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 .
Response to Amendment
Applicant’s amendment of 11/04/2025 is acknowledged.
Claims 1-11 and 14-20 are presented.
Claims 1 and 11 are presented in independent form and are amended.
Dependent claim 16 is amended.
The present office action treats claims 1-11 and 14-20 on the merits.
The present office action is a final rejection.
Allowable Subject Matter
Claims 11 and 14-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding independent claim 11:
None of the prior art of record discloses a sole structure comprising the combination of elements and features claimed including: a first and second cushioning elements having peripheral side surfaces, a cutout, and a continuous groove as claimed; a plurality of openings formed through a thickness of the second cushioning element; a plate disposed between the first and second cushioning elements and extending outwardly from the first and second peripheral side surfaces bisecting the continuous groove, a bottom surface of the plate exposed through each of the plurality of openings; and an outsole forming a ground-contacting surface of the sole structure and including a plurality of apertures, each aperture of the plurality of apertures aligned with a respective opening in the plurality of openings and being larger than the respective opening.
The use of cushioning elements and plates is known in the art; the feature of the cushioning elements and a plate extending outwardly from side surfaces thereof so as to bisect a continuous groove along with the plurality of openings in formed through a thickness of a second cushioning element, the plate exposed through each of the plurality op openings; the additional outsole having apertures aligned with the openings and being larger than the openings, as claimed by the Applicant, is novel.
Specifically, prior art [Lee, KR 20120134550-A] discloses (Figs. 9-11) a sole structure comprising a cushioning element including a cutout extending inwardly from a first peripheral side surface and a second peripheral side surface, the cutout mating with a contour of the cushioning element to define a continuous groove and a plate including a first portion that extends outwardly from the first peripheral side surface and the second peripheral side surface and bisects the continuous groove. Although in Lee there is a singular cushioning element 310, prior art [Werling, FR-285182-A1] teaches a first element 2 and a second element 1 defining respective peripheral side surfaces, a cutout of the first element mating with a contour of the second element to define a continuous groove 6 and a plate 9 disposed between the first element 2 and the second element 1. Although Lee does not disclose any openings formed through a thickness of a cushioning element, the plate exposed through the openings, prior art [Dupre, US 2017/0095034] teaches (Figs. 35-36) providing openings formed through a thickness of an outsole 210g and a cushioning member 250g to expose portions of plate 300”.
However, none of the prior art alone or in combination discloses, teaches, or suggests combining a sole structure having a plate between the first and second cushioning elements as claimed with an outsole forming a ground-contacting surface of the sole structure and including a plurality of apertures, each aperture of the plurality of apertures aligned with a respective opening in the plurality of openings and being larger than the respective opening. To modify the prior art in the manner as claimed would be impermissible hindsight reconstruction of the Applicant’s invention without any disclosure, teaching, or suggestion from the prior art of record.
Response to Arguments
Applicant’s REMARKS of 11/04/2025 (see p. 6-14 of the reply) are fully considered.
Regarding Objections to the Drawings (p. 6): Applicant’s arguments are fully considered. Applicant’s amendment to claim 16 renders the drawings objection as applied in the previous office action moot.
Regarding Claim Interpretation (p. 6-7): Applicant’s arguments are fully considered, wherein Applicant acknowledges “Claim 17 is interpreted under 35 U.S.C. §112(f) in light of the description in the specification. Namely, the claim limitation uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation is at least one engagement element operable to receive an engagement element of the plate to position the plate relative to the at least one of the first cushioning element and the second cushioning element in Claim 17”. It is noted that claim 17 remains interpreted under 35 USC §112(f).
Regarding Rejections Under 35 U.S.C. §103 (p. 7-14): Applicant’s arguments are fully considered.
Applicant’s arguments directed to independent claim 1 and those claims dependent thereon 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.
Applicant’s arguments directed to independent claim 11 and those claims dependent thereon have been fully considered and are persuasive. Applicant’s amendment to claim 11 distinguishes claim 11 from the prior art of record; claims 11 and 14-20 are allowed; see Allowable Subject Matter above.
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: at least one engagement element operable to receive an engagement element of the plate to position the plate relative to the at least one of the first cushioning element and the second cushioning element in claim 17.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3, 5-6, and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by [Mathieu, US 2007/0068046, newly cited].
Regarding claim 1:
Mathieu discloses (Figs. 7-9):
A sole structure 120 (i.e. “bottom assembly 120”; para 70) for an article of footwear (Abstract; Fig. 7), the sole structure 120 comprising:
an upper cushioning element 160 (i.e. “connecting member...160”; para 65) including a first material (a material of 160) having a first durometer (“having a hardness between 20 Asker C and 200 Asker C, so as to procure a[n]...shock-absorbing effect”; para 55);
a lower cushioning element 140 (i.e. “shock-absorbing element 140”; para 73) including a second material (a material of 140) having a second durometer (“having a hardness between 20 and 200 Asker C”; para 57) and defining a plurality of first engagement elements 141 (i.e. “projections 141”; para 73), the plurality of first engagement elements 141 defining raised elements 141 positioned proximate to a peripheral side surface (see annotated Fig. 8 – a below) of the lower cushioning element 140; and
a plate 130 (i.e. “element 130”; para 65) disposed between (Figs. 8-9) the upper cushioning element 160 and the lower cushioning element 140 and defined by a top surface (see annotated Fig. 8 – a below) and an opposing bottom surface (see annotated Fig. 8 – a below), a distance between the top surface and the bottom surface defining a thickness (see annotated Fig. 8 – a below) of the plate, the plate including a plurality of second engagement elements 131 (i.e. “slits 131”; para 72) formed as recesses (“slits 131”; para 72; Fig. 8) each extending inwardly from a peripheral side surface of the plate (see annotated Fig. 8 – a below) to define inner edge surfaces (see annotated Fig. 8 – a below) and extending through the thickness of the plate (as in annotated Fig. 8 – a below), the inner edge surfaces cooperating with (“shock-absorbing element 140 has projections 141 adapted to engage in the slits 131 and to allow for...nesting”; para 73) the first engagement elements 141 to position (“shock-absorbing element 140 has projections 141 adapted to engage in the slits 131 and to allow for...nesting”; para 73) the plate 130 with respect to the lower cushioning element 140.
PNG
media_image1.png
727
997
media_image1.png
Greyscale
Regarding claim 3:
Mathieu discloses The sole structure of Claim 1, as set forth above.
Mathieu further discloses wherein the second engagement elements 131 are integrally formed with the plate 130.
(plate 130 is “provided with...slits 131” (para 72; Fig. 8) such that the second engagement elements 131 are integrally formed with plate 130.)
Regarding claim 5:
Mathieu discloses The sole structure of Claim 1, as set forth above.
Mathieu further discloses wherein the plate 130 is exposed along a periphery of the sole structure between adjacent ones of the first engagement elements 141 (as evidenced in Fig. 7 where the lead line from 130 terminates at a location exposed along a periphery of the sole structure and between adjacent elements of 140).
Regarding claim 6:
Mathieu discloses The sole structure of Claim 1, as set forth above.
Mathieu further discloses further comprising an outsole 150 (i.e. “outsole 150”; para 65) that defines a ground engaging element (outsole 150 is configured to engage a ground as evidenced by its being provided at the bottom of the entire sole assembly as seen in Figs. 7, 8, and 9) formed of a third material (a material of 150), the ground engaging element 150 being disposed adjacent to (Figs. 7-9) the lower cushioning element 140.
Regarding claim 10:
Mathieu discloses The sole structure of Claim 1, as set forth above.
Mathieu further discloses wherein the lower cushioning element 140 defines a thickness between a top surface and a bottom surface, the thickness of the lower cushioning element being non-uniform (as evidenced in Fig. 9 wherein lower cushioning element has a highest thickness at a center of the image and near where the lead line from numeral 133 terminates and the thickness is less at peripheral edges thereof; although numeral 140 does not appear in Fig. 9, one of ordinary skill would recognize that lower cushioning element 140 in Fig. 9 is provided between zone 133 of plate 130 and outsole 150).
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) 2 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Mathieu, US 2007/0068046, newly cited].
Regarding claim 2:
Mathieu discloses The sole structure of Claim 1, as set forth above.
Mathieu does not expressly disclose wherein the first durometer is less than the second durometer.
However and in further view of Mathieu:
The first durometer is “having a hardness between 20 Asker C and 200 Asker C” (para 55), and the second durometer is “having a hardness between 20 and 200 Asker C” (para 57).
Because Mathieu is concerned with desired shock absorbing (paras 55, 57) and provides a range (i.e. first durometer can be within the range of 20-200 Asker C and second durometer can be within the range of 20-200 Asker C such that some specific combinations of first durometer within the range and second durometer within the range are such that first durometer is less than second durometer) encompassing the claimed limitation, the claimed relative durometer is considered as a result-effective variable such that one of ordinary skill could have arrived at the relative durometers through routine experimentation in order to provide desired sole properties. The claimed relative durometer is merely an optimum or workable relative durometer and the relative durometer of first to second materials is expected to affect the ability of the sole structure to absorb shock at the portions of the sole where each cushioning element is provided.
Therefore, it 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 to have modified the sole structure of Mathieu such that the first durometer is less than the second durometer in order to yield the predictable result of a sole structure whose upper cushioning member is configured to absorb more shock than its lower cushioning member due to the lesser durometer of the first material for a wearer who prefers the feel and/or performance of such a sole structure.
Regarding claim 9:
Mathieu discloses The sole structure of Claim 1, as set forth above.
Mathieu Figs. 7-9 does not expressly disclose further comprising an insole positioned above the upper cushioning element.
However and in further view of Mathieu:
Mathieu Figs. 5-6 teaches an insole 112 (i.e. “insole 112” positioned above an upper cushioning element 160 (Figs. 5-6).
It 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 to have modified the sole structure of Mathieu Figs 7-9 such that it further comprises an insole positioned above the upper cushioning element in order to yield the predictable result of a sole structure whose insole is configured to comfort and/or protect a wearer’s foot resting thereupon.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Mathieu, US 2007/0068046, newly cited] in view of [Binzer, US 2014/0082969, newly cited].
Regarding claim 4:
Mathieu discloses The sole structure of Claim 1, as set forth above.
Mathieu does not expressly disclose wherein the plate is disposed within a socket formed in a first surface of the lower cushioning element.
However, Binzer teaches (Figs. 1-3) a sole structure 105 (i.e. “sole 105”; para 37) comprising a plate 135 (i.e. “member 135”; para 29) and a cushioning element 225 (i.e. “midsole 225”; para 40) wherein the plate 135 and cushioning element 225 comprise cooperating engagement elements 215, 255 (i.e. “receptacle portion[s] 215”; para 37 and “receptacle recess[s] 255”; para 40) further wherein, in addition to said cooperating engagement elements, the plate 135 is disposed within a socket 240 (i.e. “recess 240”; para 40) formed in a surface of a cushioning element 225.
It 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 to have modified the sole structure of Mathieu such that its plate is disposed within a socket formed in a first surface of the lower cushioning element in order to yield the predictable result of ensuring proper arrangement between plate and cushioning element via cooperation of plate within socket during assembly of the sole structure.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Mathieu, US 2007/0068046, newly cited] in view of [Gazzara, US 2011/0162232, newly cited].
Regarding claim 7:
Mathieu discloses The sole structure of Claim 1, as set forth above.
Mathieu does not expressly disclose wherein the plate is formed of an elastomeric material.
Mathieu teaches the plate 130 “can be constructed include: Polyurethane (PUR, TPU)...; Polyamide (PA)...Polyethylene (PE)” (para 47).
However, Gazzara teaches a sole structure wherein “a shock absorbing body is adopted, which consists of a shaped piece of an elastomeric material, such as polyurethane or soft rubber” (para 7).
It 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 to have modified the sole structure of Mathieu such that its plate is formed from an elastomeric material in order to permit it to absorb shock, as suggested by Gazzara (para 7).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Mathieu, US 2007/0068046, newly cited] in view of [Chang, US 2018/0237605, previously cited].
Regarding claim 8:
Mathieu discloses The sole structure of Claim 1, as set forth above.
Mathieu does not expressly disclose wherein the first material is a first foamed elastomer and the second material is a second foamed elastomer.
However, and in further view of Mathieu: the first material can be “foam” (para 57), and the second material can be “foam” (para 55).
Chang teaches a foamed elastomeric material (Title) wherein the foamed elastomeric material is appropriate for use as an insole, midsole, or outsole (para 60).
Chang further teaches the foamed elastomeric material is appropriate in “padding applications for protection or comfort, especially those for which weight of the padding is a concern” (para 60),
It 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 to have modified the sole structure of Mathieu such that the first material is a first foamed elastomer and the second material is a second foamed elastomer in order to afford protection and/or comfort to the sole structure in a lightweight manner, as suggested by Chang (para 60).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRADY A NUNNERY whose telephone number is (571)272-2995. The examiner can normally be reached 8-5 M-F.
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, Khoa Huynh can be reached at 571-272-4888. 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.
/GRADY ALEXANDER NUNNERY/Examiner, Art Unit 3732