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 .
DETAILED ACTION
Response to Amendment
Applicant’s amendment filed September 9, 2025 has been received, Claims 1-10 are currently pending, with Claims 6-10 remaining withdrawn from prosecution at this time.
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.
1. 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: “outsole side mounting arrangement portions” and “upper side mounting arrangement portions” in Claims 1, 2 and 5.
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
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
2. Claim(s) 1-3 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lilienfeldt (US 1,463,514).
Regarding Claim 1, Lilienfeldt discloses footwear comprising at least an outsole (12), an upper side (5,9), screw receiving seats (8,10,17), and coupling screws (15) screwed thereinto (Pg.1, line 101-Pg.2, line 21), wherein the outsole has a plurality of outsole side mounting arrangement portions (i.e. apertures in 12) provided at predetermined intervals for mounting and arranging the screw receiving seats or the coupling screws, the upper side has a plurality of upper side mounting arrangement portions (i.e. apertures in 5 or 9) provided at predetermined intervals, corresponding to the outsole side mounting arrangement portions, for mounting and arranging the screw receiving seats or the coupling screws (as seen in Fig.1-3), the outsole and the upper side are configured to be separably integrated by screwing together the coupling screws and the screw receiving seats mounted and arranged in pairs on the outsole side mounting arrangement portions and the upper side mounting arrangement portions (Pg.2, lines 39-61), and a misalignment region (i.e. toe region of shoe portions) in which spacings between outsole side mounting arrangement portions (of 17) differ (i.e. the spacing of 17 from the perimeter edge of 12 is different from the spacing of 8 and/or 10 from the perimeter edges of 5 and/or 9) from spacings between corresponding upper side mounting arrangement portions (of 8 & 10) in a direction along perimeter edges of the outsole and the upper side (as seen in Fig.3) to cause, by screw-coupling the outsole and the upper side (i.e. securing 12, 5, & 9 together with 15), a curvature of the outsole and the upper side upward from a plane (See annotated Figure below), formed in the misalignment region (as seen in Fig.1-3).
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Regarding Claim 2, Lilienfeldt discloses footwear according to claim 1, wherein the outsole side mounting arrangement portions (i.e. apertures in 12) are disposed at predetermined intervals along an outer periphery of an outsole of the outsole (as seen in Fig.1), the upper side mounting arrangement portions (i.e. apertures in 9) provided corresponding to the outsole side mounting arrangement portions are disposed at predetermined intervals along an outer periphery of an insole (9) of the upper side, an upper (5) of the upper side has seating holes (i.e. apertures in 5) provided at a bottom portion thereof corresponding to the upper side mounting arrangement portions (Pg.1, line 101-Pg.2, line 21), and the coupling screws and the screw receiving seats mounted and arranged in pairs on the outsole side mounting arrangement portions provided at the outsole and the upper side mounting arrangement portions provided at the insole are screwed together through the seating holes in the upper, whereby the outsole and the insole are separably integrated with the bottom portion of the upper sandwiched therebetween (Pg.2, lines 39-61; as seen in Fig.1-3).
Regarding Claim 3, Lilienfeldt discloses footwear according to claim 2, wherein the insole (9) and the upper (5) of the upper side are not coupled to each other except for the screw coupling with the coupling screws and the screw receiving seats (Pg.2, lines 39-61; as seen in Fig.1-3).
Regarding Claim 5, Lilienfeldt discloses footwear according to claim 1, wherein the outsole side mounting arrangement portions (i.e. apertures in 12) are disposed at predetermined intervals along an outer periphery of an outsole (12) in the outsole, the upper side mounting arrangement portions (i.e. apertures in 5) provided corresponding to the outsole side mounting arrangement portions are disposed at predetermined intervals along an outer periphery of a bottom portion of an upper (5) of the upper side, and the coupling screws and the screw receiving seats mounted and arranged in pairs on the outsole side mounting arrangement portions provided at the outsole and the upper side mounting arrangement portions provided at the upper are screwed together, whereby the outsole and the upper are separably integrated (Pg.2, lines 39-61; as seen in Fig.1-3).
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.
3. Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lilienfeldt (US 1,463,514) in view of MacNamara (US 6,092,311).
Regarding Claim 4, Lilienfeldt discloses the invention substantially as claimed above. Lilienfeldt does not disclose wherein the insole and the upper of the upper side are coupled to each other with an adhesive, besides the screw coupling with the coupling screws and the screw receiving seats. However, MacNamara teaches footwear layers being coupled to each other with an adhesive (Col.6, lines 19-21).
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 modified the upper and insole of Lilienfeldt to be coupled with releasable adhesive, as taught by MacNamara, in order to provide enhanced securement of the upper to the insole so that their apertures are aligned during securement of the outsole for easier attachment of the outsole to the upper and insole.
Response to Arguments
In view of Applicant's amendment, the search has been updated, and newly modified grounds of rejection have been identified and applied. Applicant's arguments have been considered but, as they are drawn solely to the newly amended limitations, are moot in view of the newly modified ground(s) of rejection.
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 MEGAN E LYNCH whose telephone number is (571)272-3267. The examiner can normally be reached Monday to Friday, 8:00am-4:00pm EST.
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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.
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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732