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
Claim 1 is currently amended, claims 2, 4, and 12-13 are previously presented, claim 3 is original, claims 5-11 and 14-18 are withdrawn, and claims 19-20 are new.
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) 1-4, and 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamada (US2013/0143029 A1) in view of Maeda (JP2019/166644 A).
Regarding claim 1, Yamada discloses a production method of producing a cushioning member for a shoe, comprising a foamed area and a non-foamed area, the method comprising:
filling a mold [0001] with a first foamable material that is unfoamed and a second non-foamable (4) material [0014, 0018], the first unfoamed foamable (4) material comprising an elastomer [0071] and a foaming agent [0077], and the second non-foamable material (3) not having foaming properties [0077] (the first unfoamed foamable layer is foamed after injection into the mold (“wherein upon injection of the non-foaming and foaming polyurethane resins into the closed mold cavity, the non-foaming polyurethane resin forms a non-foamed skin layer and the foaming polyurethane resin forms a foamed layer” (claim 11)) ; and
molding the first unfoamed foamable material and the second non-foamable material the foamed area being formed with the first foamable material by foaming the first foamable material after the mold has been filled with the first foamable material [0018], and the non-foamed area being formed by the second non-foamable material [0078] the first unfoamed foamable layer is foamed after injection into the mold (“wherein upon injection of the non-foaming and foaming polyurethane resins into the closed mold cavity, the non-foaming polyurethane resin forms a non-foamed skin layer and the foaming polyurethane resin forms a foamed layer” (claim 11)).
As for the cushioning member for a shoe, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
As for the limitation, molding the first foamable material and the second non-foamable material by heating and cooling the first foamamble material and the second non-foamable material together after the mold has been filled with the first foamable material and the second non-foamable material, analogous art, Maeda, discloses heating a cooling the first foamamble and second non-foamable material together after the mold is filled (pg. 3 paragraphs 9-10 and comparative examples). 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 , molding the first foamable material and the second non-foamable material by heating and cooling the first foamamble material and the second non-foamable material together after the mold has been filled with the first foamable material and the second non-foamable material in order to the targeted viscosity of the material based on design needs of the final product [0019].
Regarding claim 2, Yamada discloses wherein the first foamable material comprises a thermoplastic elastomer and a foaming agent [0043].
Regarding claim 3, Yamada discloses wherein the foaming agent is a chemical foaming or an expanding foaming agent [0043].
Regarding claims 4 and 12-13, Yamada discloses wherein the second non-foamable material comprises a thermoplastic elastomer [0044].
Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamada (US2013/0143029 A1) in view of Maeda (JP2019/166644 A), as applied to claim 1, and further in view of Otsuka (US 2015/0181975 A1).
Regarding claim 19, Yamada does not explicitly discloses wherein the first foamable material is filled in the mold in at least one of particle form and plate-like form. However, analogous foamed art, Otsuka, discloses at least one of particle form [0100] and plate-like form [0045]. Therefore, it would have been obvious to one having ordinary skill in the art to have disposed the foamable material in particle form and plate-like form since MPEP 2144.04 states It has been held that a mere change in shape without affecting the functioning of the part would have been within the level of ordinary skill in the art, In re Dailey et al., 149 USPQ 47; Eskimo Pie Corp. v, Levous et aI., 3 USPQ 23.
Regarding claim 20, Yamada does not explicitly discloses the second non-foamable material is filled in the mold in particle form. However, MPEP 2144.04 states It has been held that a mere change in shape without affecting the functioning of the part would have been within the level of ordinary skill in the art, In re Dailey et al., 149 USPQ 47; Eskimo Pie Corp. v, Levous et aI., 3 USPQ 23. Therefore, it would have been obvious to one having ordinary skill in the art to have disposed the foamable material in particle form and plate-like form since MPEP 2144.04 states It has been held that a mere change in shape without affecting the functioning of the part would have been within the level of ordinary skill in the art, In re Dailey et al., 149 USPQ 47; Eskimo Pie Corp. v, Levous et aI., 3 USPQ 23.
Response to Arguments
Applicant's arguments filed 10/30/2025 have been fully considered but they are not persuasive. Applicant argues Maeda taches already foamed material.
However, Yamada teaches the first unfoamed foamable layer is foamed after injection into the mold (“wherein upon injection of the non-foaming and foaming polyurethane resins into the closed mold cavity, the non-foaming polyurethane resin forms a non-foamed skin layer and the foaming polyurethane resin forms a foamed layer” (claim 11)). One ordinary skilled in the art would understand claim 11 implies the foamed layer is formed after injection.
Applicant argues Maeda doesn’t teach the unfoamed foamable layer. However, the office has relied on Yamada for the teaching of the unfoamed foamable layer (claim 11).
Applicant further argues Yamada fails to teach the heating and cooling of the materials together. However, the office relied on the analogous art, Maeda, to show how conventional it is to heat and cool the material together. Further is it conventional known in molding that in order for the material to cure, it has to be heated and then cooled.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). It is the combination of Yamada and Maeda that read on the claim limitation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: DE4390938C3 discloses injecting the mold with a foamable thermoplastic elastomer that foams up after the injection (claim 1) and therefore has a foamable and a non-foamable layer.
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 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