. However, Calle does not explicitly disclose at least one blowing agent. Analogous sole art, Bischoff discloses the use of blowing agent in the first material [0069] in reduce the weight of the first material. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated at least one blowing agent as taught by Bischoff into the method taught by Calle since it is conventionally well known to include blowing agent in order to make the product lighter.
25. Regarding claim 4, Calle does not explicitly disclose the first material and the at least one blowing agent occurs in the form of pellets. However, analogous sole art, Bischoff discloses the first material and the at least on blowing agent occurs in the form of pellets [0003]. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated at least one blowing agent since it is conventionally well known to include blowing agent in order to make the product lighter.
26. Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Calle (US2023/0364874 A1) in view of in view of Horn (CA1277471 C) and further in view of Holmes (US 2019/0090581 A1) in view of Bischoff (US2018/0055144 A1) as applied to claim 3, and further in view of Redini (US20230055536 A1).
27. Regarding claim 5, The combination of Calle, Horn, and Bischoff teaches forming a mixture of the first material and the blowing agent (Bischoff [0069]) but does not explicitly disclose drying the mixture, wherein is arranged such that the maximum moisture content of the mixture is 2.0% of less. Analogous sole art, Redini discloses a drying step to ensure all the moisture is gone (content moisture is 0.0%) in order to ensure the material is returned to the desired dimensions [0047]. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated disclose drying the mixture, wherein is arranged such that the maximum moisture content of the mixture is 2.0% of less as taught by Redini in order to ensure the material is returned to the desired dimensions.
28. Regarding claim 6, Calle discloses compacting and heating the mixture to cause an interaction that includes a foaming of the mixture ( [0047]). As for the decreasing density, where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated disclose compacting and heating the mixture to cause an interaction that includes a foaming of the mixture, wherein the foaming is accompanied by a decrease in density. Further, given density =mass/volume since the mass is decreasing (moisture is decreasing in the drying step as per claim 5), the density would therefore decrease as well.
29. Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Calle (US2023/0364874 A1) in view of in view of Horn (CA1277471 C) and further in view of Holmes (US 2019/0090581 A1), as applied to claim 1, and further in view of Archer (US2018/0153252 A1).
30. Regarding claim 17, Calle does not explicitly teaches wherein the lasted upper comprises the same material as the injected sole material. However, analogous sole art, Archer discloses the lasted upper and is the same material as the injected sole mater [0030] for the benefit of ensuring sufficient bonding of the midsole core and the upper. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the lasted upper comprises the same material as the injected sole material, as taught by Archer, into the method taught by Calle, for the benefit of ensuring sufficient bonding of the midsole core and the upper.
31. Claim(s) 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Calle (US2023/0364874 A1) in view of in view of Horn (CA1277471 C) and further in view of Holmes (US 2019/0090581 A1) in view of Bischoff (US2018/0055144 A1) and further in view of Redini (US20230055536 A1), as applied to claim 5, and further in view of Poeselt (US2021/0179847 A1).
32. Regarding claim 39, Calle does not explicitly disclose wherein the moisture content is below 0.4 wt.%. However since Calle is silent to the moisture content, one ordinary skilled in the art would understand it to be negligible (~0%). Nevertheless, if Applicant does not agree, analogous art, Poeselt, discloses a moisture content level below 0.02% by weight in order to provide functional, light material [0207]. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated wherein the moisture content is below 0.4 wt.% as taught by Poeselt, into the method taught by Calle for the benefit of proving functional, light material.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument in light of the newly cited reference, Holmes (US 2019/0090581 A1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FARAH N TAUFIQ whose telephone number is (571)272-6765. The examiner can normally be reached Monday-Friday: 8:00 am-4:30 pm.
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/FARAH TAUFIQ/ Primary Examiner, Art Unit 1754