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 December 19, 2026 has been received, Claims 1, 3-9, 11-17, 21 and 24-29 are currently pending.
Drawings
1. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “wherein the top surface of the elastic incompressible plate is, in a vertical direction, aligned with and level with the top surface of the cushioning layer” in Claim 29 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
2. Claim(s) 1, 3-17, 21, 24-27, and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Robbins (US 2005/0262728) in view of Kita (US 6,205,681), and in further view of Hillyer (US 2018/0132563).
Regarding Claims 1 and 8, Robbins discloses a sole with a midsole (10,30,50) for a running shoe, wherein the midsole has a forefoot region (i.e. forefoot portion), a heel region (i.e. heel portion) and a midfoot region (i.e. midfoot portion) arranged between the forefoot region and the heel region (as seen in Fig.4), and wherein the midsole comprises: an elastic cushioning layer (50) and a base layer (30), the base layer arranged at the elastic cushioning layer (as seen in Fig.4), wherein the base layer (30; para.34) has a different hardness than the cushioning layer (50; para.35); and an elastic incompressible plate (para.37; i.e. shank), wherein the elastic incompressible plate is fitted into the cushioning layer (para.37, “a shank [not shown] of steel, plastic, nylon or other material may be…molded in the cushioning material”), wherein the elastic incompressible plate is within the cushioning layer with a first portion of the cushioning layer arranged between the elastic incompressible plate and the base layer (30) and a second portion of the cushioning layer arranged between the elastic incompressible plate and a top layer (10)(para.37; i.e. the shank is molded in the cushion material, meaning a portion of the cushion material would be above the shank and a portion of the cushion material would be below the shank); and wherein the sole comprises an outsole (40) arranged on the base layer (30)(as seen in Fig.4). Robbins does not disclose wherein the cushioning layer forms, in the heel region and in the midfoot region and/or in the forefoot region, a plurality of channels extending in a transverse direction of the sole; wherein at least a part of the cushioning layer is at least one of corrugated, wavelike, sinusoidal, and saw-toothed, in such a way that at least a part of the channels is formed by the resulting corrugation. However, Kita teaches a shoe with a midsole wherein a cushioning layer (3) forms, in the heel region and in the midfoot region (see annotated Figure below) and/or in the forefoot region, a plurality of channels (6) extending in a transverse direction of the sole (as seen in Fig.4; Col.4, lines 4-9); wherein at least a part of the cushioning layer (3) is at least one of corrugated, wavelike, sinusoidal, and saw-toothed, in such a way that at least a part of the channels (6) is formed by the resulting corrugation (as seen in Fig.1 & 3B); and an elastic incompressible plate (4), wherein the elastic incompressible plate is fitted into the cushioning layer (3)(as seen in Fig.1), wherein the elastic incompressible plate (4) is within the cushioning layer (3) with a first portion of the cushioning layer (3b) arranged below the elastic incompressible plate (4) and a second portion of the cushioning layer (3b) arranged above the elastic incompressible plate (4)(as seen in Fig.1).
PNG
media_image1.png
267
676
media_image1.png
Greyscale
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 cushioning layer of Robbins to have a plurality of channels extending in a transverse direction of the midsole and to be corrugated/wavelike to form said channels, as taught by Kita, in order to provide a lightweight midsole with enhanced cushioning properties in the lateral direction.
Robbins and Kita disclose the invention substantially as claimed above. Robbins further teaches the hardness of the cushioning layer being lower than the hardness of the base layer (para.34-35). Robbins does not disclose wherein the hardness of the cushioning layer on the Asker C scale is lower or higher than the hardness of the base layer by at least 10 units. However, Hillyer teaches a cushioning layer (22) having a hardness on the Asker C scale is lower or higher than the hardness of the base layer (24a) by at least 10 units (para.26).
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 hardness of the cushioning layer of Robbins to have a hardness on the Asker C scale that is lower than the hardness of the base layer by at least 10 units, as taught by Hillyer, in order to provide the desired level of cushioning support and rebound to a user’s foot.
Regarding Claim 3, Hillyer further teaches the cushioning layer (22) having a hardness of 45 on the Asker C scale and the base layer (24a) has a hardness of 55 on the Asker C scale (para.26).
Regarding Claim 4, Robbins discloses a sole according to claim 1, wherein the thickness (at the heel region of 50) along the cushioning layer (50) in a vertical direction of the sole is greater than the thickness (at the toe end of 30) of the base layer (30) in the vertical direction of the sole (as seen in Fig.4).
Regarding Claim 5, Kita further teaches a sole according to claim 1, wherein the channels (6) are arranged in a lateral region of the midsole (as seen in Fig.4; Col.4, lines 4-9) in at least a first horizontal plane (bottom surface of 3a) and a second horizontal plane (top surface of 3b), the first horizontal plane and second horizontal plane being offset from one another in a vertical direction (as seen in Fig.1).
Regarding Claim 6, Kita further teaches a sole of claim 5, wherein the channels (6 in 3a) in the first horizontal plane are arranged relative to the channels (6 in 3b) in the second horizontal plane such that the channels of the first horizontal plane are fully offset in the vertical direction relative to the channels of the second horizontal plane (as seen in Fig.1).
Regarding Claim 7, When in combination, Robbins and Kita teach a sole according to claim 1, wherein all channels (Kita: 6) in a lateral region of the midsole (of Robbins) are arranged in a single horizontal plane (as seen in Fig.1 of Kita).
Regarding Claim 9, Robbins discloses a sole according to claim 1, wherein the midsole additionally comprises a top layer (10), wherein the cushioning layer (50) is arranged in a vertical direction between the top layer (10) and the base layer (30)(as seen in Fig.4).
Regarding Claim 11, When in combination, Robbins and Kita teach a sole according to claim 1, wherein at least part of the channels (Kita: 6) are delimited by the cushioning layer (Robbins: 50 & evidenced by Kita: 3) and the base layer (Robbins: 30)(as seen in Fig.4 of Robbins and Fig.1 of Kita).
Regarding Claim 12, Robbins discloses a sole according to claim 1, wherein the cushioning layer and/or the base layer (30) and/or the top layer are made of at least one of a foamed polymer, ethylene-vinyl acetate copolymer, thermoplastic polyurethane (para.34), polyamide, polyether block amide, polyethylene terephthalate, and polybutylene terephthalate.
Regarding Claim 13, Kita further teaches a sole according to claim 1, wherein the channels (6) are one of funnel-shaped, trapezoidal, V-shaped, and U-shaped in cross-section along a longitudinal direction (i.e. from heel end to toe end) and perpendicular to a transverse direction (i.e. from medial side to lateral side) of the midsole (as seen in Fig.1 & 4; 6 are U-shaped in a longitudinal cross-section).
Regarding Claim 14, Robbins discloses a sole according to claim 1, wherein a thickness along the cushioning layer in a vertical direction of the sole and a thickness of the base layer in the vertical direction of the sole (as seen in Fig.4). Robbins does not explicitly disclose wherein the base layer has a thickness in a vertical direction of the sole of from 2 mm to 12 mm; and/or wherein the cushioning layer has a thickness in the vertical direction of the sole of from 3 mm to 35 mm. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the base layer and cushioning layer thicknesses of Robbins to have a base layer with a thickness from 2mm to 12mm and the cushioning layer with a thickness from 3mm to 35mm, in order to provide the desired level of cushioning support and rebound to a user’s foot. Further, the claimed values are merely an optimum or workable range and it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
Regarding Claim 15, Kita further teaches a sole according to claim 1, wherein each channel (6) is delimited in a longitudinal direction by a front wall (i.e. toe facing wall portion of 6) and a rear wall (i.e. heel facing wall portion of 6), respectively, the front wall and the rear wall converging towards each other (as seen in Fig.1 & 3B).
Regarding Claim 16, Kita further teaches a sole according to claim 1, wherein the channels (6) have lateral-side openings (as seen in Fig.1 & 3B). Kita does not explicitly disclose wherein the portion of the open area formed by all channel openings to the closed area is 5% to 25%. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the open area of the channel openings of Kita such that the open area formed by all channel openings to the closed area is 5% to 25%, in order to provide the desired level of cushioning support and rebound to a user’s foot. Further, the claimed values are merely an optimum or workable range and it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
Regarding Claim 17, Robbins discloses a sole according to claim 1, wherein the cushioning layer (50) has a peripherally circumferential folding edge (24) which is concave towards the outer surroundings (see annotated Figure below).
PNG
media_image2.png
326
540
media_image2.png
Greyscale
Regarding Claim 21, Robbins discloses a running shoe comprising a sole according to claim 1 (i.e. any shoe can be run in).
Regarding Claim 24, Robbins discloses a sole according to claim 1, wherein the elastic incompressible plate (i.e. shank) and the cushioning layer (50) are injection molded together (para.35 & 37).
Regarding Claim 25, Kita further teaches a sole according to claim 1, wherein each of the plurality of channels (6) extends, in the transverse direction of the sole, end-to-end from a lateral inner side of the midsole to a lateral outer side of the midsole (as seen in Fig.4; Col.4, lines 4-9).
Regarding Claim 26, Robbins discloses a sole with a midsole (10,30,50) for a running shoe, wherein the midsole has a forefoot region (i.e. forefoot portion), a heel region (i.e. heel portion) and a midfoot region (i.e. midfoot portion) arranged between the forefoot region and the heel region (as seen in Fig.4), and wherein the midsole comprises: an elastic cushioning layer (50) and a base layer (30), the base layer (3) arranged at the elastic cushioning layer (as seen in Fig.4), wherein the base layer (30; para.34) has a different hardness than the cushioning layer (50; para.35); and an elastic incompressible plate (para.37; i.e. shank), wherein the elastic incompressible plate is fitted into the cushioning layer (para.37, “a shank [not shown] of steel, plastic, nylon or other material may be…molded in the cushioning material”), wherein the elastic incompressible plate is arranged between the top surface and a bottom surface of the cushioning layer (para.37; i.e. the shank is molded in the cushion material, meaning a portion of the cushion material would be above the shank and a portion of the cushion material would be below the shank); and wherein the sole comprises an outsole (40) arranged on the base layer (30)(as seen in Fig.4). Robbins does not disclose wherein the cushioning layer forms, in the heel region and in the midfoot region and/or in the forefoot region, a plurality of channels extending in a transverse direction of the sole. However, Kita teaches a shoe with a midsole wherein a cushioning layer (3) forms, in the heel region and in the midfoot region (see annotated Figure above) and/or in the forefoot region, a plurality of channels (6) extending in a transverse direction of the sole (as seen in Fig.4; Col.4, lines 4-9); and an elastic incompressible plate (4), wherein the elastic incompressible plate is fitted into the cushioning layer (3)(as seen in Fig.1), wherein the elastic incompressible plate (4) is within the cushioning layer (3) with a first portion of the cushioning layer (3b) arranged below the elastic incompressible plate (4) and a second portion of the cushioning layer (3b) arranged above the elastic incompressible plate (4)(as seen in Fig.1).
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 cushioning layer of Robbins to have a plurality of channels extending in a transverse direction of the midsole, as taught by Kita, in order to provide a lightweight midsole with enhanced cushioning properties in the lateral direction.
Robbins and Kita disclose the invention substantially as claimed above. Robbins further teaches the hardness of the cushioning layer being lower than the hardness of the base layer (para.34-35). Robbins does not disclose wherein the hardness of the cushioning layer on the Asker C scale is lower or higher than the hardness of the base layer by at least 10 units. However, Hillyer teaches a cushioning layer (22) having a hardness on the Asker C scale is lower or higher than the hardness of the base layer (24a) by at least 10 units (para.26).
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 hardness of the cushioning layer of Robbins to have a hardness on the Asker C scale that is lower than the hardness of the base layer by at least 10 units, as taught by Hillyer, in order to provide the desired level of cushioning support and rebound to a user’s foot.
Regarding Claim 27, Kita further teaches a sole according to claim 26, wherein each of the plurality of channels (6) extends, in the transverse direction of the sole, end-to-end from a lateral inner side of the midsole to a lateral outer side of the midsole (as seen in Fig.4; Col.4, lines 4-9).
Regarding Claim 29, Robbins further discloses sole according to claim 26, wherein the top surface of the elastic incompressible plate (i.e. shank) is, in a vertical direction, aligned with and level with the top surface of the cushioning layer (50)(para.37; inasmuch as has been claimed by Applicant, the shank being molded in 50 would position the shank vertically in 50 in such a way as to be aligned and level with the top surface of 50).
3. Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Robbins (US 2005/0262728), Kita (US 6,205,681), and Hillyer (US 2018/0132563), and in view of Sugiyama (US 4,798,010).
Regarding Claim 28, Robbins, Kita, and Hillyer disclose the invention substantially as claimed above, including Kita teaching the cushioning layer forms a channel in the midfoot region. Robbins does not disclose wherein the cushioning layer forms the plurality of channels in the forefoot region. However, Sugiyama teaches a cushioning layer (5,6) having a plurality of channels (4) in the forefoot region (as seen in Fig.4b-4c).
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 cushioning layer of Robbins to include a plurality of channels in the forefoot region, as taught by Sugiyama, in order to provide a sole that has improved flexibility in the forefoot region.
Response to Arguments
In view of Applicant's amendment, the search has been updated, and newly modified grounds of rejection and new prior art has been identified and applied. Applicant's arguments have been considered but are moot in view of the newly modified grounds of rejection and new 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.
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.
/MEGAN E LYNCH/Primary Examiner, Art Unit 3732